Subway’s Footlong Is Not. [WITH UPDATES]

[Update September 6]

And, oh by the way, FOOTLONG is not registrable. http://thettablog.blogspot.com/2013/09/precedential-no-36-ttab-finds-footlong.html

Subway’s recent problems with the verisimilitude of its FOOTLONG (or not) brand for doughy sandwiches made with pre-cut, pre-measured ingredients is an interesting collision of trademark law and market hype. As many of you know from reading this space, the writings of the popular press sometimes have very little connection to what is actually going on in a particular case or controversy, so let’s break this one down.

[Update January 25] There are now reports of the inevitable lawsuits claiming false advertising. I see coupons on the horizon.

The Subway sandwich shop chain is ubiquitous in the U.S., appearing in standalone locations, gas stations, large retail chains, and other places that only they have thought of. The company, a franchise megalith, sells standardized sandwich meats on rolls. In different parts of the country, they variously fall into the category of hero, hoagie,  sub, submarine sandwich, grinder, po’boy, bomber or torpedo. Up here in Maine, they are called “Italian sandwiches”. Same thing: spongy bread holding sandwich meats, meatballs, tuna salad, and what not.

Well, how best to distinguish their offering from that of others? Subway decided to call theirs FOOTLONG. Spoiler Alert! It’s not. It is more like 11 inches. Everyone got into the act. The whole thing apparently started in Australia, when the Subway folks initially said the bread wasn’t baked right “this bread is not baked to our standards,” Comments and hilarity prevailed.

So Subway took  another tact: they claimed that the word was, in fact operating as a true trademark and not merely describing the product.

As reporting in HuffPo (via Buzz Feed), here is Subway’s explication:

With regards to the size of the bread and calling it a footlong, ‘SUBWAY FOOTLONG’ is a registered trademark as a descriptive name for the sub sold in Subway® Restaurants and not intended to be a measurement of length. The length of the bread baked in the restaurant cannot be assured each time as the proofing process may vary slightly each time in the restaurant.

Hold on. Let’s start with the facts. The mark SUBWAY FOOTLONG is not a registered trademark, at least in the U.S. [Update: apparently the compound mark SUBWAY FOOTLONG is registered in Australia and New Zealand, but here we are focussing on the single word mark FOOTLONG]   Subway has sought to register FOOTLONG IN THE U.S., but has to date been unsuccessful. Their application (Serial No. 77324328) was filed in 2007 and was once suspended because of the existence of another registration incorporating the term FOOTLONG, namely FOOTLONG EXPRESS (Registration No. 2161133). The original FOOTLONG EXPRESS was cancelled in an adversary proceeding, and now Subway’s own FOOTLONG mark is held up in an adversary proceeding. Although at one time the FOOTLONG registration faced opposition from a who’s who of fast food proprietors, most withdrew their opposition. But, the argument is being pursued by at least one competitor . Here’s an excerpt from the Table of Contents from their trial brief before the TTAB.

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So, give the Subway folks credit: they are consistent: a measurement is not descriptive in that it does not accurately describe the product. But, to use a mark that is misdescriptive is problematic, to say the least. It’s a tough position to put over on the PTO, as well as consumers. What kind of brand misdescribes and misdirects? A weak brand (at best). Your mileage may vary.

[Update January 25]  Well, after all that, Subway has reversed its position, now stating “We have redoubled our efforts to ensure consistency and correct length in every sandwich we serve,” the statement said, while declining to offer comment on the suits specifically. “Our commitment remains steadfast to ensure that every Subway Footlong sandwich is 12 inches at each location worldwide.”

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