

Subway to Everyone Else: Stop Selling 'Footlong' Sandwiches - grellas
http://www.npr.org/blogs/money/2010/05/subway_to_everyone_you_cant_se.html

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grellas
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.

~~~
erikwiffin
_"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
[http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...](http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#4)
seems pertinent.

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hugh3
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.

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

~~~
Gormo
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
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
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.

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ck2
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
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> won against Intel Corp).

~~~
Agathos
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.

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zimbu668
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-
short...](http://consumerist.com/2007/07/subways-3-foot-subs-are-shorter-
than-3-feet.html)

