Are Footlong Sandwiches Trademarks?

Sandwich terminology has become the focus of a new trademark infringement lawsuit.  Casey’s General Stores, Inc., an Iowa-based chain of convenience stores, sued Subway seeking the determination that the term “footlong” is generic and is therefore not eligible for trademark protection.  While this suit popped up just last week, the dispute regarding trademark rights to the “footlong” term has been heating up for a year and a half.  Subway initially filed a trademark application with the U.S. Patent and Trademark Office in 2007, seeking trademark protection of the term “footlong” with sandwiches.  The application encountered several problems within the Patent and Trademark Office.  In 2009, ten different oppositions to the application were filed by a large number of restaurant chains, including Domino’s, Long John Silver’s, Taco Bell, Pizza Hut, A&W, KFC, and Dairy Queen.  Those opposition proceedings are continuing before the Trademark Trial and Appeal Board.

Then, on January 31st of this year, before those proceedings could be resolved and before Subway’s rights to the term “footlong” were officially recognized, Subway’s attorney sent a cease-and-desist letter to Casey’s General Stores.  The letter informed Casey’s General Stores that Subway had applied for registration of the term “footlong” and threatened legal action if Casey’s General Stores did not cease all use of the term.  Casey’s General Stores responded by seeking a declaratory judgment against Subway.  Read the full story here.

In my opinion, Subway is really reaching with this claim.  As mentioned in a prior post, generic terms are not eligible for trademark protection under the Lanham Act.  Therefore, the real issues in the Subway lawsuit are whether “footlong” is itself a generic term, or alternatively, whether Subway’s use of the term over the last several years has caused it to acquire a level of distinctiveness that excludes “footlong” from being considered generic.  For my vote, “footlong” is a generic term and Subway’s attempts are frivolous.  At best, Subway’s use of the term “footlong” is merely descriptive of the sandwiches themselves.  Descriptive terms are also very difficult to register as trademarks, and often must be registered on the supplemental register until the registrant can prove the terms has acquired the requisite level of distinctiveness.  Either way, I am at a loss to see how Subway will really benefit from the huge costs associated with defending its’ claims to the term.  Subway also risks some damage to its reputation, depending on how the public perceives its efforts.

What do you think?  Is Subway entitled to trademark protection of “footlong?”  Is the company taking a risk by pursuing these claims?  Please comment with your thoughts!