Dumb and Dumber.
A representative for Doctors Associates Inc., known for its Subway sandwiches restaurants, has filed a trademark for the term “Footlong” for restaurant services. The company is claiming a first use in commerce date of 1967.
The company then sent a cease & desist letter to Coney Island Drive In, which sells footlong hot dogs and uses the web site GotFootlongs.com. Apparently that letter was sent due to “clerical error”. But clearly the company is trying to enforce its (as yet unapproved) trademark.
What does this have to do with domain names? Well, I was going to tie it to the owner of Footlongs.com. But after typing in that domain I quickly closed my browser. (Seriously, don’t go there.)
I could also tie it to these legal services firms that send out automated cease & desist letters using a shotgun approach. When you respond telling them that your web site doesn’t even include their trademark, they disappear.
Alas, Subway might not get the trademark it wants. Or it will at least have to do some more work. On April 29 the U.S. Patent and Trademark Office rejected Doctors Associates’ trademark claim to the class of “restaurant services”:
Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services…
The applied-for mark, as shown on the specimen, does not function as a service mark because the mark refers specifically to sandwiches, which are Class 030 goods. A term that serves only to identify a menu item does not function as a service mark for restaurant services.
I can’t wait for the company to suggest that Footlongs.com infringes its trademark. That would be rather embarrassing.
Hat tip: John Berryhill.
Jamie says
Not sure if you meant to write the plural version or not…
Footlongs.com just has an orange logo at the top that states FOOTLONGS. The singular version Footlong has a lot of dongs.
Andrew Allemann says
@ Jamie –
You looked, eh?
Corrected the URL
Jamie says
I used domaintools whois, so the site image was not that clear and minimal damage was done! 😉
Karen Bernstein says
Andrew, Subway would have a very difficult time trying to enforce its trademark rights in a domain name dispute simply by reason of the ubiquitous use of the term, “Footlong” such that it has become a generic term for sandwiches but if it can make a deal with some of the other big fast food chains, which appears to be the case here, it may become a serious threat to domain name holders.
See the “Footlong” application in Class 30 for sandwiches. Dominoes, along with 9 OTHER FAST FOOD restaurants, which includes such notable fast food chains as KFC, A&W, Taco Bell and Long John Silver’s, have collectively opposed Subway’s other application for “Footlong” in Class 30 for sandwiches based upon their arguments that Subway should not have exclusive rights to the term, “Footlong,” for sandwiches. An opposition holds up the application process. If the opposers withdraw their oppositions, then Subway may get its registration barring other parties from submitting protest letters.
Subway’s attempt to corner the market on “Footlong” is as foolish as trying to get a federal trademark for “Sandwich,” but there appears to be back room dealing by all concerned, which has suspended the opposition proceedings as several of the companies opposing the application are in settlement negotiations with Subway.
Incidentally, Subway succeeded back in March of ’09 in cancelling the already-registered mark for “Footlong Express” for restaurant services based on its use of “Footlong” since 1967. This is because the other side never answered the petition to cancel and they got a default judgment. A different result may have been reached had the other side answered the petition to cancel in light of the Examiner’s recent refusal of Subway’s application for “Footlong” in Class 30 for restaurant services since “Footlong” does not appear to function as a trademark.
Ms Domainer says
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Dairy Queen has been using that term for its famous footlong chili dog since the 1950’s, so Subway ought to tread lightly on this one, lest it find itself on the other end of a UDRP.
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Stuart says
Yum! Brands versus Subway. Thats like P&G versus SC Johnson. Oh wait.
sc says
These stories are just way weird.
Matt Saunders says
Where were all these concerned restaurants a few years back when the PTO approved registration of STEAK BOMB for sandwiches
(http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78892402)?