No, this is not another contribution to the on-going debate over whether Subway’s vaunted “footlong” sandwiches actually measure 12 full inches. I will leave that to the consumer affairs bloggers. Our concern is with Subway’s effort to monopolize the word “footlong” as a registered trademark for 12-inch, give or take, heros/submarines/wedges/hoagies/grinders. Last week the Trademark Trial and Appeal Board, in an EXTRA LARGE™ 61-page opinion, rejected Subway’s application, ruling that “footlong” was a widely and long-used generic term for for sandwiches of a certain length.
Subway’s application for registration was opposed by Sheetz, a Pennsylvania-based chain of convenience stores. (As Mitt Romney discovered in 2012, the debate over whether Sheetz or WaWa, if either, makes the better hoagie is something of a third rail in Pennsylvania politics, and we will not go there either.) The TTAB opinion is a fine primer or refresher on both the law of genericness and the nature of the evidence that might be considered to establish or refute a claim of genericness (along with a discussion on the oft-mooted question of whether a hot dog is a sandwich, Subway evidently conceding that “footlong” was generic when applied to franks).
Of particular interest is the Board’s critique of a consumer survey presented by Subway which purported to show that 54% of consumers thought “footlong” was a brand name. The Board found the survey flawed on a number of grounds. First, it found, the universe of respondents, which was limited to frequent and recent fast-food customers, rather than consumers of sandwiches generally, was too narrow. Second, the Board faulted the survey for giving the respondents only examples of protectable brand names that were particularly heavily-advertised, perhaps creating the misimpression that any common term, if advertised heavily enough by a particular seller, could achieve such status. Relatedly, after giving examples of brand and common names, the survey simply asked respondents whether they understood the difference, rather than testing their actual understanding. Finally, the Board found that the reliability of the survey was undermined by giving respondents the option to answer that a particular name was both common and brand.
The Board also addressed the argument, supported by some legal authority, that an adjective such as “footlong,” as opposed to a noun, can not be considered generic:
In this case, the record makes clear that “footlong” has and continues to be
widely used in the food and restaurant industry to refer primarily to 12-inch
sandwiches. The term does not merely describe a sandwich, but in fact identifies a
category of sandwiches included within the relevant genus. And because “Footlong”
identifies a category of sandwiches 12 inches long, it should be freely available for
use by competitors.
All in all, a good day for the speakers of vernacular English, and a bad one for trademark bullies.