Subway to Everyone Else: Stop Selling 'Footlong' Sandwiches

1. There is no way a mere "clerical error" caused the company to send cease-and-desist letters of this type.

2. Trademark law is unambiguous on the point that prior use of a mark in commerce always trumps (within the geographical area of such use) subsequent registration of that mark by one whose actual use was later in time. In other words, the prior use of "footlong" by the hot dog vendor for 40 years leaves that vendor with clearly superior rights to the use of that mark vis-a-vis Subway. The vendor's priority would be limited to the geographical area in which such use occurred and would not extend beyond that - this is why Amazon, for example, had to settle up with a local bookstore in Minneapolis named "Amazon" for having infringed its (i.e., the local bookstore's) superior trademark rights to use that name and mark in the Minneapolis-St. Paul area.

3. A putative trademark that likely is "purely descriptive" (such as "footlong") is not an enforceable mark and is not registrable on the primary register unless and until it acquires what is known as "secondary meaning" (such a mark acquires secondary meaning when the public primarily associates that mark with a particular producer notwithstanding its descriptive character).

4. Subway might have a shot at showing that its "footlong" mark has acquired secondary meaning given that it has spent mega-marketing dollars on it over a sustained period. The media fiasco resulting from this flap is not going to help its cause, however, as all guns will now be trained on it by anyone who has a vested interest in the issue.

5. By backing off on the hot dog issue, Subway is tacitly admitting that it has no hope whatever of showing that people will ever associate the mark "footlong" primarily with Subway when it comes to hot dogs. This part of what they are doing is smart. By limiting its claim to sandwiches only, Subway at least has some chance of getting its mark.

6. By the way, there is no problem with Subway (in theory) sending out C&D letters before its mark is registered. Just as the hot dog vendor did from its 40 years of use, so too Subway immediately acquires common-law rights to its mark based on its actual use in commerce. Assuming that the mark has already acquired the required secondary meaning from the actual use to date, it is an enforceable mark upon which Subway might choose to sue.

7. The broader point here, as noted by others, is that a company should not blindly follow formalistic advice from its attorneys without first considering how its actions will be perceived. By that measure, this was a pretty bonehead move on Subway's part.

What really seems dumb, though, is sending out cease-and-desist letters before getting the trademark granted. By bringing attention to all the other folks who are using the term "footlong" they're just weakening their own case. Furthermore, if the USPTO does grant the trademark, the affected parties, who have now been alerted to this, can file an opposition proceeding.

I bet subway wins too, as wrong as it is.