In Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., Opposition No. 91192657 (Sept. 5, 2013) [precedential], the Trademark Trial and Appeal board decided the term was generic saying, “Because ‘Footlong’ identifies a category of sandwiches 12 inches long, it should be freely available for use by competitors.”
Though each side submitted a competing consumer survey, ultimately it was evidence of use of the term by Subway, Sheetz, and a consideration of third parties that swayed the board.
“The fact that applicant’s business is much larger than some other establishments using “Footlong” in connection with 12-inch sandwiches does not establish applicant’s right to exclusive use of the term. The Trademark Act protects all competitors, big or small, against harm resulting from registration of generic terms.”
The board didn’t stop there. It also considered whether Subway had acquired the distinctiveness required for protection in the event the decision was reversed on appeal, and “footlong” were held to be highly descriptive.
In once again denying protection, widespread third-party use proved to be a key factor for the board, which said such use “would itself be sufficient to dispose of [Subway’s] claim of acquired distinctiveness.”