San Diego – Subway is being sued in federal trademark court in a dispute over the term “Footlong”. Apparently, the world’s largest sandwich chain hopes the courts will rule that “Footlong” is a noun that describes its signature sandwiches. Subway has filed a Footlong trademark application and is currently using it in a multi-million dollar advertising campaign for its line of 12-inch sandwiches priced at five dollars.
Casey’s General Stores of Ankeny, Iowa, recently filed a complaint against Subway in U.S. District Court in Des Moines. Casey’s, which owns a chain of 1,600 stores in the Midwest, is fighting Subway’s claim of exclusive rights to the “footlong” term. It is in the process of launching a similar promotion to Subway, and is using the non-hyphenated term on menus and other marketing materials.
It appears as though the battle started when Subway attorneys declared proprietary rights to the term and threatened legal action against Casey’s. Casey’s responded to the threats by filing a claim, seeking a declaration that the term “footlong” is generic and should not be subject to exclusive rights. The Iowa-based convenience store company is willing to present the case to a jury and is seeking unspecified damages over claims that it violated Subway’s trademark. Subway has yet to file a response to the complaint.
In a who’s who of fast-food restaurant chains, other chains like Long John Silvers, A&W, KFC, Taco Bell and Pizza Hut have also joined in to oppose Subway’s trademark application for “footlong”. The prosecution of the application will now be delayed pending all of the litigation. A trial date has not been set.
Overall we like Subway’s chances. Though clearly not the strongest trademark possible for sandwiches, we think the Footlong trademark is defintely worthy of a 2(f) registration on the principal register (a 2(f) designation acknowledes that the trademark is at least somewhat descriptive but yet that it has acquired secondary meaning through extensive use). Seperately, we’re not sure what all the fuss is about in the line forming to oppose the trademark. Can’t those companies just one up Subway by creating a new trademark like 13 Incher? We checked and its not registered.