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TTAB Doesn’t Give an Inch in Subway’s Attempt to Register FOOTLONG Mark

Subway, through its parent company, filed a trademark application to protect its FOOTLONG mark in connection with sandwiches.  Sheetz of Delaware,Inc. (Sheetz), an operator of convenience stores which also uses the term “Footlong” for sandwiches, opposed the registration of Subway’s FOOTLONG mark claiming that Subway cannot exclusively protect the term “Footlong” because, when used with sandwiches, it is unprotectable either as a “generic” term for 12-inch sandwiches or, alternatively, as a “descriptive” term for Subway’s sandwiches.  The Trademark Trial and Appeal Board (TTAB) agreed.

Generic Trademarks

A “trademark” is, by definition, a designation used to identify or distinguish one set of goods or services from others in the marketplace.  A “generic” term, by contrast, is one that denotes a general class of goods or services, and cannot be protected because it does not serve to identify or distinguish.  As a consequence, anyone may use a “generic” term in connection with the specific set of goods or services the term classifies.

In this case, Sheetz’s basic argument is that the term “Footlong” classifies a type of sandwich and cannot be protected as a “trademark.”  The TTAB uses a two-part test to determine if a designation is “generic,” specifically: “(1) what is the genus of the goods at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods?”  The TTAB determined that, in light of the category of goods (i.e., “sandwiches”), the evidence indicated that the relevant consuming public (i.e., “ordinary consumers who purchase and eat sandwiches”) understands the term “Footlong” to refer to 12-inch sandwiches, generally, and not Subway’s sandwiches, specifically.  For this reason, Subway cannot register its FOOTLONG mark.         

Descriptive Trademarks

To be thorough, the TTAB addressed Sheetz’s alternative argument that FOOTLONG is a “descriptive” mark unworthy of trademark protection.  Under U.S. Trademark Law, a term that merely describes a product, service, or its qualities or characteristics cannot be protected unless it has acquired distinctiveness (i.e., “secondary meaning”) when used in connection with a certain set of goods or services.  Thus, the question is whether consumers have come to recognize the term “Footlong,” an otherwise descriptive term, to identify or distinguish Subway’s sandwiches from other sandwiches in the marketplace?  The TTAB decided that, despite Subway’s extensive advertising and its efforts to enforce the mark against third parties who also use it, the term “Footlong” merely describes Subway’s sandwiches and that the mark has not obtained a secondary meaning.  Therefore, Subway cannot register the mark.  


Subway can serve as an example to all businesses.  First, although lost in the TTAB’s decision of this case, Subway’s tremendous attempt to establish rights in the FOOTLONG mark is commendable.  Subway launched and maintained an expensive advertising campaign to connect the term “Footlong” with its sandwiches in the minds of consumers, it sought to protect the mark with the United States Patent and Trademark Office, and it sent dozens of cease and desist letters to enforce its rights in the mark.  This is the prescribed course of action for any business seeking to protect a mark.  Unfortunately for Subway, these efforts were unsuccessful because the designation was already too weak to be protected.  The second lesson, then, is that a business should consider the type and nature of its “trademarks” before investing too heavily in branding.



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