San Diego - In a victory for the underdog, the Trademark Trial and Appeal Board (TTAB) this week sided with Sheetz of Delaware, Inc., the small convenience store chain that took on the nation's biggest fast food seller for its use of the word "footlong." Earlier in the year, Sheetz filed an opposition against Subway's federal trademark application for "footlong," arguing that the term is generic and has no secondary meaning.
In what turned out to be an all out war between the two companies, both submitted evidence of their own Teflon Surveys, each of which came to a different result as to the same question: Does the term "footlong" identify 12-inch sandwiches?" While the Board ultimately found the answer to be "yes," it noted that there were flaws in both of the surveys.
Making the problem worse for Subway, the TTAB found that even if "footlong" is not generic for sandwiches in the eyes of the general public, it is merely descriptive and lacking in acquired distinctiveness. Despite Subway pointing to the millions of dollars it has spent on marketing the term and its survey finding that 54% of people thought "footlong" referred to a brand name, the Board found that Subway had not used the term as a trademark, but rather to identify 12-inch sandwiches. Given this, it appears that as long as subway used "footlong" in relation to its subs, there is no amount of money it could have spent in ads to prove it had achieved secondary meaning among consumers.
Subway even lost out on its argument that "footlong" is distinctive as a Subway brand based on the numerous successful cease and desist letters the company has sent to other companies using the phrase. Rather than accepting this point, the Board instead found that all it evidenced was the other parties' reluctance to litigate with the enormous fast food chain. Highlighting this issue, the Board wrote, "The fact that applicant's business is much larger than some other establishments using "Footlong" in connection with 12-inch sandwiches does not establish applicant's right to exclusive use of the term." Further, it found that widespread use of the term "footlong" by competitors in itself went to show that the term lacked distinctiveness, marking the final blow for the fast-food sandwich giant.