5 ms·

Subway to Everyone Else: Stop Selling 'Footlong' Sandwiches

36 points by grellas 16y ago

grellas 16y ago
A few observations on this: 1. There is no way a mere "clerical error" caused the company to send cease-and-desist letters of this type. 2. Trademark law is unambiguous on the point that prior use of a mark in commerce always trumps (within the geographical area of such use) subsequent registration of that mark by one whose actual use was later in time. In other words, the prior use of "footlong" by the hot dog vendor for 40 years leaves that vendor with clearly superior rights to the use of that mark vis-a-vis Subway. The vendor's priority would be limited to the geographical area in which such use occurred and would not extend beyond that - this is why Amazon, for example, had to settle up with a local bookstore in Minneapolis named "Amazon" for having infringed its (i.e., the local bookstore's) superior trademark rights to use that name and mark in the Minneapolis-St. Paul area. 3. A putative trademark that likely is "purely descriptive" (such as "footlong") is not an enforceable mark and is not registrable on the primary register unless and until it acquires what is known as "secondary meaning" (such a mark acquires secondary meaning when the public primarily associates that mark with a particular producer notwithstanding its descriptive character). 4. Subway might have a shot at showing that its "footlong" mark has acquired secondary meaning given that it has spent mega-marketing dollars on it over a sustained period. The media fiasco resulting from this flap is not going to help its cause, however, as all guns will now be trained on it by anyone who has a vested interest in the issue. 5. By backing off on the hot dog issue, Subway is tacitly admitting that it has no hope whatever of showing that people will ever associate the mark "footlong" primarily with Subway when it comes to hot dogs. This part of what they are doing is smart. By limiting its claim to sandwiches only, Subway at least has some chance of getting its mark. 6. By the way, there is no problem with Subway (in theory) sending out C&D letters before its mark is registered. Just as the hot dog vendor did from its 40 years of use, so too Subway immediately acquires common-law rights to its mark based on its actual use in commerce. Assuming that the mark has already acquired the required secondary meaning from the actual use to date, it is an enforceable mark upon which Subway might choose to sue. 7. The broader point here, as noted by others, is that a company should not blindly follow formalistic advice from its attorneys without first considering how its actions will be perceived. By that measure, this was a pretty bonehead move on Subway's part.
- ascuttlefish 16y ago
  Thank you for your detailed, informative, and interesting observations on this post and others. You're a credit to this community.
- erikwiffin 16y ago
  "Trademark law is unambiguous on the point that prior use of a mark in commerce always trumps (within the geographical area of such use) subsequent registration of that mark by one whose actual use was later in time." I was under the distinct impression that trademark law was unique in that it was a form of intellectual property where being first didn't guarantee a victory. For example: If McDonalds (the Golden Arches) opens up a franchise location in a small mid-western town where a Scottish family had been running a business for the past 200 years, the Scottish family could be forced to change their name because McDonalds has greater brand recognition. If you can find something that will back up your understanding (or mine, because I can't find anything), I'd really like to see it.
  - JshWright 16y ago
    http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#4 http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm... seems pertinent.
percept 16y ago
Here's an opportunity for a sandwich shop to capitalize on Subway's bad press with a 13-inch sandwich ("Ours is longer!").
- deleted 16y ago
  [deleted]
- proee 16y ago
  "Buy our SUPER 305, the longest sandwitch we've ever made at 305mm!!!"
  - chipsy 16y ago
    Why stop there? Go all the way and call it the "SUPER 305xmc" - with extra mayo and cheese! I would totally go to a sandwich shop that used obscure model numbers.
- Gormo 16y ago
  A great opportunity for publicity in general. If I owned the hot dog place, I'd say something along the lines of "Subway claims that we are unfairly benefiting from their trademark. But we pride ourselves on providing high-quality and delicious food to our customers; with that in mind, any association with Subway could only be detrimental to our reputation."
  - jrockway 16y ago
    Then you go to court and have to prove that Subway's food is not high-quality and delicious. Of course, when you argue that their ham is flavored turkey, you will probably win.
    - Gormo 16y ago
      But read that carefully - it doesn't actually directly claim that Subway's food isn't high-quality or delicious. At most it implies that there is at least some measure of association between the Subway brand and poor food, and the existence of the statement itself bears that out. Oh, and their turkey doesn't even taste like turkey.
ck2 16y ago
Hey welcome to America, where Amazon.com forced other bookstores older than them using the name "Amazon" to close and "Olympic" clubs older than the modern Olympics were successfully sued to change their name. I bet subway wins too, as wrong as it is.
- GFischer 16y ago
  They had bad lawyers, then (or wanted to avoid a legal battle). I know of several cases where the big bad megacorp has lost (one case: Intel Bras http://www.intelbras.com.br http://www.intelbras.com.br won against Intel Corp).
  - Agathos 16y ago
    Intel also lost that case where they tried to trademark a number (386 or 486). Looks like a precedent now that someone's trying to trademark a unit of measurement.
  - aristus 16y ago
    Also big blue computer shop, which fended off action from IBM.
hugh3 16y ago
I'd chalk this one up to bored trademark attorneys who managed to persuade a company with too much money to make a claim they probably won't succeed with. They have applied for a registered trademark on 'footlong' as applied to sandwiches, but I very much doubt they'll get it. What really seems dumb, though, is sending out cease-and-desist letters before getting the trademark granted. By bringing attention to all the other folks who are using the term "footlong" they're just weakening their own case. Furthermore, if the USPTO does grant the trademark, the affected parties, who have now been alerted to this, can file an opposition proceeding.
deleted 16y ago
[deleted]
zimbu668 16y ago
Clearly Subway considers "footlong" and "3 foot" to be trademarks and in no way connected to the actual length of their sandwiches, because the box their "3 foot" sandwich comes in isn't even 3 feet long. http://consumerist.com/2007/07/subways-3-foot-subs-are-shorter-than-3-feet.html http://consumerist.com/2007/07/subways-3-foot-subs-are-short...

36 points by grellas 16y ago

A few observations on this: 1. There is no way a mere "clerical error" caused the company to send cease-and-desist letters of this type. 2. Trademark law is unambiguous on the point that prior use of a mark in commerce always trumps (within the geographical area of such use) subsequent registration of that mark by one whose actual use was later in time. In other words, the prior use of "footlong" by the hot dog vendor for 40 years leaves that vendor with clearly superior rights to the use of that mark vis-a-vis Subway. The vendor's priority would be limited to the geographical area in which such use occurred and would not extend beyond that - this is why Amazon, for example, had to settle up with a local bookstore in Minneapolis named "Amazon" for having infringed its (i.e., the local bookstore's) superior trademark rights to use that name and mark in the Minneapolis-St. Paul area. 3. A putative trademark that likely is "purely descriptive" (such as "footlong") is not an enforceable mark and is not registrable on the primary register unless and until it acquires what is known as "secondary meaning" (such a mark acquires secondary meaning when the public primarily associates that mark with a particular producer notwithstanding its descriptive character). 4. Subway might have a shot at showing that its "footlong" mark has acquired secondary meaning given that it has spent mega-marketing dollars on it over a sustained period. The media fiasco resulting from this flap is not going to help its cause, however, as all guns will now be trained on it by anyone who has a vested interest in the issue. 5. By backing off on the hot dog issue, Subway is tacitly admitting that it has no hope whatever of showing that people will ever associate the mark "footlong" primarily with Subway when it comes to hot dogs. This part of what they are doing is smart. By limiting its claim to sandwiches only, Subway at least has some chance of getting its mark. 6. By the way, there is no problem with Subway (in theory) sending out C&D letters before its mark is registered. Just as the hot dog vendor did from its 40 years of use, so too Subway immediately acquires common-law rights to its mark based on its actual use in commerce. Assuming that the mark has already acquired the required secondary meaning from the actual use to date, it is an enforceable mark upon which Subway might choose to sue. 7. The broader point here, as noted by others, is that a company should not blindly follow formalistic advice from its attorneys without first considering how its actions will be perceived. By that measure, this was a pretty bonehead move on Subway's part.

ascuttlefish 16y ago
Thank you for your detailed, informative, and interesting observations on this post and others. You're a credit to this community.
erikwiffin 16y ago
"Trademark law is unambiguous on the point that prior use of a mark in commerce always trumps (within the geographical area of such use) subsequent registration of that mark by one whose actual use was later in time." I was under the distinct impression that trademark law was unique in that it was a form of intellectual property where being first didn't guarantee a victory. For example: If McDonalds (the Golden Arches) opens up a franchise location in a small mid-western town where a Scottish family had been running a business for the past 200 years, the Scottish family could be forced to change their name because McDonalds has greater brand recognition. If you can find something that will back up your understanding (or mine, because I can't find anything), I'd really like to see it.
- JshWright 16y ago
  http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#4 http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm... seems pertinent.

percept 16y ago

Here's an opportunity for a sandwich shop to capitalize on Subway's bad press with a 13-inch sandwich ("Ours is longer!").

deleted 16y ago
[deleted]
proee 16y ago
"Buy our SUPER 305, the longest sandwitch we've ever made at 305mm!!!"
- chipsy 16y ago
  Why stop there? Go all the way and call it the "SUPER 305xmc" - with extra mayo and cheese! I would totally go to a sandwich shop that used obscure model numbers.
Gormo 16y ago
A great opportunity for publicity in general. If I owned the hot dog place, I'd say something along the lines of "Subway claims that we are unfairly benefiting from their trademark. But we pride ourselves on providing high-quality and delicious food to our customers; with that in mind, any association with Subway could only be detrimental to our reputation."
- jrockway 16y ago
  Then you go to court and have to prove that Subway's food is not high-quality and delicious. Of course, when you argue that their ham is flavored turkey, you will probably win.
  - Gormo 16y ago
    But read that carefully - it doesn't actually directly claim that Subway's food isn't high-quality or delicious. At most it implies that there is at least some measure of association between the Subway brand and poor food, and the existence of the statement itself bears that out. Oh, and their turkey doesn't even taste like turkey.

ck2 16y ago

Hey welcome to America, where Amazon.com forced other bookstores older than them using the name "Amazon" to close and "Olympic" clubs older than the modern Olympics were successfully sued to change their name. I bet subway wins too, as wrong as it is.

GFischer 16y ago
They had bad lawyers, then (or wanted to avoid a legal battle). I know of several cases where the big bad megacorp has lost (one case: Intel Bras http://www.intelbras.com.br http://www.intelbras.com.br won against Intel Corp).
- Agathos 16y ago
  Intel also lost that case where they tried to trademark a number (386 or 486). Looks like a precedent now that someone's trying to trademark a unit of measurement.
- aristus 16y ago
  Also big blue computer shop, which fended off action from IBM.

hugh3 16y ago

I'd chalk this one up to bored trademark attorneys who managed to persuade a company with too much money to make a claim they probably won't succeed with. They have applied for a registered trademark on 'footlong' as applied to sandwiches, but I very much doubt they'll get it. What really seems dumb, though, is sending out cease-and-desist letters before getting the trademark granted. By bringing attention to all the other folks who are using the term "footlong" they're just weakening their own case. Furthermore, if the USPTO does grant the trademark, the affected parties, who have now been alerted to this, can file an opposition proceeding.

deleted 16y ago

[deleted]

zimbu668 16y ago

Clearly Subway considers "footlong" and "3 foot" to be trademarks and in no way connected to the actual length of their sandwiches, because the box their "3 foot" sandwich comes in isn't even 3 feet long. http://consumerist.com/2007/07/subways-3-foot-subs-are-shorter-than-3-feet.html http://consumerist.com/2007/07/subways-3-foot-subs-are-short...