Generic, according to the Trademark Trial and Appeal Board. In Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341 (TTAB 2013), a precedential decision, the Board refused Subway’s application to register FOOTLONG for sandwiches because the term is generic. It added that even if FOOTLONG were only merely descriptive, Subway had not proven acquired distinctiveness. That distinction matters: a descriptive term can become a registrable trademark, but a generic term never can.
Generic vs. Descriptive: Why the Difference Matters
Trademark law sorts words along a spectrum of distinctiveness. At the weak end are two categories that are easy to confuse but lead to very different results:
- Merely descriptive terms immediately describe a quality, feature, or characteristic of the goods or services, such as size or flavor. The USPTO refuses them under Section 2(e)(1) of the Lanham Act, but they can be registered on the Principal Register once they acquire distinctiveness, also called secondary meaning, under Section 2(f).
- Generic terms name the class or category of goods or services itself. No amount of advertising, sales, or market share can turn a generic term into a trademark, because competitors need the word to describe what they sell.
The Lanham Act frames genericness in terms of public perception. Under 15 U.S.C. § 1064(3), the primary significance of a registered mark to the relevant public, rather than purchaser motivation, determines whether it has become generic. Even established brands can lose their rights this way through trademark genericide. If your term is descriptive rather than generic, our guide to registering a descriptive trademark explains the path forward.
The Test for Genericness
The USPTO and the Federal Circuit use a two-step inquiry from H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986):
- What is the genus, or class, of goods or services at issue?
- Does the relevant public understand the term primarily to refer to that genus?
Two later decisions refined this framework. In Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018), a dispute over ZERO for soft drinks, the Federal Circuit held that a term can be generic if the relevant public understands it to refer to a key aspect of the genus, such as a sub-group or type of goods, not only the genus as a whole. And in United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. 549 (2020), the Supreme Court rejected a rule that “generic.com” terms are automatically generic, holding that the answer depends on whether consumers perceive the term as the name of a class or as a term capable of distinguishing among members of the class. We discuss that ruling in our article on the Booking.com Supreme Court decision.
The FOOTLONG Case
Background
Doctor’s Associates Inc., the company behind Subway restaurants, filed a use-based application in November 2007 to register FOOTLONG in standard characters for “sandwiches” (Serial No. 77324328). Sheetz of Delaware, Inc. opposed (Opposition No. 91192657), arguing that the term is generic for sandwiches or, alternatively, merely descriptive without acquired distinctiveness. The Board issued its decision on September 5, 2013.
During the case, Subway amended its goods to “sandwiches, excluding hot dogs,” arguing that a hot dog is not a sandwich. The Board granted the amendment, while noting that, based on a dictionary definition, it considers a hot dog to be a sandwich.
The Genus and the Relevant Public
The Board defined the genus as sandwiches, excluding hot dogs. Because the application did not limit trade channels or classes of customers, the relevant public was ordinary consumers who purchase and eat sandwiches.
What the Evidence Showed
- Dictionary evidence defined “footlong” as an adjective meaning about one foot in length.
- Subway’s own advertising used the term to denote a type of sandwich that is approximately one foot long.
- Subway argued that dictionaries do not define “footlong” as a sandwich. The Board held that this was not controlling, because the record showed the term has a well-understood meaning as a 12-inch sandwich, and a term can be generic even without a dictionary definition of the compound word.
- Sheetz introduced numerous examples of third parties using “footlong” for 12-inch sandwiches, and the Board found that consumers had become conditioned to recognize that many businesses use the term.
- Subway argued those third parties were small, local operations. The Board disagreed, stating that the Trademark Act “protects all competitors, big or small” against registration of generic terms.
The Board concluded that “footlong” does not merely describe a sandwich; it identifies a category of 12-inch sandwiches within the genus, so it should remain free for competitors to use.
The Survey Battle
Both parties offered “Teflon”-style surveys, a format that teaches respondents the difference between brand names and common names before asking about the term in question. In Subway’s survey, 54% of respondents identified FOOTLONG as a brand name; in the rebuttal survey, 80% identified it as a type of product. The Board found significant problems with Subway’s survey, including a universe tilted too heavily toward fast-food patrons rather than all sandwich consumers, no mini-test to confirm that respondents understood the brand-versus-common-name distinction, and a leading question.
The Alternative Holding: No Acquired Distinctiveness
For completeness, the Board also held that, even if FOOTLONG were merely descriptive, Subway had not shown acquired distinctiveness under Section 2(f). Subway pointed to a marketing campaign that nearly doubled annual FOOTLONG sandwich sales, from $541 million to $936 million, but the Board explained that sales success may reflect a quality product at a competitive price rather than brand recognition. Subway’s at least thirty cease-and-desist demands did not change the result, because competitors’ compliance can simply reflect a desire to avoid litigation. And being the first or largest user of a term does not entitle a company to register it.
The Board also explained why the law keeps these words available. Protecting competitors’ ability to use descriptive and generic terms is part of the purpose of Section 2(e)(1). Quoting the First Circuit’s decision in Boston Duck Tours LP v. Super Duck Tours LLC, 531 F.3d 1 (1st Cir. 2008), the Board observed that competitors unable to use a common term that describes their product are at a significant disadvantage in communicating with customers. Having adopted a descriptive term, the Board said, Subway should not be surprised that others use it too.
Lessons for Brand Owners
- Choose inherently distinctive names. Fanciful, arbitrary, and suggestive marks avoid the generic-versus-descriptive fight entirely.
- Use your mark as a brand, not as the name of the product. Pair it with a generic noun and keep usage consistent across menus, packaging, and advertising. The Board looked closely at how Subway itself used FOOTLONG.
- Watch how competitors and the media use the term. Widespread third-party use is powerful evidence of genericness.
- Design surveys carefully. A flawed universe or missing controls can make expensive evidence nearly worthless.
- Focus on consumer perception. As Booking.com confirms, genericness depends on how the relevant public actually understands the term.
- Use the rules offensively, too. If a competitor has registered a term your industry needs, a petition to cancel a generic trademark may be available.
Where Does Your Mark Fall?
The line between a descriptive term that can earn protection and a generic term that never will is often the most important question in a brand’s life, and it is far cheaper to answer before you invest in a name.
The trademark attorneys at Revision Legal can evaluate your proposed or existing marks, respond to descriptiveness and genericness refusals, and handle oppositions and cancellations before the TTAB. Contact us through the form on this page or call (855) 473-8474.
