Trademark Opposition: “Footlong” is Generic or Descriptive, Not Trademark

By Eric Misterovich

Background

Subway Restaurants sought to trademark “FOOTLONG” for its sandwiches. Sheetz of Delaware, Inc. filed a trademark opposition opposing the registration of “FOOTLONG”, claiming that the term is indistinguishable from similar type foods (i.e., generic) because other food providers have used, and have the right to continue to use, that term generally. In arguing the case, both parties submitted “Teflon” surveys to gauge how consumers identified the term “FOOTLONG”. Both surveys were criticized for flaws, and the Board did not rely on them in making the “genericness” determination.

 

The Trademark Trial and Appeal Board (“the Board”) has sustained an opposition and refused to issue a trademark registration to Subway for its “FOOTLONG” trademark application for use in connection with its sandwiches. The Board determined that when used in connection with sandwiches “FOOTLONG” is generic and, in the alternative, that the term “FOOTLONG” is merely descriptive and has not acquired distinctiveness.

 

 

“Genericness”

There is a two-part test used to determine whether a designation is generic: (1) what is the genus of goods at issue? And, (2) does the relevant public understand the designation primarily to refer to that genus of goods?

 

The Board determined the genus of goods to be “sandwiches excluding hot dogs,” and that Subway’s use of the term “FOOTLONG” was in a manner not likely to be recognized as trademark use. Moreover, on the second point, the Board reasoned that the term “FOOTLONG” is widely used to refer to 12-inch sandwiches, and that “the term does not merely describe a sandwich, but in fact identifies a category of sandwiches included within the relevant genus.” The Board noted that neither Subway’s large-scale national presence, nor its expensive marketing campaign, establishes rights to exclusive use of the term. “The Trademark Act protects all competitors, big or small, against harm resulting from registration of generic terms,” the Board said.

 

Additionally, the Board studied Subway’s use of the term in its menus and advertisements, as well as Sheetz’s and other competitors’ use in those same methods. After reviewing numerous examples, the Board determined that Subway is not using the term in a manner likely to be recognized as a trademark. For example, Subway uses the term “foot long” nonspecifically in the phrase, “Giant Foot Long Sandwiches.” Likewise, in another example, Subway uses “FOOTLONG” to describe a sandwich that is one foot long.

 

After reviewing competitors’ examples, the Board determined that neither Sheetz’s nor any third parties’ use of the term in identifying their sandwiches, was intended to “function as an indicator of the source of the user’s goods.” For example, in one of Sheetz’s advertisements, the term “footlong” is used to convey a type of sandwich. The Board furthered reasoned that widespread use of the term by other food competitors offering similar goods is strong evidence that consumers “will not be able to differentiate between competing sources by viewing the term “FOOTLONG”’, which further evidences genericness.

 

In conclusion, the Board determined that “FOOTLONG” is generic and not the name of a product, but instead, an adjective referring to the length of a sandwich – whether it is made by Subway or one of its competitors.

 

 

“Distinctiveness”

Lastly, the Board determined that even if the term “FOOTLONG” is for some reason found not to be generic, it has not acquired distinctiveness, and thus is not entitled to trademark registration. Subway sought to prove the term acquired distinctiveness by pointing to its extensive sales and advertising, allegedly evidenced by Sheetz’s copying of the term, unsolicited media coverage, and its survey results.

 

To this the Board responded that while Subway has reached great commercial success, “sales success is not necessarily indicative of acquired distinctiveness, but may be attributed to many other factors, the most likely being that applicant offers a quality product at a competitive price.” The Board also determined that Sheetz did not copy the term “FOOTLONG”, but instead copied the idea behind the “$5 footlong” promotion, and sold their sandwiches for less. The Board further explained the unsolicited media coverage as not demonstrative of acquired distinctiveness because the term “FOOTLONG” is used generically in the media, and principally focuses on Subway’s “$5 footlong” promotion rather than the “FOOTLONG” term. And finally, the probative value of the survey results are outweighed by the problems the Board identified with the survey.

 

In conclusion, the Board determined that Subway failed to prove acquired distinctiveness, and that the term “FOOTLONG” is merely descriptive of a 12-inch sandwich.

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