Millions of False TM Notices to Remove?

by Winthrop & Weinstine, P.A.
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A hot dog is a type of sandwich, and “footlong” denotes a type, category, or class of sandwiches (those measuring about a foot in length), making ”footlong” a generic term and part of the public domain – incapable of serving as a trademark for any kind of sandwich.

This is true despite Subway’s claimed use of FOOTLONG since 1967, the more than four billion FOOTLONG sandwiches sold between 2000 and 2009, and the near doubling of annual FOOTLONG sales from $541 million to $936 million, following its highly successful $5 FOOTLONG marketing campaign which started in 2008.

Any secondary meaning in FOOTLONG that might have resulted from the extensive marketing campaign, is de facto, so it doesn’t count for distinctiveness – it doesn’t create enforceable rights, because purchasers readily understand that FOOTLONG identifies 12 inch sandwiches.

These are some of the findings and conclusions by the TTAB last week in the long-anticipated decision Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., rejecting Subway’s desire to own FOOTLONG as a federally-registered trademark for “sandwiches, excluding hot dogs.” For a more complete analysis of the 61-page decision, check out John Welch’s coverage over at the TTABlog.

If you’ve followed my writing on the subject, you’ll fully appreciate that the TTAB’s decision finding FOOTLONG generic for sandwiches — even if hot dogs are excluded — is not surprising:

The decision was written to be bullet-proof on an appeal that the TTAB assumes Subway will file. So, for the sake of completeness, the TTAB decided that even in the unlikely event it is wrong about genericness and FOOTLONG is actually descriptive, the evidence still does not show acquired distinctiveness. If there is an appeal it will be interesting to see whether Subway pursues a de novo federal district court trial (which would permit the introduction of new evidence) or whether it takes the existing record up to the Court of Appeals for the Federal Circuit (CAFC).

My prediction is it won’t make a difference, the result will be the same, FOOTLONG is generic for sandwiches, just like LIGHT and LITE is for beer. In my opinion, Subway’s pursuit was doomed from the start with its initial specimen of use from November 2007:

As the TTAB noted: “If the above-noted specimen shows trademark use of “Footlong,” then it must also show trademark use of 6? Sub and Wrap.  As used in the specimen all three terms are displayed in the same manner (font, size, color, position), and used in the same way (i.e., to identify a type of sandwich).”

Of course, as shown at the top of this post, now when you see Subway’s FOOTLONG advertising (and in-store signage) it is littered with TM notice symbols closely associated with the term FOOTLONG. I’m not sure when that tactic started, but I believe it has been going on now for at least a couple of years. I remember being struck by the tiny after-the-fact TM stickers applied to the menu signage at the Subway located in the Minneapolis – St. Paul airport when I started following the Subway trademark bullying story a few years back.

With more than 26,000 Subway locations throughout the United States, and all the advertising done on the local and national level for the largest restaurant chain in the world, I shutter to think how many errant TM symbols are swinging in the wind, must be millions upon millions.

Even if an appeal of this decision would be hopeless for Subway, it might be worth filing one to at least avoid immediately facing the decision of whether to remove the multitude of stickers and the millions of false or misleading TM notices in advertising and on signage, given the TTAB’s ruling that FOOTLONG is not and cannot be a trademark for sandwiches.

Having said that, if an appeal over-turned the genericness part of the ruling, that would avoid the need for removal, even if the lack of acquired distinctiveness portion of the decision were affirmed, since it would keep the door open for Subway proving acquired distinctiveness down the road, and surely it would be able to freely use the TM symbol while it is still making that effort.

I’m just not seeing it though, I believe the genericness ruling will stand, but what do you think?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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