Steak Umm Co., LLC v. Steak 'Em Up, Inc.
868 F. Supp. 2d 415
E.D. Pa.2012Background
- Steak Umm, a national frozen meat product seller, accuses Steak ’Em-Up of trademark infringement and related Lanham Act claims.
- Prior summary judgments were granted against Steak Umm on dilution, actual damages, treble damages, attorney’s fees, and profits; the remaining claim is for an injunction against infringement.
- Steak Umm owns the registered mark Steak-umm (No. 1,033,176) since 1976 for meat products; Steak ’Em-Up operates two Pennsylvania stores offering prepared foods, not frozen steak products.
- Steak Umm markets nationwide; Steak ’Em-Up serves local South Philadelphia and Collingdale customers with a logo featuring a mobster holding a hoagie, and uses all-caps signage.
- The court conducted a bench trial and applied the Lapp five-factor framework to assess likelihood of confusion.
- The court found no likelihood of confusion and granted judgment to Steak ’Em-Up; no injunction issued.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Steak Umm’s mark and Steak ’Em-Up’s mark create likelihood of confusion | Steak Umm asserts confusing similarity in sound, appearance, and meaning. | Steak ’Em-Up argues marks are visually distinct and not similar; products target different customers. | No likelihood of confusion |
| Whether Steak Umm’s mark is strong and protectable | Steak Umm claims the mark is strong and commercially recognized. | Mark is only suggestive with weak commercial strength and limited recognition evidence. | Steak Umm mark is suggestive with limited commercial strength; not strong |
| Whether there is actual confusion between the marks | Surveys show some confusion among consumers about affiliation or source. | No reliable evidence of actual confusion; expert survey flawed; minimal confusion exists in practice. | No actual confusion established |
| Whether the third Lapp factor (competitive context and consumer care) weighs for or against infringement | Products are similar food items at comparable price points; consumer care is limited. | Products are distinct in use and context; consumers are not sophisticated about these brands. | Factor weighs slightly in plaintiff’s favor but overall not decisive |
Key Cases Cited
- A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) (elements for trademark infringement and factors of similarity and strength)
- Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) (Lapp factors for likelihood of confusion)
- Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994) (considerations of similarity and likelihood of confusion)
- Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700 (3d Cir. 2004) (Lapp factors and absence/presence of confusion analysis)
- Sabinsa Corp. v. Creative Compounds, LLC, 609 F.3d 175 (3d Cir. 2010) (strength of mark and related confusion considerations)
- Checkpoint Sys., Inc. v. Check Point Software Tech., Inc., 269 F.3d 270 (3d Cir. 2001) (use of Lapp factors and balancing framework)
- Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 511 F. Supp. 2d 482 (E.D. Pa. 2007) (survey evidence must mirror real-world setting)