Intellectual Property Attorney

Subway Loses Trademark Dispute Over Proposed “Footlong” Trademark

As reported by Bloomberg BNA, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) has rejected an attempt by Doctor’s Associates, Inc., the parent company of “Subway” restaurants, to register “FOOTLONG” for “sandwiches, excluding hot dogs.” Doctor’s Associates filed a trademark application to register “FOOTLONG” in 2007. The application was opposed by numerous restaurants, including Sheetz of Delaware (“Sheetz”), a chain of convenience stores and gas stations that also sells sandwiches. The Opposition was hotly contested, with each side submitting trademark surveys and experts to support its claims.

Sheetz argued that “FOOTLONG” is not entitled to trademark protection because it is generic. A generic term is one that is or has become synonymous with a general class of product or service. For example, “ASPIRIN” has been held to be generic for pain reliever. Sheetz argued that “FOOTLONG” is the generic term for the size of a sandwich.

Sheetz also argued that, even if the term “FOOTLONG” is deemed not to be generic, it is not entitled to trademark protection because it merely describes the goods and has not “acquired distinctiveness.” A term that merely describes goods or services generally will not be granted a trademark registration on grounds that all purveyors of such goods or services should be free to use the term to describe their products. A term that is merely descriptive of goods or services, however, may nevertheless be registered if it has “acquired distinctiveness” (i.e., become associated with the Applicant’s goods or services in the mind of the purchasing public). Typically, to establish “acquired distinctiveness,” the Applicant will submit evidence showing a large amount of sales, or a large amount of marketing and advertising expenses, with regard to the proposed mark.

In this case, the TTAB agreed with Sheetz, holding that the term “FOOTLONG” is generic for “sandwiches, excluding hot dogs.” The TTAB also held that, even if the term “FOOTLONG” was deemed not to be generic, it has not acquired distinctiveness, despite the fact that Subway submitted evidence of millions of dollars in advertising in connection with its “$5 FOOTLONG” campaign, and sales of more than four billion “FOOTLONG” sandwiches between 2000 and 2009. Notwithstanding this evidence, the TTAB found that Subway itself used the term “FOOTLONG” not as a trademark but rather to identify twelve inch sandwiches. Moreover, the TTAB found that numerous third parties also used the term to describe sandwiches that are approximately one foot in length, and that consumers would understand the term to describe a size of sandwich, not the source.

The TTAB’s decision will almost assuredly be appealed, either through litigation in federal district court or an appeal to a U.S. court of appeals. We will continue to monitor this case and report back as events warrant.

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