“Five, five dollar, five dollar footlong. Five, five dollar, five dollar footlong. It’s ca-ca-catching onnnnnn!” Over the past few years, Subway has made an effort to advertise its sandwiches by using the aforementioned catchy jingle. Through its advertising efforts and delicious sandwiches, Subway is now a major power player in the restaurant industry with 34,125 stores in 96 countries. Perhaps trying to capitalize on its popularity, Subway requested to trademark the word “footlong” for its sandwiches and is currently waiting to hear back from the U.S. Patent and Trademark Office (“USPTO”). Interestingly, the USPTO has already rejected Subway’s request to trademark “footlong” for its restaurant services, but Subway is still waiting to hear back about the trademark referring to its sandwiches. With its trademark registration pending, Subway is not pleased with the actions of Casey’s General Stores, a convenience store with around 1,600 stores in the Midwest. Casey’s has been describing its sandwiches as “footlong” on signs and menu boards in some of its stores. Subway’s counsel recently sent Casey’s a cease and desist letter demanding that Casey’s stop using “footlong” or face legal action.
In what resembles a David v. Goliath battle, David is not backing down. Casey’s filed a complaint against Subway asking the court to declare that “footlong” is a generic description of a sandwich which is one foot in length. In addition, Casey’s is asking the court to declare Subway’s trademark registration “frivolous litigation”. Casey’s is asking for this form of relief because if the court does indeed hold that “footlong” is a generic term, then trademark protection would be unavailable to Subway, and as a result, Casey’s and others would be able to use the term in commerce without any repercussions. As seen in H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., in determining whether a mark is generic, a two-part inquiry is required: (1) what is “the genus of goods or services at issue” and (2) is the term at issue “understood by the relevant public primarily to refer to that genus of goods or services.” As described in In re Dial-A-Mattress Operating Corp., to prove the second part of the generic inquiry, any competent source such as consumer surveys, consumer testimony, trade journals, dictionary definitions, newspapers, and other publications is sufficient.
In Casey’s defense, Ed Sease, Casey’s counsel, stated, “we maintain the use of ‘footlong’ by itself to describe a sandwich, which is approximately a foot long, is as old as the hills and everybody has the right” to use the term. Several large fast food restaurants such as KFC, Pizza Hut, A&W, and Taco Bell have supported Casey’s cause. When analyzing the term “footlong,” an English professor would immediately notice that “footlong” is not part of the English language at all. In fact, the correct grammatical phrase would be a foot-long sub sandwich. Nevertheless, Casey’s maintains that “footlong” is a common phrase that Americans use to describe both sub sandwiches and hot dogs. For comparative purposes, Dunkin’ Donuts has successfully trademarked the words “Coolata” and “Dunkaccino” to refer to two of the company’s drinks. In addition, KFC has successfully trademarked the words “original recipe” and “extra crispy” to refer to its famous fried chicken.
When comparing “footlong” to “Coolata,” while both words are not part of the English language, “footlong” is a much closer fit to foot-long than “Coolata” is to any English word. While comparing “footlong” to “extra crispy” would be a much more complicated analysis, intuition would indicate that “footlong” has become generic in consumers’ minds as referring to a foot-long sub sandwich or a foot-long hot dog no matter if it comes from Subway, Casey’s, Quizno’s, Sonic, or National Coney Island. If history is any indication, in 2009, Subway sought a restraining order and preliminary injunction against the Pennsylvania-based fast food/gas station Sheetz over the use of “footlong.” The federal district court in Virginia rejected Subway’s request. While Subway has yet to respond to the complaint filed by Casey’s, it will be interesting to see whether the court holds that the term “footlong” has become generic in the minds of American consumers.
*Vlad Vidaeff is a second-year law student at Wake Forest University School of Law and is Vice President of the International Law Society. He holds a Bachelor of Arts in Sport Management and a minor in French from the University of Michigan. Upon graduation in May 2012, Mr. Vidaeff intends to either practice intellectual property law, international law, or sports and entertainment law.