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Love it or leave it: FOOTLONG subs

Posted by ipelton on: July 12th, 2010

The company that owns Subway sandwich stores (Doctor’s Associates, Inc.) has filed to register FOOTLONG as a trademark for use with sandwiches with the USPTO.  See USPTO application record here.

The application was approved after Subway submitted a claim of “acquired distinctiveness.”  Acquired distinctiveness is one way that otherwise descriptive names can be registered on the main Principal Register of trademarks.

The FOOTLONG application has been opposed by numerous competitors, including Sheetz, Pizza Hut, Domino’s, KFC, Long John Silver’s, and Taco Bell.

Sheetz has filed for summary judgment, seeking to dismiss the case – and the application to register FOOTLONG – on the basis that the word is “generic” and incapable of being registered.  In short, a generic term is so common to describe the relevant product or service that it cannot acquire distinctiveness and cannot be protected by any one company since it is a common industry term.

Subway has also filed to register the 5$ FOOTLONGS logo which also could face descriptiveness issues but because it is a phrase stands a better chance of surviving an opposition because showing a phrase is generic is generally more difficult.

If Subway succeeds in the Opposition(s) and obtains a registration of FOOTLONG, it would give the chain a strong weapon to stop others from using “footlong” in their menus, advertisements, and promotions.  Subway must believe the registration would possess a significant value.

However, in my opinion and experience, the term or phrase “footlong” has long been used to describe sandwiches and subs on bread that is approximately 12 inches long.  As a result, I think there is a strong argument that the term is generic and that no one – including Subway – should be allowed to register it.

$5 FOOTLONG is a great promotional campaign and with a tune that could be stuck in your head for hours.  But FOOTLONG alone is too common and too generic to be protected.

Lesson: Trying to protect something a very common industry term is likely to be difficult or impossible.  The best trademarks, in my opinion, are suggestive – they do not directly describe the products or services, but they allude to them in some way.   For more about generic, descriptive, and suggestive trademarks, see my prior post here.

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