This week’s post is a good example of the Trademark Office arguably failing to competently perform its duties and the importance of the opposition period to those who may be affected by the Trademark Office’s questionable decisions.
On November 8, 2007, the well-known restaurant chain Subway filed an application to register the trademark FOOTLONG for “sandwiches.” According to the application, Subway has been using the FOOTLONG mark in interstate commerce since 1967. The Trademark Examining Attorney initially refused registration of Subway’s trademark on the basis that it merely describes a feature of Subway’s products, namely that Subway’s sandwiches are approximately one foot in length. In response, Subway filed a half-hearted response claiming that “the term footlong does not in any way describe a sandwich. While the term may be suggestive of a large sandwich, such suggestiveness cannot preclude registration.”
After the Trademark Examining Attorney was finished laughing hysterically at Subway’s inane argument, she issued a second refusal in which she maintained her descriptiveness rejection. However, she left the door open for Subway to assert what is called “acquired distinctiveness” based on Subway’s extensive use of the FOOTLONG trademark over the past 40 years. In other words, if Subway admitted in its application that the term FOOTLONG was merely descriptive of its sandwiches, but provided evidence to the Trademark Examining Attorney showing that the general public associates the word FOOTLONG almost exclusively with Subway’s sandwiches, then she would consider the evidence and allow registration of the mark if the evidence was substantial and convincing.
Of course, Subway jumped at this opportunity and provided the Trademark Examining Attorney with pages upon pages of advertisements and website printouts showing use of FOOTLONG by Subway and other third parties to refer to Subway’s sandwiches. In addition, Subway submitted a chart laying out how many sandwiches Subway sold between the years 2000 and 2008, which numbered in the billions. The Trademark Examining Attorney reviewed this evidence, decided that it was sufficient to establish a claim of acquired distinctiveness, and withdrew her merely descriptive refusal.
Some of you reading this may believe that the Trademark Examining Attorney should not have withdrawn her descriptiveness refusal. Although there is no question that Subway has used the word FOOTLONG extensively for over four decades, you may think that it’s just too descriptive/generic such that no amount of evidence should have persuaded the Trademark Examining Attorney to reverse her initial rejection. Well, you’re not alone. Kentucky Fried Chicken, Pizza Hut, Taco Bell, Long John Silvers, A&W Restaurants, KBI Holdings (owner of Blimpie and Cold Stone Creamery), and a service station/convenience store operator have now all recently filed oppositions against Subway’s pending application for FOOTLONG on the basis that the term is generic for 12 inch sandwiches or, in the alternative, that the term is merely descriptive and Subway has failed to prove the requisite acquired distinctiveness.
If you want my opinion, I think the Trademark Examining Attorney made a huge mistake in approving Subway’s application. Clearly, if my favorite fictional restaurant Submart (you know, from the Domino’s Pizza commercials) filed an application to register “TWELVE INCH” as a trademark for its 12 inch subs, the Trademark Office would (hopefully) refuse registration on the basis that “TWELVE INCH” is merely descriptive, if not generic, for sandwiches that are 12 inches in length. I’m pretty sure we can all agree that Submart should not be granted exclusive rights to use “TWELVE INCH” in connection with its sandwiches because that would unfairly hinder Submart’s competitors from using the same descriptive/generic term in connection with their 12 inch sandwiches.
So, if we agree that “TWELVE INCH” is freely available for unrestricted use by Submart and all other sub shops in connection with their 12 inch sandwiches, then shouldn’t the term “FOOTLONG” be treated in a similar fashion? Of course they should. They have exactly the same meaning and they both describe the length of the sandwich. If we allow Subway to monopolize a term like “FOOTLONG,” then we limit the options that Subway’s competitors have to describe the length of their sandwiches. Poor Submart will have to start calling its $5 subs “500 Penny Twelve Inchers” so as not to cause confusion with Subway’s “$5 Footlongs.” And my second favorite fictional restaurant Super Sub will be reduced to calling its $5 subs “100 Nickel 30.48 Centimeters-ers.” Just rolls right off the tongue. I’ll have mine with double bacon.
The bottom line is that the Trademark Examining Attorney should have looked at the bigger picture and asked herself what the ramifications of allowing Subway to monopolize a word like FOOTLONG would be for Subway’s competitors. If she would have kept that question in mind while examining the immense amount of evidence provided to her by the obviously-biased Subway, I believe she would have come to a very different conclusion.