Trademark rights in 'footlong' prove too much of a stretch for TTAB

United States of America

In a lengthy precedential opinion, the Trademark Trial and Appeal Board (TTAB) has sustained an opposition against an application for registration of the word 'Footlong' for “sandwiches, excluding hot dogs” (Sheetz of Delaware Inc v Doctor’s Associates Inc (Opposition No 91192657, September 5 2013)). The TTAB found that 'footlong' is a generic name for sandwiches and that, even if it is a merely descriptive term, it has not acquired distinctiveness.

Applicant Doctor’s Associates Inc owns the Subway chain of fast-food restaurants, which is now the world’s largest restaurant chain with more than 39,000 locations in over 100 countries. The chain is known for its six-inch and 12-inch (footlong) sandwiches containing high-quality ingredients. It applied to register FOOTLONG in conjunction with a massive advertising campaign in which it offered "$5 Footlongs".

Sheetz of Delaware Inc operates a chain of convenience stores and gas stations that also offer an extensive menu of high-quality sandwiches, under registered marks such as SCHMAGEL, SHMUFFIN and SCHMISCUITZ. For a time, Sheetz had mounted its own advertising campaign offering $4 Footlongs.

Unable to stomach the possibility that a competitor could obtain an exclusive right to use the term 'Footlong' for sandwiches, Sheetz filed an opposition in 2009 against applications for that term filed by Doctor’s. Although the case was designated for disposition under the TTAB’s Accelerated Case Resolution procedure, it took nearly four years to reach a final decision. This was due in part to the fact that the parties stipulated to the filing of an extensive quantity of evidence, including numerous notices of reliance, sales and advertising figures, third-party use evidence, expert reports and consumer surveys. In addition, Doctor’s raised numerous objections as to much of evidence offered by Sheetz. These objections were addressed by the TTAB in its decision.

Although it might seem at first glance that the TTAB provided much more information about footlong sandwiches than one might wish to know, the opinion contains perhaps the most comprehensive treatment on such issues as survey evidence, genericness and secondary meaning that the TTAB has ever written.

Some of Doctor’s evidentiary objections were based on the allegation that Sheetz had not identified all of its witnesses in pre-trial disclosures or discovery. The TTAB rejected all of these objections based on the following five factor test: 

  1. the surprise to the party against whom the evidence is offered;
  2. the ability of the party to cure the surprise; 
  3. the extent to which allowing the testimony would disrupt the trial;
  4. the importance of the evidence; and
  5. the non-disclosing party’s explanation for its failure to disclose the evidence. 

As to each type of evidence, the TTAB found that the non-disclosure had been cured or that it was harmless.

In evaluating the issue of genericness, the TTAB applied its standard two part test:

  1. What is the genus (or category) of the goods at issue? 
  2. Does the relevant public understand the designation primarily to refer to that genus of goods?

The parties each offered 'Teflon' type surveys designed to measure the “relevant public’s” understanding.  Doctor’s survey purportedly showed that 54.5% of consumers regarded 'footlong' as a brand name, 34% believed it to be a common name and 9.5% thought it was both.

By contrast, the survey conducted on behalf of Sheetz showed that 80% regarded 'footlong' as a type of sandwich and only 19% thought it was a brand name. None of the respondents thought it was both a brand and a type of sandwich.

The TTAB rejected Doctor’s survey based on several flaws in the methodology used. For example, the survey was deemed to have used a universe that was too narrow in that it focused too much on patrons of fast-food restaurants instead of a proper universe of all consumers who purchase and eat sandwiches. In addition, the Doctor’s survey did not include a proper mini-test to determine whether respondents understood the difference between a brand name and a generic name. Other questions in the survey were deemed to be improperly leading or otherwise biased.

The record in the case contained extensive third-party use evidence showing widespread use of 'footlong' as a common name for a type of sandwich 12 inches in length. Although Doctor’s showed that it had made substantial sales and advertising expenditures, this was insufficient in the TTAB’s view to overcome the third-party use and survey evidence offered by Sheetz. The TTAB also noted that Doctor’s had used the same style of lettering to denote both its six-inch and its footlong sandwiches. This reinforced the conclusion that Doctor’s had not used 'footlong' in a manner that would cause it to be recognised as an indicator of origin as opposed to a generic term.  

During the prosecution of its application, Doctor’s had persuaded the USPTO that its mark was merely descriptive rather than generic and that the term had acquired distinctiveness. The TTAB concluded, however, based on all of the evidence of record, that Doctor’s had not proven that its alleged mark had become distinctive. Citing prior decisions, the TTAB found that the mere fact that 'footlong' may have been used as an adjective instead of a noun did not justify a finding it to be descriptive rather than generic.

Michael A Grow, Arent Fox LLP, Washington DC 

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