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Subway’s “Footlong” Trademark Infringement Claim a Real Stretch

Posted in Trademark Bullying, Trademarks

This scene from the Minnesota State Fair reveals how the “About a . . . Foot Long Hot Dog” stand is a “State Fair Taste Tradition. . . .” With respect to the name, I have always believed that the “About a . . .” qualifier is lawyer-driven to avoid false advertising lawsuits if a ruler might reveal a stretching of the truth and/or the wiener unintentionally coming up short on the promised twelve inches.

Turns out, we have much more to fear in the world of “Foot Longs” than literally false trademark claims or even stubby wieners in a bun at the State Fair, so, let’s name that fear: Subway.

Yes, Subway claims to own the word “footlong” as a trademark for sub sandwiches. Now, I fully appreciate that Subway has probably spent lots and lots of money on television advertising for its “$5 Footlongs” promotion, but to claim exclusive rights in the word “footlong” for subs is ridiculous (especially when the ads themselves have multiple references to the fact the term is directed to the length of the sub), in my not so humble opinion. Let’s not forget that Lite is generic for beer.

Subway’s cease and desist letter prompted Casey’s General Store (a convenience store chain based in Des Moines, Iowa) to bring a declaratory judgment lawsuit:

“Specifically, this action seeks, inter alia, a declaration that Casey’s use of the generic term “footlong” to describe a footlong submarine sandwich, commonly referred to as a “sub”, is not a violation of any right currently owned by Subway; and it requests an order so saying and declaring that “footlong” for description of sandwiches including submarine sandwiches is generic. Further Casey’s seeks an order that Subway’s attempt to assert trademark rights against Casey’s for its use of “footlong” for sandwiches and/or restaurant services is frivolous litigation and seeks an award of damages and attorney’s fees against Subway.”

If Casey’s is right, this could satisfy the exceptional case provision of the Lanham Act, which could result in Subway being ordered to pay Casey’s attorneys fees in defending against the claim.

It appears that Casey’s aggressive response to the cease and desist letter is designed to take advantage of all the current focus and attention on “trademark bullying” — although that specific phrase does not appear anywhere in the complaint.

As you may recall, I have suggested that “there seem to be enough existing legal tools to handle a real trademark bully, namely, one that brings frivolous, bad faith, vexatious or objectively baseless litigation.” Casey’s appears uniquely poised to test this proposition.

In support of its claim of frivolity, Casey’s relies, in part, on a transcript from a 2009 Subway case where a federal district court judge in the Eastern District of Virginia indicated he thought that “footlong” should be considered generic for subs.

With respect to Subway’s pending trademark and service mark applications for “Footlong” at the USPTO, Casey’s has this to say:

Subway has sought trademark protection for “footlong” for sandwiches and restaurant services in trademark application Nos. 77/752,328 (“Footlong” for restaurant services) and 77/324,328 (“Footlong” for sandwiches). The application for “footlong” for sandwiches was approved for publication by the trademark examiner, but has not issued as a registration because there are many ongoing opposition proceedings filed by the likes of Long John Silvers, Taco Bell Corporation, Kentucky Fried Chicken, Dairy Queen, Pizza Hut, Inc., and Domino’s, just to name a few. The application for “footlong” for restaurant services is currently under rejection as a mark that consists of the generic name for something that is served in providing restaurant services. A true and correct copy of the rejection issued by the trademark examiner is attached hereto as Exhibit C. Subway’s attempt to establish an acquired distinctiveness under § 2(f) of the Lanham Act has to date failed.

Here’s a question, how on earth did the word “footlong” for sub sandwiches get approved for publication at the USPTO?

Here’s another, does Subway deserve to have each and every customer measure the length of their purchased sub to see if it comes up short, and if so, suffer the consequences failing to add the “About a” qualifier too?

  • Anonymous

    Allowed under 2(f). I don’t think it’s generic for sandwiches (although it is for hotdogs), so 2(f) does the trick.

  • Steve Baird

    Yeah, I saw the 2(f) claim, but the long line of opposers apparently beg to differ on whether “footlong” can be owned for sub sandwiches. Isn’t there is a convention in the industry to offer six and twelve inch sub sandwiches, if so, it’s not at all a stretch to believe that the term “footlong” may be generic for a category of sub sandwiches, those about twelve inches in length. Analogous to “Lite” being generic for a category of beer, namely, low calorie beer, and “Brick Oven” for a category of pizza, namely, pizza baked in brick ovens. This will be an interesting one to watch!

  • Claude Anderson

    At least the PTO didn’t grant the application. They probably shouldn’t have threatened someone that can actually push back

  • http://www.linkedin.com/in/johnharleston John Harleston

    Reminds me of a time when we went through the drive-thru window of a local BBQ joint that offered foot-long hot dogs (the only foot-long item on the menu), and when we lazily ordered a “foot-long” the attendant asked “foot-long what?” So it might be descriptive rather than generic, since the term “foot-long” doesn’t identify the product (at least it didn’t to that attendant), but I think no way has it acquired distinctiveness, given how common the term is. I wonder, however, if Casey’s can really accuse Subway of frivolous litigation when it looks like Casey’s filed the lawsuit.

  • Steve Baird

    John, good question about the frivolous litigation allegation when it was initiated by the one making the charge. I guess they’d say that sending the C&D is the act that naturally resulted in the need for the litigation to remove the baseless cloud from hanging over their head. Perhaps the result ought to be to consider the frivolous litigation allegation only if Subway persists with it by counterclaiming for infringement — if they say nevermind, we withdraw our infringement charge, I wonder whether their case for frivolous litigation will stick.

  • Scott Smith

    I applaud Casey’s strong response to Subway’s frivolous claims. But let’s not overlook that Casey’s is NOT some small mom-and-pop corner deli. According to Casey’s complaint: “Casey’s is a leading operator of convenience stores in the Midwest, operating more than 1600 stores in the states of Iowa, Illinois, Indiana, Kansas, Minnesota, Missouri, Nebraska, Oklahoma, South Dakota and Wisconsin.”
    So it’s deceiving to characterize Casey’s response as something a small business could afford or risk taking. I’m sure Casey’s attorneys required a significant retainer plus an understanding that this case could easily run into the 100s of thousands. And making these kinds of allegations is one thing, winning them is an entirely different story, especially if you’re a small business that doesn’t have 100s of thousands laying around for attorney’s fees.

  • Carl

    There has been a lot of discussion about Generocide lately and this ‘footlong’ case may ultimately fall prey to it. There was an interesting ruling last year for ‘fully cooked’ which gave indigestion to a long time Mark holder.

  • Steve Baird

    Carl, thanks for your input. Actually, I’d not put “Footlong” into the genericide category since, in my opinion, “footlong” was, is and always will be generic — so, I’d put it in the inherently generic category. Genericide is typically reserved for inherently distinctive (often coined marks) category, where over time, the mark degenerates into a generic term.

  • http://www.linkedin.com/pub/blake-vande-garde/7/335/13a Blake Vande Garde

    Not only is the mark potentially generic, but I agree with John that the mark is merely descriptive of their product. When you order from Subway, you order either a six inch sub or a foot long sub, as is the case with most “sub” style sandwich shops across the US.

  • http://www.lotempiolaw.com/ Vincent G. LoTempio

    I’d say its descriptive. In Buffalo Ny you can order a foot long hot dog at Ted’s. a chain of hot dog stands that started with one stand on lake erie 100 years ago!

  • http://www.linkedin.com/pub/alain-lapter/4/273/925 Alain Lapter

    I would actually tend to agree with my colleagues that the mark is descriptive for sandwiches. I would, however, contend that the mark is inherently distinctive with respect to restaurant services. Subway came in for two applications for the mark, one covering sandwiches and the other restaurant services. Fascinatingly enough, Subway looks like they will obtain a federal registration, under section 2(f), for the sandwiches based, in part, on their long-term use of the mark (since 1967). Let’s not forget that even with the registration, I believe that Subway would have a hard time stopping third parties from use the mark in a descriptive manner, which is the way it is normally used in the industry.
    Meanwhile, their application covering the restaurant services was refused registration because the mark did not function as an identifier of source for the services. As the examiner correctly pointed out, the specimen only showed the mark as being used in connection with menu items, which is insufficient to show use for restaurant services.
    Very interesting case and one for which I certainly envision Subway trying to bully its lesser-known competitors.

  • http://www.linkedin.com/in/robertscottlawrence Robert Scott Lawrence

    I’ve been ordering footlongs since before Subway was born, and I would bet a hoagie or two that the citizens of Philadelphia don’t think Subway coined or has any exclusive right to the term. Just go to Rick’s, or Sub Zero, or Juliano’s, or Pat’s King of Steaks and see what they have to say about it. But what can you expect when the PTO (usually) just rolls over and hands out trademarks for the asking? Why shouldn’t Subway try and get their piece of the pie when Facebook wants to trademark “Face”?

  • http://www.linkedin.com/in/johnharleston John Harleston

    As long as we are ganging up on Subway, here’s another thought. To make a 2(f) claim based on 5 years of use, Subway is supposed to prove five years of “substantially exclusive and continuous use” – and the examiner will often accept an applicant’s statement to that effect without further question, unless the mark is very descriptive, so unless someone files an opposition, the 2(f) claim is allowed. I really don’t see how a Subway representative could honestly claim exclusive use of the term, when so many other people have been using the term. The five year rule is only a permissible inference, not conclusive, and it looks like the PTO refused Subway’s 2(f) assertion based on 5-years of use, but was somehow persuaded to allow it based on other evidence. Will be interesting to see what the TTAB does.