Heart Stoppers Sports Grill is going under the knife. Less than six months after opening, the Delray Beach, Fla., restaurant will drop its cardiac theme to settle claims that it ripped off the Heart Attack Grill of Chandler, Ariz.

Even though the two restaurants are about 2,000 miles apart, Heart Attack Grill sued Heart Stoppers in January for “operating a medically themed hamburger grill and restaurant with high caloric food products which was identical to or substantially identical to Heart Attack Grill's medically themed hamburger grill with high caloric food.”

After some initial sparring, Heart Stoppers owners Iggy Lenz and Robert Kutnick lost their taste for the litigation last month, agreeing to a settlement that rips the “heart” out of their restaurant and means they can no longer offer such menu items as The Pace Maker burger and The Coronary chicken sandwich or dress their waitresses as nurses.

A judge approved a consent order May 3. “They can't use the word 'heart,'” says Heart Attack Grill attorney Robert C. Kain of Fort Lauderdale. “They have to take out all the wheelchairs, all the nurses' uniforms, all the medical signs.”

The agreement does not require Lenz and Kutnick to pay Heart Attack Grill any money but the Arizona restaurant emerged from the litigation with virtually all the relief it had been seeking in a motion for a preliminary injunction. Heart Stoppers also agreed to shut down its www.theheartstopper.com website.

“Heart Attack Grill is not seeking to stop Defendants from operating a restaurant; it is seeking an order stopping all use of medical themes and equipment used in connection with Defendants' establishment, including its tradename,” the motion said.

Heart Attack Grill, which opened in 2005 and is famed for its Quadruple Bypass Burger, is one of several “gimmick” marketers to have filed trademark infringement lawsuits recently against alleged imitators. In February, the operator of Hey Cupcake!, which sells cupcakes from Airstream trailers in Austin, Texas, sued The Cupcake Camper of Peoria, Ill.

Last month, rapper Jay-Z sued Boston Red Sox slugger David Ortiz for ripping off his 40/40 chain of clubs — Ortiz owns the Forty/Forty Club in his native Dominican Republic — and Coyote Ugly Saloons sued the operator of the Coyote Gone Wild bar in Parkersburg, W.Va.

Geographic separation has been no deterrent for trademark owners, even those, like Heart Attack Grill, who have only a single location and do business thousands of miles away from the alleged infringer. To establish infringement for trade dress items, a plaintiff must show a likelihood of confusion in consumers’ minds as to the source of the product.

“If you have a customer base that gets into the defendant's territory, you can show a likelihood of confusion,” Kain observes.

Heart Attack Grill claims to have “customers in Florida, including [ ] foodies in Florida, who read Heart Attack Grill's newsletter[,] and patrons and prospective patrons in Florida who buy branded goods on the Internet.”

“Confusion in the marketplace is inevitable notwithstanding that Defendants' restaurant is located in Delray, Florida and Plaintiffs' restaurant is in Arizona,” it argued in the preliminary injunction motion, noting that a flight from Fort Lauderdale to Phoenix costs as little as $250. “Air travel to unique restaurants is not unusual.”

Heart Stoppers attorney Eric Lee of Boca Raton argued in a brief opposing the motion that there were “significant differences” between the restaurants and Heart Attack Grill “cannot establish that its trade reputation has reached Florida, let alone Delray Beach, Florida. HAG has not expanded its business and has limited the use of its trade dress to one city in Arizona.”

In a Florida case, the 11th U.S. Circuit Court of Appeals ruled that "The territorial extent of trademark protection is limited to those geographic areas in which a mark is actually used in commerce and a zone of reasonable future expansion." Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018 (1990).

But Heart Attack Grill is now in the final stages of opening a restaurant in Orlando, Fla., as part of its expansion plans. “I think that was the real 'coup de grâce' in the case,” Kain says.

By Matthew Heller
5/6/10