Subway Claims Trademark On 'Footlong' Threatens Hotdog Seller Who's Been Selling Footlongs For Decades

from the descriptive? dept

Thu, May 13th 2010 8:34am — Mike Masnick

Another day, another ridiculous trademark claim. Ubiquitous sandwich shop Subway threatened a hot dog provider in Coney Island who had been selling "footlong" hotdogs for decades, claiming that it had applied for a trademark on "footlong." The cease and desist demanded that the company cease using the designation for their hotdogs (and on their website, which is GoFootlongs.com).

There are all sorts of problems with this. First, the trademark is only applied for, so Subway doesn't even know if it's going to get the trademark. Demanding a cease & desist is a bit premature. Also, it's hard to see the USPTO approving this (one hopes), seeing as "footlong" is purely descriptive, and you're not allowed (in theory) to get trademarks on something that is purely descriptive.

Even so, when the folks at Planet Money (who have a sudden, if amusingly odd, interest in trademark law), called Subway, the company claimed that the cease & desist was a mistake. A "clerical error," a spokesperson claimed. I'm confused how a clerical error leads to a legal threat, but such is life these days. The error was apparently that Subway only intends to bully those selling "footlong" sandwiches, rather than "footlong" other things, such as hot dogs.

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Filed Under: footlong, hotdogs, sandwiches, trademark
Companies: subway

41 Comments

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Dark Helmet (profile), 13 May 2010 @ 8:47am

Sing w/me now...
Five......five dollar......five dollars now going to Jimmy JOOOOOHHHHHNNNNSSSS!
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Joel (profile), 13 May 2010 @ 8:49am

What a joke...
A lot of people use the descriptive word footlong...Don't even get me started. lol
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AnonymousCoward, 13 May 2010 @ 8:52am

Footlong sandwiches/hoagies have been around for decades. How could one ever think they can get a legitimate trademark on it?
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Dark Helmet (profile), 13 May 2010 @ 8:59am

Re: What a joke...
Like Mo Bigsley?
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Chronno S. Trigger (profile), 13 May 2010 @ 9:02am

Sheetz?
There's a place up in the North East US called Sheetz that sells $4 footlongs. It's even labeled that way on the sign, a direct jab at Subway. I wonder if this is related.
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Anonymous Coward, 13 May 2010 @ 9:17am

and I eat from subway, I can't believe this.
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Larry Wright, 13 May 2010 @ 9:23am

Footlong
I eat at Subway semi-regularly, and I think from now on when I order a full-sized sandwich I'll make a point of asking for 'a twelve incher' and see if they notice.
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Royce, 13 May 2010 @ 9:29am

Re: Footlong
Doubt it as you will be doing business at one of the franchises which probably have no clue what is going on in headquarters legal department. Sad that the franchises will be hurt for corporates stupid tactics.
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A Dan (profile), 13 May 2010 @ 9:42am

Embedded document
Is the document completely unreadable for anyone else? For me it looks like there are two sets of words overlaid on each other.
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Ed Woychowsky, 13 May 2010 @ 9:43am

Subway
New York City should sue over the use of the word Subway. It'd be a great way to end their fiscal issues.
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ComputerAddict (profile), 13 May 2010 @ 9:50am

Re: Embedded document
Yea I see the same thing, Its happened to me on a couple other documents with this .docstoc flash widget
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Danny, 13 May 2010 @ 9:51am

Seriously? Trademark on the footlong? Well considering that there is actually sandwich called the footlong I don't see how this can be claimed. However we also live in a country where cell phone providers literally spend more money on arguing over who can claim that they have the "best service", "largest network", and "fewest dropped calls" than on their actual networks...
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Ben (profile), 13 May 2010 @ 9:53am

Re: Embedded document
I see the same thing.
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ComputerAddict (profile), 13 May 2010 @ 9:53am

Re: Re: Embedded document
Just figured out if you use the highlight tool it becomes a little clearer, or you can download it as a PDF either from the button on the top or the menu and the downloaded PDF looks normal.
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Boost, 13 May 2010 @ 10:13am

Re: What a joke...
That's what she said...
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Comboman (profile), 13 May 2010 @ 10:19am

Re: What a joke...
Only a foot long? I feel sorry for you. ;-)
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Liam (profile), 13 May 2010 @ 10:47am

Foot long
surely "foot long" is a descriptive term "footlong" could very well get the trademark.
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Mike Masnick (profile), 13 May 2010 @ 10:51am

Re: Embedded document
Is the document completely unreadable for anyone else? For me it looks like there are two sets of words overlaid on each other.

Hmm. Yeah, actually. I'm seeing that too. Never had that problem before... let me see if I can upload a new copy and see if that works.
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R. Miles (profile), 13 May 2010 @ 10:52am

The Coney Island dog vendor should...
...just change the name to Monster dogs.

Oh, wait.

Well, what about the iDog? Oops, that won't work.

How about the Monster Footlong iDog! Yes, that's it! Certainly all three words can't be filed against! In fact, maybe he should trademark it!

I'm waiting for the day someone sues the French for the text found on the Statue of Liberty for copyright infringement.
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Mike Masnick (profile), 13 May 2010 @ 10:56am

Re: Re: Embedded document
Ok. Swapped out Docstoc with a Scribd version, which appears to display the document correctly.
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Jared, 13 May 2010 @ 11:02am

WWJD
I live my life by this standard...What Would Jared Do?
In my humble opinion, I believe Jared would burn any MOFO to ashes if they dare do anything to affect the love of his life...yes the footlong sandwich.
BTW, I hear Jared is the inspiration for the "footlong"....if you know what I mean.
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Bob, 13 May 2010 @ 11:06am

Trademark
I was under the impression that you could not trademark expressions that were already in common usage. Is that true? If so, is this a case of a trademark being granted beyond the bounds of law?

The same is true of AMC theater's trademark of "Silence is Golden". I'm pretty sure that existed before AMC theaters and that when people use the expression they are not referring to the movie theater company.
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JustMe (profile), 13 May 2010 @ 11:12am

Adding Subway to my personal list of banned companies
Sorry guys, it is your own fault for not monitoring your lawyers.
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pesti, 13 May 2010 @ 11:26am

This is the kind of thing that happens when you have a room full of overpaid, bored corporate attorneys. I can picture the
meetings that took place when they decided to get their employer, Subway, to apply for the trademark, rubbing their hands together, envisioning the piles of money they would make
litigating.....The legal profession has become a prime bastion
for Idiotic, self important ***holes
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Pangolin (profile), 13 May 2010 @ 11:48am

Re: Trademark
....Windows... so you are wrong.
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DocMenach (profile), 13 May 2010 @ 12:03pm

Re: Trademark
I was under the impression that you could not trademark expressions that were already in common usage. Is that true? If so, is this a case of a trademark being granted beyond the bounds of law?

Unfortunately, there are quite a few common terms that companies and/or people have tried to claim. Simplistic, common phrases such as "3peat"(Pat Riley), "Super Sunday"(NFL Football), "Winter Games"(Olympics), "Vancouver 2010"(Olympics), and many other phrases that should not by any means be covered by trademark have been granted trademark protections.
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Dave, 13 May 2010 @ 12:46pm

Subway's Douchebaggery
This company has been getting increasingly obnoxious these last few years, starting with the commercials featuring Jared, posterboy for corporate soundbite pandering. Top that off with their overweening need to discredit competition with slander rather then simply promote their own good product.
Now, I enjoy a good Subway sandwich (50/50 shot depending on the English comprehension level of the average 'sandwich-ista), but they need to take a step back and drop the frikkin' attitude. You make sanwiches, you're a glorified deli, get over yourselves!
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Vincent Clement, 13 May 2010 @ 12:58pm

Re: Adding Subway to my personal list of banned companies
Exactly.
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Anonymous Coward, 13 May 2010 @ 3:15pm

So if I sold a foot long ruler is that infringement. Perhaps stores should only sell a two foot long ruler instead.
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DocMenach (profile), 13 May 2010 @ 3:20pm

Re: Re: Adding Subway to my personal list of banned companies
I would stop going to Subway due to this, except that I never go there anyway. The bread is gross, the meat is very low quality, the veggies are tasteless.
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PRMan, 13 May 2010 @ 4:35pm

Makes me want to stop going there...
I really hate this sort of thing. I think I'll avoid them until this is resolved (ie dropped).
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intel, 13 May 2010 @ 6:13pm

Re: Re: Trademark
486
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TtfnJohn (profile), 14 May 2010 @ 7:06am

Re: Subway
Of course, then London should sue anyone using the word Underground or The Underground as well!
You've discovered a source of funding for fiscally challenged cities everywhere! ;-)
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Derek Kerton (profile), 14 May 2010 @ 11:08am

They Just Lost A Customer
I eat at Subway once a week. I have their daily specials memorized.

Oh, wait. I "used to eat" at Subway once a week.

Nice move, corporate asshats, you made me correct my own verb tense.
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The Mad Hatter (profile), 14 May 2010 @ 11:40am

Uh Oh - I can see another lawsuit coming
The next thing that will happen is that ex-porn star 'Long Dong Silver' will sue Subway, claiming that the 'footlong' trademark should belong to him.
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Anonymous Coward, 15 May 2010 @ 1:24pm

Maybe the City of New York could send cease and desist letters to Subway telling it that the MTA is trademarking the word Subway.
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ike, 17 May 2010 @ 4:15pm

The real reason?
I wonder if subway wants to trademark footlong so it can shrink its subs while continuing to claim they are Footlong subs.
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Howard J. Wilk, 20 May 2010 @ 12:23pm

Footlong
If the letter is authentic, the attorney for Subway didn't even get the trademark application number right. It's 77324328, not 77324228.
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cs, 23 May 2010 @ 11:48am

Goodbye Subway! Hello Blimpies Best!
Subway just lost money on me... Trademarking footlong. WTF!?! Ha!

I suppose now somebody will try to trademark - the big game or game day?!?

What a joke!!!
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RustyShackelford, 24 May 2010 @ 4:49pm

Ridiculous
Anyone who knows a shred of trademark law probably also knows that Subway's arguments are completely meritless.

Next they might start suing smaller sandwich shops under a theory of "unfair competition," because their smaller competitors tend to make way better sandwiches.
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Anonymous Coward, 18 Jun 2010 @ 3:04pm

Plain stupid
No problem, perhaps we should all apply for the trademark ‘footlong’? I can find many things to associate with the term. Better yet what not apply for trademark on ‘LOL’ as it applies to digital communications?
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