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Jack Lebewohl, Jeremy Lebewohl, Uncle Abies Deli Inc. D/B/A/ Second Ave. Deli, Uncle Abies Deli On First Inc. D/B/A/ Second Ave. v. Heart Attack Grill LLC

September 5, 2012

JACK LEBEWOHL, JEREMY LEBEWOHL, UNCLE ABIES DELI INC. D/B/A/ SECOND AVE. DELI, UNCLE ABIES DELI ON FIRST INC. D/B/A/ SECOND AVE.
DELI, AND UNCLE ABIES DELI SANDWICH TRADEMARKS LLC,
PLAINTIFFS,
v.
HEART ATTACK GRILL LLC, HAG LLC, JON BASSO, DIET CENTERS LLC (TEXAS), AND DIET CENTER LLC : (DELAWARE), DEFENDANTS.



The opinion of the court was delivered by: Paul A. Engelmayer, District Judge:

OPINION & ORDER

In an Opinion and Order dated July 5, 2012, the Court granted the motion by plaintiffs Second Avenue Deli et al. ("the Deli") for summary judgment on its claim for a declaratory judgment that plaintiffs' current use of the Instant Heart Attack Sandwich mark does not violate the Lanham Act, 15 U.S.C. §§ 1052 et seq.; the Court also entered a concurrent use order, at the request of the parties, permitting the Deli to use that mark at its current, and at any future, Manhattan restaurants. At the same time, the Court denied plaintiffs' motion for a declaratory judgment that (1) it may use the Instant Heart Attack Sandwich mark (and also the Triple Bypass Sandwich mark, which the Deli had proposed to use but to date had not) outside of Manhattan, including throughout the tri-state area (New York, New Jersey, Connecticut), and (2) it may use those marks at the exclusion of the similar marks (Heart Attack Grill; Triple Bypass Burger) of defendant Heart Attack Grill ("HAG").

Before the Court is the Deli's motion for reconsideration, pursuant to Fed. R. Civ. P. 59(e), of the Court's July 5 Opinion. For the reasons that follow, that motion is denied.

I. Background

The facts relevant to this controversy are set out in detail in the Court's Opinion and Order of July 5, 2012. See Dkt. 78 (the "July 5 Opinion"). The Court assumes familiarity with that decision.

In brief, on May 10, 2011, the Deli filed a declaratory judgment action seeking a ruling that neither of its two pending trademarks-Instant Heart Attack Sandwich and Triple Bypass Sandwich-infringe any marks held by HAG, and that the Deli may therefore register those marks with the United States Patent & Trademark Office ("USPTO"). HAG filed four counterclaims: (1) a dilution claim under the Federal Trademark Dilution Act; and claims seeking declarations that (2) the Deli is prohibited from registering its marks; (3) the Deli may not expand its use of the marks; and (4) the parties may use their respective marks under conditions and limitations to be set by the Court.

While discovery was ongoing, HAG moved to voluntarily dismiss the counterclaims without prejudice. The Deli opposed that motion, arguing that dismissal of the counterclaims without prejudice would permit HAG to relitigate those issues in another forum, specifically the USPTO, after both parties had already spent considerable resources in the current litigation. On January 5, 2012, the Court denied HAG's motion to voluntarily dismiss its three counterclaims seeking declaratory relief with respect to the Deli's registration and use of the marks (Dkt. 41), substantially for the reasons given by the Deli. By contrast, the Court ruled, HAG's dilution counterclaim was properly dismissed, because dismissing that claim did not present the same risks of relitigation as the other counterclaims.

On March 26, 2012, the Deli moved for summary judgment on its request for (1) a declaration of non-infringement, and (2) a declaration that it could properly register the two proposed marks with the USPTO. The Deli also asked that, if the Court were to find a likelihood of confusion between its marks and HAG's marks, it rule that the Deli, by virtue of its senior usage rights to HAG's in Manhattan with respect to the Instant Heart Attack Sandwich mark, be permitted to use that mark not only in Manhattan, but also in the tri-state area (New York, New Jersey, and Connecticut) to the exclusion of HAG's mark. HAG cross-moved for summary judgment on the Deli's declaratory judgment claim. And, for the second time, HAG voluntarily moved to dismiss its remaining counterclaims without prejudice.

In its July 5, 2012 Opinion, the Court granted the Deli's motion for a declaratory judgment that its current use of the Instant Heart Attack Sandwich mark-which is limited to Manhattan, thousands of miles away from HAG's restaurant-did not infringe HAG's mark. However, the Court found that it was speculative to determine whether an expanded use of that mark (geographically or otherwise) by the Deli at some point in the future would create a risk of confusion. The Court accordingly denied the Deli's motion for a declaratory judgment that it may use the Instant Heart Attack Sandwich mark outside Manhattan, the only area in which the Deli had established senior usage. The Court did, however, grant the Deli's alternative request that the Court enter a concurrent use order permitting it to use the Instant Heart Attack Sandwich mark at current and future restaurants within Manhattan, to advertise the sandwich on interior and exterior signs at the Manhattan restaurants, to use the mark on in-person menus in Manhattan, and to reproduce the menu in its Internet advertising.

As to the Triple Bypass Sandwich mark, the Court did not rule on the Deli's motion for a declaratory judgment with respect to that mark's current use, because it was undisputed that the Deli had not actually used the Triple Bypass Sandwich mark in commerce prior to HAG's registration of its Triple Bypass Burger mark, or, for that matter, prior to the filing of the Deli's lawsuit. Instead, with HAG's consent, the Court granted the Deli's alternative request that the Court enter a concurrent use order permitting the Deli to use the Triple Bypass Sandwich mark at its current restaurants in Manhattan, but only on its hard copy menu and its online menu. The Court also granted HAG's motion to voluntarily dismiss the remaining counterclaims.

On August 10, 2012, the Deli moved for reconsideration of the July 5 Opinion. It argued that the Court (1) should not have entered a concurrent use order regarding the Instant Heart Attack Sandwich mark; and (2) should clarify that its order regarding the Triple Bypass Sandwich mark was based on HAG's consent, not the Court's equitable powers. On August 20, 2012, HAG submitted a brief opposing that motion.

II. Legal Standard

The standard governing motions for reconsideration under S.D.N.Y. Local Civil Rule 6.3 "is strict, and reconsideration will generally be denied unless the moving party can point to controlling decisions or data that the court overlooked-matters, in other words, that might reasonably be expected to alter the conclusion reached by the court." Shrader v. CSX Transp. Inc., 70 F.3d 255, 257 (2d Cir. 1995). Such a motion is "neither an occasion for repeating old arguments previously rejected nor an opportunity for making new arguments that could have previously been made." Associated Press v. U.S. Dep't of Defense, 395 F. Supp. 2d 17, 19 (S.D.N.Y. 2005). Accordingly, "[c]courts have repeatedly warned parties that motions for reconsideration should not be made reflexively in order to reargue those issues already considered when a party does not like the way the original motion was resolved." Families for Freedom v. U.S. Customs & Border Prot., No. 10-cv-2705, 2011 WL 4599592, at *2 (S.D.N.Y. Sept. 30, ...


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