Last May I wrote a post about Subway sending out cease and desist letters. The letters alleged “Footlong,” as used in association with sandwiches, was owned exclusively by Doctor’s Associates, Inc. (DHI), Subway’s Florida owner. Now Subway is coming after Iowa-based Casey’s.

Before sending out the cease and desist letters, DHI filed two federal trademark applications on “Footlong,” one for sandwiches and one for restaurant services. Although DHI claims first use of the trademark as far back as August 1, 1967, DHI did not file its trademark applications until November 8, 2007 and June 4, 2009. The United States Patent and Trademark Office (USPTO) has not issued a trademark registration on either application. The application for restaurant services is the subject of a non-final objection by the USPTO, to which DHI has a right to respond. The USPTO appoved DHI’s application for sandwiches, but the application is currently the subject of a formal trademark opposition by A&W Restaurants, KBI Holdings (Blimpie), Domino’s, Firehouse Subs, KFC, Long John Silver’s, Pizza Hut, Taco Bell and others. Do not look for the opposition to resolve before the end of the year.

Without federal trademark registrations, DHI is relying on its “common law” rights to back up its cease and desist demands. Common law rights attach when a business uses a mark in association with a good or a service. While trademarks are not allowed on descriptive or generic words, a user can sometimes convert an otherwise descriptive term into a trademark if the user can prove the term has acquired a “secondary meaning” in the marketplace. “Secondary meaning” attaches when, instead of associating the word with its ordinary meaning, consumers, though advertising and familiarity, now associate the term with the user.

One of DHI’s most recent cease and desist letters went out to Casey’s January 21, 2011. Rather than ceasing or desisting, Casey’s instead turned around and sued DHI, requesting a “declaratory judgment.” A declaratory judgment action requests a court to determine a specific legal issue. In this case, Casey’s wants the court to rule on whether “Footlong” is a generic term or a protectable trademark.

There is a lot at stake in this case. Were Casey’s to be successful, the trademark opposers would likely use the ruling to convince the Trademark Trial and Appeal Board to reject DHI’s pending federal trademark applications. Regardless of whichever side wins, it is fairly likely the losing party will appeal. I would not look for the final word in this case for quite some time.

Brett Trout