Steak ’Em Up fights lawsuit

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A Lower Moyamensing takeout eatery that was sued by a frozen-steak company for trademark infringement is headed to trial.

Mike Lane, owner of Steak ’Em Up Inc., has been battling The Steak-umm Co., a Reading-based frozen steak maker, since receiving a cease and desist letter about two years ago from the company’s lawyer requesting he discontinue use of his store’s name in less than 24 hours to avoid legal action.

“We, and our client, have noted you and your company’s use of the marks and names “Steak Um Up” and “Steak ’Em Up” as a restaurant name and mark for serving, among other products, steak sandwich products,” Steak-umm lawyer Kevin W. Goldstein said in the June 11, 2009 letter.

Steak-umm filed a lawsuit against Steak ’Em Up two weeks after the letter was sent charging the 11th-and-Shunk-Street establishment with trademark infringement, unfair competition/false designation of origin and dilution.

“Mike’s not the kind of guy that’s going to be bullied and that’s exactly what they’re trying to do,” Lane’s attorney, Robert A. McKinley of Center City’s Klehr Harrison Harvey and Branzburg LLP said.

The parties had discussed a settlement, but an agreement was not reached. McKinley was not at liberty to reveal any terms of the agreement that fell through. The federal trial that is expected kick off in late-May or early-June could cost $175,000 to $300,000, according to a 2009 American Intellectual Property Law Association report.

Steak-umm claimed in the complaint that “the infringing conduct by defendant Steak ’Em is knowing, willful and deliberate.” Using Internet searches as its basisSteak-umm typed “steak um up” in a Google search that returned websites with a collaboration of restaurant listings in which the restaurant’s name is spelled wrong and alleged that Steak ’Em Up is infringing upon its name.

“None of those sites are sponsored by the defendant,” McKinley, a native of 12th and Shunk streets, said. “Anyone can say anything on the Internet.”

Even so, Steak ’Em Up’s color scheme and logo are an entirely different concept, he said. A gangster dressed in blue is holding a hoagie in his hands like a gun while the name “Steak ’Em Up” is a play on the words of “Stick ’em up.” Steak-umm steaks come in a red box with a picture of a steak on the front.

The name has never resulted in confusion at Lane’s business, which has delivered its 100-percent rib-eye steaks and other goods within a two-mile radius of the corner store since its ’05 opening, and Steak-umm has not provided any proof of confusion, McKinley said.

“There has not been any — a single incident — in four or five years where someone has asked him, ‘do you sell Steak-umm?’” he said.

Steak-umm has alleged that Steak ’Em Up has used “Um” in advertising; caused confusion between the products; and designed its company “to take advantage of the goodwill and products’ association that Steak-umm has built,” according to the complaint.

“Here they are making all of these factual statements in the complaint, and when asked, ‘what facts do you have to support those allegations?’ they said ‘none,’” McKinley said.

When reached by phone, Steak-umm’s attorney Heather Tashman Fritts of Malvern’s Stradley, Ronon, Stevens & Young would not comment on the case.

While McKinley believes Steak ’Em Up will prevail in court based on the facts and the law, the possibility of the other verdict would have extreme negative impacts on Lane and his business.

“It would force him to change his whole identity, which is a significant cost beyond just changing his sign. In his community, the brand-name recognition of a grocery store, convenience store/pizza shop is extremely valuable,” McKinley said noting the time Lane has devoted to building that brand that has since expanded to Collingdale. “… To have to change his name now and have to reestablish that again and reassure people it’s not a new owner is a substantial challenge and would cause great harm to him and his business.” SPR

Contact Managing Editor Amanda L. Snyder at asnyder@southphillyreview.com or ext. 117.

Also in this week’s Police Report:
Immobilizing shots
Gunned down inside business
No escaping blue
Police gatherings

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