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The Steak Umm Company, LLC v. Steak 'em Up

April 11, 2012

THE STEAK UMM COMPANY, LLC, PLAINTIFF,
v.
STEAK 'EM UP, INC., DEFENDANT.



The opinion of the court was delivered by: Stengel, J.

MEMORANDUM

Steak Umm, a national seller of frozen steak and hamburger products wants Steak 'Em-Up, a South Philadelphia pizza shop and corner grocery, to change its name. Steak Umm alleges that the Steak 'Em-Up name infringes on its trademark and has filed claims under the Lanham Act for infringement, unfair competition and false designation of origin, as well as federal and state trademark dilution claims.

The parties filed cross-motions for summary judgment which were denied with respect to Steak Umm's trademark infringement, unfair competition and false designation claims. I granted summary judgment in favor of Steak 'Em-Up on the dilution claims and claims for actual damages, treble damages, attorney's fees, and an accounting of profits.*fn1 The only claim remaining is a request for an injunction to prevent trademark infringement. Each side presented its case in a bench trial and I make the following findings of fact and conclusions of law pursuant to FED. R. CIV. P. 52.

I. FINDINGS OF FACT

A. The Steak Umm Company, Inc.

1. Steak Umm produces frozen sliced steak and hamburger products for sale in grocery stores across the United States.

2. Steak Umm is a limited liability company created and existing under the laws of the State of Delaware, with its principal place of business in Reading, Pennsylvania.

3. Gene Gagliardi, the founder of Steak Umm, conceived of the "Steak-umm" name for his product in 1975.*fn2

4. Steak Umm has marketed and sold frozen steak products using the "Steak Umm" mark since 1975.

5. Steak Umm applied for and obtained a federal registration for the trademark "Steak-umm." Registration No. 1,033,176 was issued in February 1976 (through a predecessor company) noting use of the mark "Steak-umm" since at least February 1975 for meat products, specifically steak.

6. Steak Umm is currently owned by Quaker Maid Meats, Inc. Sergei Szortyka, the president of Quaker Maid Meats, acquired Steak Umm in May 2006.

7. Quaker Maid Meats acquired Steak Umm solely for its customer list and intellectual property, and not for any other assets or equipment.

8. Steak Umm advertises in print, on national television, and on the internet through its website. It maintains a website for informational and marketing purposes.

9. Steak Umm also began selling frozen hamburger products in 2009.

10. Steak Umm sliced steaks are made from chopped and formed emulsified meat product that is comprised of beef trimmings left over after an animal is slaughtered and all of the primary cuts, such as tenderloin, filet, and rib eye are removed. The emulsified meat is pressed into a loaf and sliced, frozen and packaged.

11. Steak Umm ships 100% of its frozen products to supermarkets; the product is available to consumers in the frozen food section of the store.

12. Steak Umm has advertised its products through nationwide television broadcasts, packaging, print advertising through supermarkets, in-store demonstrations, social media, word-of-mouth advertising, advertising at sporting events, as well as through the Internet and the Steak Umm website.

13. Most recently, Steak Umm has aired 10-second television commercials during Jeopardy, Judge Judy, Blind Date, CNN Headline News, Dr. Phil, Family Feud, Millionaire, and Wheel of Fortune, all television shows with a national audience.

B. Steak 'Em-Up, Inc.

14. Steak 'Em-Up is a South Philadelphia steak sandwich shop which sells prepared food, including pizza and steak sandwiches. It has takeout and delivery services. Steak 'Em-Up's original location is at the corner of 11th and Shunk streets in the City of Philadelphia. Recently, a second store opened in Collingdale, Pennsylvania, a suburb of Philadelphia.

15. Michael Lane, the founder of Steak 'Em-Up, began planning for his store in 2003. He first wanted to use the name "Steak Out" to evoke the image of a "police stake out." However, he learned the name "Steak Out" was used by a sandwich shop that had burned down less than one mile from his planned location. Mr. Lane eventually decided on the name "Steak 'Em-Up," a play on the phrase "stick 'em-up." It was his intention to refer to the criminal gangster culture that he considers to be popular in South Philadelphia.

16. As part of establishing his brand, Mr. Lane developed a logo featuring a cartoon-gangster holding a hoagie as if it were a gun. This logo accompanies the name "Steak 'Em-Up" in nearly all advertisements and signage.

17. Mr. Lane formed the company on June 4, 2003, began construction at the Philadelphia location in 2004, and opened the doors of his retail grocery and take-out and delivery food service to the public in October 2005.

18. Mr. Lane hired counsel in 2003 to incorporate his business and file all necessary papers with the Commonwealth of Pennsylvania. He assumed that if the name "Steak 'Em-Up" was taken or unavailable he would not have been allowed to use the name.

19. Steak 'Em-Up was incorporated under the laws of the Commonwealth of Pennsylvania, with its principal place of business at 2600 South 11th Street, Philadelphia, Pennsylvania.

20. The grocery items available for purchase in Steak 'Em-Up's store include items typically found in a neighborhood convenience store, such as bread, milk, juice, eggs, canned goods, and paper products.

21. The made to order items Steak 'Em-Up provides for take-out and delivery include appetizers, pizza, and a variety of sandwiches and salads. Steak 'Em-Up's menu includes approximately 225 different items, eight of which are steak sandwiches and ten of which are variations of hamburgers.

22. Steak 'Em-Up does not offer for sale or sell any frozen, thinly sliced steak or hamburger products and never has. Steak 'Em-Up neither sells Steak Umm products nor does it use Steak Umm products in its sandwiches.

23. Steak 'Em-Up uses 100% rib eye cut steak to make its sandwiches. The rib eye is a higher quality meat than the pressed, emulsified meat mixture used to make the Steak Umm steak product.

24. Steak 'Em-Up advertises in a local South Philadelphia paper, on local television, through its website, by distributing menus locally, and through word-of-mouth advertising. Mr. Lane purchases television advertising on cable channels for viewing in two limited markets: South Philadelphia and Center City Philadelphia.

25. Steak 'Em-Up's customers are typically persons who live or work within a short walking or driving distance from its two stores. Delivery is available within approximately a two-mile radius from each store and Mr. Lane estimates that 90% of his customers live within a one-mile radius of each store.

26. Mr. Lane is not aware of a single instance where a customer of his store has reported or questioned the source or sponsorship of Steak 'Em-Up's products. Mr. Lane is not aware of any instance where a customer reported confusion about whether Steak 'Em-Up is affiliated with Steak Umm.

C. Steak Umm Is Made Aware of Steak 'Em-Up

27. In 2009, Mr. Gagliardi's brother contacted Mr. Gagliardi and asked if he knew about Steak 'Em-Up.

28. Mr. Gagliardi was mistaken as to the spelling of the Defendant's name and believed it was spelled "S-t-e-a-k-u-m-m U-p."

29. Mr. Gagliardi called Mr. Szortkya because he did not know if there was a connection between Steak Umm and Steak 'Em-Up.

30. Mr. Szortyka ran an internet search for "Steak Um Up" which returned results for both "Steak Um Up" and "Steak 'Em-Up," both of which showed the Defendant's Philadelphia address and phone number.

31. "Steak Um Up" is not the name of the Defendant's store.

D. Similarity of Plaintiff and Defendant's Marks

32. Steak Umm is a national seller of frozen products for resale in grocery supermarkets, whereas Steak 'Em-Up operates a corner grocery store and take-out and delivery pizza shop in two locations in Pennsylvania.

33. Steak Umm and Steak 'Em-Up are not direct competitors.

34. With respect to the appearance of the marks, the Court finds that the marks are visually distinct. Examples of the two marks are shown below:

35. "Steak-umm" is presented in commerce on frozen food boxes with only one capital letter, the "S," whereas "STEAK 'EM-UP" is presented on plaintiff's corner pizza shop sign and on menus in all capitals.

36. Steak Umm products are sold in a red box and are accompanied by the words "Sliced Steaks" or "Burgers." Steak 'Em-Up's menus and street signs are accompanied by the words "OPEN 7 DAYS" and "WE DELIVER."

37. The Steak 'Em-Up mark is almost always accompanied by a distinctive cartoon character logo that looks like a mobster holding a hoagie as a machine gun. The Steak Umm mark does not have a cartoon character on its boxes. Instead, Steak Umm boxes contain an image of a prepared steak or burger product. Since the defendant's inception, with the exception of an isolated period of a few months for radio advertisements, the defendant's public presentation of its brand always includes the mobster logo.

38. With respect to the sound of the mark, the Court finds that the marks sound only nominally similar. The term "Steak Umm" is two syllables, whereas "Steak 'Em-Up is three syllables.

39. With respect to the meaning of the mark, the Court finds that the marks are dissimilar. Mr. Szortyka testified that the "-umm" portion of the Steak umm mark makes a sound that connotes "tastiness," like "yumm."*fn3 "Steak 'Em-Up" is a play on words of the phrase "Stick 'Em-Up," meaning "Stick them up." The Court finds that "Steak umm" has a very different meaning from "Steak 'Em-Up.

E. Strength of the Plaintiff's Mark

40. The conceptual strength of the mark is a question of fact. See E.T. Browne Drug Co. v. Cococare Prods. Inc., 538 F.3d 185, 192 (3d Cir. 2008) ("Whether 'Cococare Butter Formula' is generic or descriptive, and whether that term has acquired secondary meaning, are questions of fact.")

41. The word "Steak" suggests a food product and the word "Umm" sounds like "mmm," a suggestion that the product tastes good. The consumer is left with only this impression and must draw his own conclusions about the identity of the product.

42. I find that the Plaintiff's mark is "suggestive" in that it suggests the nature of the product, but does not actually describe the product.*fn4

43. Steak Umm did not offer any records demonstrating factual evidence of marketplace recognition. Steak Umm failed to put forth evidence of the outlets in which the relevant products are sold, the advertising and marketing history behind the mark, and its position in the marketplace.

F. Prices of Products

44. The price of Steak Umm sandwich steak varies throughout the United States, but is roughly $4 to $15 per package. The range of the price is a function of the number of steak products within the package.

45. The price of Steak Umm burger patties ranges from $8.99 to $10.99. Like the sandwich steaks, the range of the price is a function of the number of burger patties within the package.

46. The price points of Steak 'Em-Up's prepared food products vary from $6.00 sandwiches to $13.00 pizzas to $75.00 for a Stromboli tray.

47. Steak Umm sandwich steak prices vary from $4 to $15 per package. Steak 'Em-Up's prepared food products vary in cost, but a review of their store menu shows that most of their products fall within the $4 to $15 price range as well. Specifically, their sandwich steaks are approximately $5 to $7.

48. Steak Umm burger patties range from $8.99 to $10.99 and Steak 'Em-Up burgers range from $5 to $7.

G. Actual Confusion

49. The parties have used their respective marks concurrently for six years without a single reported instance of ...


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