Give Them an Inch and They’ll Claim a Footlong Trademark

If you have not heard, the owner of the Subway sandwiches restaurant chain owns the mark FOOTLONG for sandwiches.  Or at least that what it claims.  We know this because it became very public that Subway sent a demand letter to The Coney Island Drive Inn, putting the local company on notice “to cease and desist from using FOOTLONG™ in association with sandwiches.”  The demand letter also mentions that Subway “has applied for the trademark FOOTLONG™ in association with sandwiches at the United States Patent and Trademark Office (“USPTO”) bearing application number 77/324,228.”  (Not to be nitpicky, but Application Serial No. 77/324,228 is for the mark OKEI-SAN for wine, and it's registered to David Girard Vineyards, Inc.)      

It turns out, The Coney Island Drive Inn has been selling hotdogs called “footlongs” for over 40 years.  Ouch!  Not long ago, in prosecuting the application to register the mark FOOTLONG (Application Serial No 77/324,328), Subway even argued that “at least one web-based dictionary has defined footlong to mean a one foot long hot dog.”  Oops.  Not to worry, Subway now claims that the demand letter to The Coney Island Drive was a mere “clerical error.”  Currently, the company only takes issue with use of the term FOOTLONG in connection with sandwiches, not hot dogs.        

 

It also turns out that several competitors disagree with Subway’s claimed right to the term FOOTLONG for sandwiches.  Currently, nine proceedings are pending before the U.S. Trademark Trial and Appeal Board (“TTAB”), opposing Subway’s application to register the mark FOOTLONG.  Perhaps Subway’s demand letter to The Coney Island Drive Inn was a late effort intended to support its defense of the opposition proceedings.  Or perhaps it was just a clerical, tactical, or strategical error. 

In any event, even if Subway were to someday obtain its trademark registration and become the exclusive dealer of footlong sandwiches, the public backlash suggests it may have done so at the expense of consumers switching to the yardlong or some other measurement of a sandwich.