August 10, 2004
Splitting the Steakburger in Two
Declining to enjoin Burger King from identifying its new product as "Angus Steak Burger,"
Judge Catherine Perry denied Steak n Shake's motion for preliminary injunction. Steak n Shake argued that it owned the trademark "steakburger" and that Burger King's planned marketing roll-out of Angus Steak Burgers would infringe its mark and cause irreparable harm to Steak n Shake. After reviewing a number of trademark registrations for steakburger (and the requirement that the registrant disclaim "steakburger"), the Court held that "steakburger" should be considered a generic term under trademark law. The Court even cited the A-1 Steak Sauce slogan "A-1 makes a hamburger taste like steakburger" for the proposition that the term has been used by a number of companies to describe premium hamburgers.
The Court also held that even if "steakburger" was not generic, Steak n Shake failed to show the second element of trademark infringement -- likelihood of consumer confusion between the products. In an interesting discussion of expert witness surveys, the Court agreed with Burger King's expert that the Steak n Shake survey may have established that people associate steakburgers with Steak n Shake (or baby back ribs with Chili's) but it did not show that people believe that the product is only available from one source. In other words, although Steak n Shake may be "Famous for Steakburgers," it did not show that the mark has taken on a secondary meaning.
Although the decision appears to be a victory for Burger King, Judge Perry denied Burger King's motion to dismiss because she was not convinced that there were no facts under which Steak n Shake could prevail. The parties were referred to mediation. A copy of Judge Perry's opinion is available here: Steak n Shake Memorandum and Order.