…lawsuits?

Rest assured Doctor’s Associates, Inc. (whom you may know simply as Subway) will be paying a bit more than $5 as it defends a declaratory judgment action filed against it in district court in Iowa in a dispute over the exclusivity of its rights to the word “FOOTLONG” used in connection with sandwiches.

After receiving a cease-and-desist letter from Subway, Casey’s General Store filed a declaratory judgment action, asking the court to issue a declaration that the term “FOOTLONG” is generic when used in connection with a “footlong submarine sandwich” and thus Casey’s use of the term does not violate any trademark rights owned by Subway.

As usual, Ryan Gile provides detailed coverage, chock full of citations here.   Aaron Thalwitzer chimes in here, and, though not a Pennsylvanian, gets extra credit for his use of the (obviously correct) “hoagie” nomenclature.

So what happens next?

As Ryan Gile notes, Casey’s complaint cites to another pending lawsuit between Subway and convenience store Sheetz Inc. (another purveyor of delicious hoagies–  or whatever you want to call them– of the twelve-inch variety), the Court has denied Subway’s  motion for a preliminary injunction and in doing so made the comment that the term “footlong” is “certainly generic.”

Although I think most of us would agree that “FOOTLONG” is generic and/or descriptive when used in connection with a twelve-inch sandwich, the question still remains whether Subway can muster evidence of secondary meaning or “acquired distinctiveness.”

Here, Subway might actually have a decent chance of success.  Anyone who has had a certain melody stuck in their head since reading the title of this post can tell you that Subway’s marketing of the “FOOTLONG” has been nothing short of aggressive.

But is this enough to support Subway’s argument of acquired distinctiveness?

Put differently, when you hear the term “footlong,” do you immediately think Subway?  If yes, maybe our friends at Doctor’s Associates are on to something.  If no (or maybe), I think the guys at Sheetz and Casey’s (and every other places that serves twelve-inch sandwiches) can breathe easy and continue to use the “f-word.”

 

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