Fatal Obsession

Submitted by patentadmin on Fri, 03/04/2011 - 11:30

Some firms, like some people, are apparently unable to learn from experience. (Casey’s General Stores Inc. v. Doctor’s Associates Inc.)

Doctor’s Associates is the owner of the Subway chain of sandwich shops. As anyone who is not comatose is aware, Subway promotes, and promotes, and promotes “footlong” sandwiches for “$5 dollars.”

Casey’s is the owner of a chain of convenience stores. Casey’s recently inaugurated a “made-to-order sub sandwich program.” Casey’s “offers and intends to continue to offer ‘footlong’ sandwiches … for a price point at or about $5 dollars.”

Subway, which claims proprietary rights to the term “footlong” in respect of sandwiches – and, apparently, to the term “$5 dollars” as well – took umbrage at Casey’s advertising. Subway sent a cease-and-desist letter to Casey’s. Casey’s, which seems to have big cajones as well as a “footlong,” responded by suing Doctor’s Associates.

While Subway claims proprietary rights in “footlong,” its record with regards to enforcing these rights is less than impressive. Actually, it’s dismal. As noted in an earlier blog post, Look Before You Leap, Subway objected to use of the term “footlong” to describe the 12-inch long hot dogs sold by The Coney Island Drive Inn, in Brooksville, Florida. When the folks in Florida proved that they had been using the term for more than 40 years, the Subway attorneys decided that their letter had been sent in “error” and that their claim to exclusive use of the term “footlong” was limited to “sandwiches” which, in their minds, apparently did not include hot dogs.

At about the same time as the Coney Island Drive Inn “error,” Subway sued Sheetz, Inc., a convenience store chain, for using “footlong” in respect of “sandwiches” and sought a temporary restraining order and a preliminary injunction. The court denied Subway’s requests, noting on the record, that Subway “has problems with the fact that footlong, that’s certainly generic.” The judge then dismissed the case.

More recently, Subway sought to register the term as a trademark in respect of “sandwiches” and somehow got the application allowed by the Trademark Office. When the application was published for opposition, however, Long John Silvers, Taco Bell, Kentucky Fried Chicken, Dairy Queen, Pizza Hut and Domino’s Pizza each opposed it and it remains bogged down in litigation. Subway’s application to register the term in respect of “restaurant services” was apparently examined by a different Examiner, who simply rejected it on the grounds that the term was “generic.”

Faced with this history, Casey’s filed a lawsuit seeking a declaratory judgment that Subway has no trademark rights in the term “footlong” and that Casey’s continued use of the term is non-infringing. While they were at it, Casey’s added a claim of unfair competition, alleging that Subway’s efforts to register trademark rights in the term “footlong” and its continued enforcement efforts “are nothing more than an attempted market entry barrier, designed to stifle competition and prevent competitors … from selling or offering of a submarine-sandwich … at a competitive price with Subway.” Our money is on Casey’s in this matter.

Don’t get us wrong. We really like Subway’s sandwiches; but, their trademark policies – not so much.

THE LESSON TO BE LEARNED: Don’t fixate on generic terms as trademarks.

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