subwayNo, this is not another contribution to the on-going debate over whether Subway’s vaunted “footlong” sandwiches actually measure 12 full inches. I will leave that to the consumer affairs bloggers. Our concern is with Subway’s effort to monopolize the word “footlong” as a registered trademark for 12-inch, give or take, heros/submarines/wedges/hoagies/grinders. Last week the Trademark Trial and Appeal Board, in an EXTRA LARGE™ 61-page opinion, rejected Subway’s application, ruling that “footlong” was a widely and long-used generic term for for sandwiches of a certain length.


Subway’s application for registration was opposed by Sheetz, a Pennsylvania-based chain of convenience stores. (As Mitt Romney discovered in 2012, the debate over whether Sheetz or WaWa, if either, makes the better hoagie is something of a third rail in Pennsylvania politics, and we will not go there either.) The TTAB opinion is a fine primer or refresher on both the law of genericness and the nature of the evidence that might be considered to establish or refute a claim of genericness (along with a discussion on the oft-mooted question of whether a hot dog is a sandwich, Subway evidently conceding that “footlong” was generic when applied to franks).

Of particular interest is the Board’s critique of a consumer survey presented by Subway which purported to show that 54% of consumers thought “footlong” was a brand name. The Board found the survey flawed on a number of grounds. First, it found, the universe of respondents, which was limited to frequent and recent fast-food customers, rather than consumers of sandwiches generally, was too narrow. Second, the Board faulted the survey for giving the respondents only examples of protectable brand names that were particularly heavily-advertised, perhaps creating the misimpression that any common term, if advertised heavily enough by a particular seller, could achieve such status. Relatedly, after giving examples of brand and common names, the survey simply asked respondents whether they understood the difference, rather than testing their actual understanding. Finally, the Board found that the reliability of the survey was undermined by giving respondents the option to answer that a particular name was both common and brand.

The Board also addressed the argument, supported by some legal authority, that an adjective such as “footlong,” as opposed to a noun, can not be considered generic:

In this case, the record makes clear that “footlong” has and continues to be

widely used in the food and restaurant industry to refer primarily to 12-inch

sandwiches. The term does not merely describe a sandwich, but in fact identifies a

category of sandwiches included within the relevant genus. And because “Footlong”

identifies a category of sandwiches 12 inches long, it should be freely available for

use by competitors.

All in all, a good day for the speakers of vernacular English, and a bad one for trademark bullies.

Leave a comment

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

  • Recent Posts

  • Unfair to Genius

    Unfair to Genius is an enlightening and entertaining romp through 60 tumultuous years of legal, artistic, and economic change in the American popular music industry, as seen through the lens of one of its most prolific copyright litigants and legendary outsiders, Ira B. Arnstein. "I suppose we have to take the bad with the good in our system which gives everyone their day in court," Irving Berlin once said, but "Arnstein is stretching his day into a lifetime."

    "Rosen paints a fascinating portrait of one of history's most fertile creative eras--the rise of Tin Pan Alley, or the 'Age of the Songwriter' as Rosen calls it--and the book brims with history relevant to today's disruptive technology climate."

    -Publishers Weekly

    "There's fun to be found in 'Unfair to Genius' as it leavens legal history with showbiz anecdote, and insight with amusement."

    -The Wall Street Journal

    “Superbly researched and written . . . Rosen deftly plots the rise of the music industry in America."


  • Categories

  • Gary A. Rosen

    Gary A. Rosen, a lawyer, has litigated copyright, patent, and other intellectual property cases for more than 25 years, and is a Lecturer in Legal Studies at the University of Pennsylvania's Wharton School. Before entering private practice, he served as a law clerk to federal appellate judge and award-winning legal historian A. Leon Higginbotham, Jr. He holds a degree in physics from Haverford College and graduated magna cum laude from the University of Michigan Law School. He and his wife Lisa, a physician, and their two children live outside Philadelphia.
  • Advertisements
%d bloggers like this: