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

from the descriptive? dept

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.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    icon
    Dark Helmet (profile), May 13th, 2010 @ 8:47am

    Sing w/me now...

    Five......five dollar......five dollars now going to Jimmy JOOOOOHHHHHNNNNSSSS!

     

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  2.  
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    Joel (profile), May 13th, 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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  3.  
    identicon
    AnonymousCoward, May 13th, 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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  4.  
    icon
    Dark Helmet (profile), May 13th, 2010 @ 8:59am

    Re: What a joke...

    Like Mo Bigsley?

     

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  5.  
    icon
    Chronno S. Trigger (profile), May 13th, 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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  6.  
    identicon
    Anonymous Coward, May 13th, 2010 @ 9:17am

    and I eat from subway, I can't believe this.

     

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  7.  
    identicon
    Larry Wright, May 13th, 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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  8.  
    identicon
    Royce, May 13th, 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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  9.  
    icon
    A Dan (profile), May 13th, 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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  10.  
    identicon
    Ed Woychowsky, May 13th, 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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  11.  
    icon
    ComputerAddict (profile), May 13th, 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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  12.  
    identicon
    Danny, May 13th, 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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  13.  
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    Ben (profile), May 13th, 2010 @ 9:53am

    Re: Embedded document

    I see the same thing.

     

    reply to this | link to this | view in thread ]

  14.  
    icon
    ComputerAddict (profile), May 13th, 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.

     

    reply to this | link to this | view in thread ]

  15.  
    identicon
    Boost, May 13th, 2010 @ 10:13am

    Re: What a joke...

    That's what she said...

     

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  16.  
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    Comboman (profile), May 13th, 2010 @ 10:19am

    Re: What a joke...

    Only a foot long? I feel sorry for you. ;-)

     

    reply to this | link to this | view in thread ]

  17.  
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    Liam (profile), May 13th, 2010 @ 10:47am

    Foot long

    surely "foot long" is a descriptive term "footlong" could very well get the trademark.

     

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  18.  
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    Mike Masnick (profile), May 13th, 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.

     

    reply to this | link to this | view in thread ]

  19.  
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    R. Miles (profile), May 13th, 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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  20.  
    icon
    Mike Masnick (profile), May 13th, 2010 @ 10:56am

    Re: Re: Embedded document

    Ok. Swapped out Docstoc with a Scribd version, which appears to display the document correctly.

     

    reply to this | link to this | view in thread ]

  21.  
    identicon
    Jared, May 13th, 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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  22.  
    identicon
    Bob, May 13th, 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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  23.  
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    JustMe (profile), May 13th, 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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  24.  
    identicon
    pesti, May 13th, 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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  25.  
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    Pangolin (profile), May 13th, 2010 @ 11:48am

    Re: Trademark

    ....Windows... so you are wrong.

     

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  26.  
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    DocMenach (profile), May 13th, 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.

     

    reply to this | link to this | view in thread ]

  27.  
    identicon
    Dave, May 13th, 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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  28.  
    identicon
    Vincent Clement, May 13th, 2010 @ 12:58pm

    Re: Adding Subway to my personal list of banned companies

    Exactly.

     

    reply to this | link to this | view in thread ]

  29.  
    identicon
    Anonymous Coward, May 13th, 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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  30.  
    icon
    DocMenach (profile), May 13th, 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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  31.  
    identicon
    PRMan, May 13th, 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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  32.  
    identicon
    intel, May 13th, 2010 @ 6:13pm

    Re: Re: Trademark

    486

     

    reply to this | link to this | view in thread ]

  33.  
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    TtfnJohn (profile), May 14th, 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! ;-)

     

    reply to this | link to this | view in thread ]

  34.  
    icon
    Derek Kerton (profile), May 14th, 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.

     

    reply to this | link to this | view in thread ]

  35.  
    icon
    The Mad Hatter (profile), May 14th, 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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  36.  
    identicon
    Anonymous Coward, May 15th, 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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  37.  
    identicon
    ike, May 17th, 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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  38.  
    identicon
    Howard J. Wilk, May 20th, 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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  39.  
    identicon
    cs, May 23rd, 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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  40.  
    identicon
    RustyShackelford, May 24th, 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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  41.  
    identicon
    Anonymous Coward, Jun 18th, 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?

     

    reply to this | link to this | view in thread ]


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