Friday, September 06, 2013

Precedential No. 36: TTAB Finds FOOTLONG To Be Generic for Sandwiches

The Board sustained an opposition to registration of FOOTLONG for "sandwiches, excluding hot dogs," finding the term to be generic, and if not generic, then merely descriptive and lacking in acquired distinctiveness. Applicant Subway's "Teflon" survey failed to pass mustard muster, and a rebuttal survey supported the Board's view that Subway's survey had little probative value. Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341 (TTAB 2013) [precedential].

Genericness: The Board found the genus of goods to be "sandwiches excluding hot dogs," and the relevant public to be "ordinary consumers who purchase and eat sandwiches."

The term "footlong" is an adjective defined as "being about one foot in length: a footlong hot dog." Subway's own evidence showed that it was using "footlong" in a manner not likely to be recognized as trademark use: "it is clear that FOOTLONG denotes the fact that applicant purveys a type of sandwich that is approximately one foot long." Opposer Sheetz introduced many examples of third-party use of "footlong" to identify sandwiches.

Each party submitted the results of a "Teflon" survey, reaching opposite results on the question of genericness. Professor McCarthy describes a "Teflon" survey as a mini-course in the generic versus trademark distinction, followed by a test. Subway's survey results purported to show that 54% of respondents identified "Footlong" as a brand name.

The Board found several problems with Subway's survey. First, the universe was too narrow because it was limited to recent and frequent patrons of fast food restaurants and sandwich shops. Second, the examples of common names and brand names could be ambiguous. Third, there was no mini-test to determine whether respondents understood the difference between a common name and a brand name. Instead, respondents were simply asked, "Do you understand the difference between 'brand names' and 'common names?'" And fourth, respondents should not have been provided with the option of stating that a term could be both a common name and a brand name (since a generic term can never be a trademark). Therefore, the Board gave very little weight to Subway's survey results.

Opposer Sheetz offered a rebuttal survey designed to address the defects in Subway's survey. In Sheetz's survey, 80% identified "Footlong" as a type of product. Subway's expert aimed several criticisms at this rebuttal survey, but the Board concluded that Sheetz's survey supported the finding that Subway's survey had little probative value.

The Board therefore found that "Footlong" identifies a type or category of sandwich that includes 12-inch sandwiches and is generic for "sandwiches, excluding hot dogs."

Acquired Distinctiveness: For purposes of completeness, and assuming arguendo that "Footlong" is highly descriptive but not generic, the Board considered whether the term has acquired distinctiveness. Opposer Sheetz had the initial burden to show that "Footlong" has not acquired distinctiveness." In other word, Sheetz had the burden of producing evidence that would overcome Survey's evidence of acquired distinctiveness made of record during prosecution of the opposed application (allowed under Section 2(f)). The Board observed that Sheetz's evidence of genericness sufficed to meet this initial burden.

Subway was entitled, then, to submit additional evidence to rebut Sheetz's showing. The ultimate burden of persuasion on the issue of acquired distinctiveness rested on Subway. Subway pointed to its extensive sales and advertising, alleged copying of its mark by Sheetz, unsolicited media coverage, and its survey results.

The Board observed that, although Subway has achieved great commercial success, such success is not necessarily indicative of acquired distinctiveness. Other factors are significant, most likely the fact that Subway offers a quality product at a competitive price. In view of the manner of use of "Footlong" by Subway, consumers are much more likely to view the word as referring to sandwiches of a particular size, rather than as a trademark.

The Board found that Sheetz did not copy the "Footlong" mark, but rather the idea behind Subway's promotion of a "$5 Footlong." The media coverage of Subway's sandwiches used the term "Footlong" generically, not as a trademark. And in the acquired distinctiveness context, Subway's survey suffered from the same flaws discussed above.

Moreover, widespread use of "footlong" by third parties would itself be sufficient to dispose of the claim of acquired distinctiveness.

Lastly, the Board noted Subway's evidence that it policed use of FOOTLONG, and made at least thirty cease-and-desist demands. However, acquiescence to a competitor's demands may reflect merely a desire to avoid litigation, a desire that may be especially strong when faced with the largest fast food restaurant chain in the country.

Concluding that Subway had failed to prove acquired distinctiveness, the Board held the term "Footlong" to be merely descriptive.

Read comments and post your comments here.

TTABlog note: Oral argument in this case was held at the University of New Hampshire School of Law in September 2012 [TTABlogged here].

Text Copyright John L. Welch 2013.


At 10:27 AM, Anonymous Anne Gilson LaLonde said...

I think this decision was inevitable, especially given applicant's specimens as reproduced in the opinion, which use "footlong" and "foot-long" generically.

Also, this is nominally an ACR case, which lets the parties agree on how to submit evidence and allows the Board to decide disputed issues of fact. The Board has said that, in ACR cases, it will generally issue a ruling within 50 days after briefing is over. TBMP 702.04(a). This case, obviously, took a year for the Board to decide. The Board explained to the parties in a footnote that ACR is not only intended to facilitate the introduction of evidence, but it should also "limit the amount of evidence placed before the Board." The parties in this case had given the Board an "extensive" record with multiple objections to evidence, and the Board noted that "the ease with which the parties can add evidence to the record does not aid swift review of the record and prompt decision-making." Agreeing to ACR, then, doesn't guarantee parties a quick decision if the evidence isn't limited.

At 12:52 PM, Anonymous Anonymous said...

I would agree with the outcome, but Food for Thought: "The second part of the genericness test is whether the relevant public understands the designation primarily to refer to that class of goods." Doesn't every famous mark and even every well-known mark meet this test? Nike for clothing, Apple for personal electronics, Boeing for planes, Bacco for breakfast in Seattle, Wurstkuche for sausages in Los Angeles?

At 2:33 PM, Anonymous Tom McCarthy said...

Both the CAFC and the TTAB persist in using the vague language: “does the relevant public understand the designation primarily to refer to that genus of goods?” “Refer to” is an inapt and mis-leading phrase to use in this context. The proper question is whether the relevant public understands the designation as a name of that genus of goods.
J. thomas McCarthy


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