It has been almost six months since oral argument before the TTAB over the question of whether the word “footlong” is a trademark or a generic name for a type of sandwich. What type of sandwich you ask? One about twice as long as a six inch sandwich, let’s say about twelve inches in length, making it, oh, about a foot long. Needless to say, trademark types await this decision with bated breadth.
Subway contends it owns exclusive rights in the term for sandwiches, but it admits those rights don’t reach hot dogs. In doing so, Subway would have the TTAB ignore the apparent mountain of evidence tending to show “footlong” generic for a type of hot dog or bun. Subway further claims that a hot dog in a bun isn’t a sandwich. In support of Subway’s trademark claim, it apparently sold about four billion feet of sub sandwiches between 2000 and 2008. It also relies on survey evidence purporting to show that 64% of respondents consider the word “footlong” to designate a brand name, and 53% of respondents purport to associate the word “footlong” with a single source, namely, Subway.
On the other hand (or foot), Sheetz of Delaware, Inc., a significant convenience store chain from Pennsylvania, has put in a serious evidentiary challenge to Subway’s claim of rights. It claims to have survey evidence that 80% of respondents consider “footlong” to designate, not a brand name, but instead, a type of product that comes from many different companies or sources. It will be interesting to see how the battle of the experts comes out in this case. As you will recall, I’ve expressed my skepticism about Subway’s claimed trademark before: Subway’s “Footlong” Trademark Infringement Claim a Real Stretch.
There are a number of similarities to a case I blogged about three years ago over the words “texas toast” for croutons: Texas Toasted? How to Slice the Trademark Spectrum of Distinctiveness:
“[W]e’ll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but I’ll have to say, at this point, “Texas Toast” sounds to me like a category of croutons – those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza – each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn’t matter if you’re the first to use a generic term, if found generic, it is available for use by all, even direct competitors.”
In case you missed it, as I neglected to cover it here, last May, the Sixth Circuit Court of Appeals agreed that “texas toast” is generic for a type of crouton; it is not a brand of crouton.
With all the focus on “trademark bullying” these days, I’d be surprised if the TTAB validates or facilitates Subway’s claim of exclusive rights in the word “footlong,” but what’s your prediction?