Friday, May 14, 2010

How many things are a foot long?

So Subway (the national sandwich chain, the guys behind Jared and his nice weight loss) has decided to register a new trademark.
They've registered "footlong".
Much to my shock and surprise the PTO actually granted their registration - or more specifically, accepted for publication. Basically they submitted an application and the PTO said that the term is sufficiently unique to be granted a trademark registration unless anyone can show otherwise.
They publish in the Official Gazette, then people who may also have an interest in the name can oppose the registration.
So far it looks like 9 oppositions have been filed and one application to extend time to allow an opposition to be filed.

It's a bit of a complicated history. Doctor's Associates Inc. (yes, that's the corporation that owns Subway) filed a registration for "footlong" in relation to sandwiches.
The registration was denied because of pre-existing marks for "footlong express" that sold hotdogs at sporting events.
DAI fought that, saying sandwiches are basically nothing like hotdogs and since DAI doesn't sell at sporting events, there's no likelihood of confusion.

The PTO didn't buy it.

So DAI filed to cancel the pre-existing marks.
And the owner of that mark didn't bother to file an answer defending it. Subsequently the mark for "footlong express" was canceled and now there's no likelihood of confusion.

The application was also refused because it was merely descriptive of the goods. The sandwiches are a foot long (I've never measured, but I'd be surprised if they really were).
Well that was dropped because DAI said basically that "footlong" just tells you something is 12 inches, but it doesn't tell you what is 12 inches. It could be foot long neckties. It takes imagination to leap from an adjective to the noun it describes.
The PTO bought this and let it go forward.

Now I think what really happened was more along the lines of the PTO throwing its hands in the air and saying to itself - these folks are really going to fight for this and we don't have the resources, time, or inclination to go into the historical use of the word "footlong" so we'll just approve it and let someone else oppose it and fight it out in a trial.

Which is what's happening now.

Now this came to my attention because DAI has been sending cease and desist letters to small mom and pop delis to get them to stop calling their sandwiches "footlongs".
However, it is nice to know that DAI is not going to get away with simply throwing it's weight around and intimidating or outspending the little guy. Big guys are opposing the registration. Here's a list of the opposers so far:

A&W Restaurants, Inc.
Long John Silver's Inc.
KBI Holdings, L.L.C.
RaceTrac Petroleum, Inc.
Taco Bell Corp.
Sheetz, Inc.
American Dairy Queen Corporation
Firehouse Restaurant Group, Inc.
America's Drive-In Brand Properties LLC
KFC Corporation
Pizza Hut, Inc.
Kahala Franchise Corp.

So looks like this is going to be a big fight over a big sandwich.

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