Robert A. McKinley
215 569 4892
215 569 2297
FOR IMMEDIATE RELEASE: April 13, 2012
A U.S. District Court Judge ruled today that the Steak Umm Company — a national seller of frozen steak and hamburger products — failed to establish a likelihood of consumer confusion with "Steak ‘Em-Up," a South Philadelphia pizza shop and corner grocery store. "This was a battle of David and Goliath and is an important victory for small businesses who make the decision to fight claims by big business," said Steak ‘Em-Up’s counsel Robert A. McKinley of Klehr Harrison Harvey Branzburg, LLP.
In June 2009, Mr. Michael Lane, the owner of Steak ‘Em-Up, received a cease and desist letter from Steak Umm’s company’s lawyer demanding that he discontinue use of his store’s name in less than 24 hours to avoid legal action. (The Steak ‘Em-Up logo is a play on the phrase "stick ‘em-up," and includes a logo featuring a cartoon-gangster holding a hoagie as if it were a gun.) Two weeks later, Steak Umm filed a multi-count federal trademark infringement suit against Steak ‘Em-Up for failing to comply with its demands. However, in August 2011, Judge Lawrence Stengel granted summary judgment in favor of Steak ‘Em-Up on Steak Umm’s federal and state trademark dilution claims, claims for actual damages, treble damages, attorneys fees, and an accounting of profits; leaving for trial whether Steak Umm was entitled to an injunction to prevent Steak ‘Em-Up from using its name.
After a bench trial in October 2011, Judge Stengel responded to Steak Umm’s request with a resounding "no" in a 39-page Opinion
analyzing the 10 factors that bear on whether there was a likelihood of consumer confusion between the company’s respective trademarks. The court found that 9 of the 10 factors weighed in favor of Steak ‘Em-Up and that the evidence overwhelmingly supported that conclusion.
"We are pleased with the outcome and proud of our client’s resolve to see this case through to the end. It is unfortunate that the case had to proceed this far," McKinley said. Judge Stengel seems to agree, stating in his opinion that "Plaintiff [Steak Umm] did not come close to meeting its burden at trial."
is Co-Chair of the Intellectual Property Law practice group and has substantial experience litigating intellectual property disputes, including trademark infringement and related claims.