Can Subway Trademark a Unit of Measurement?

Also, can they sue a mass transit system for referring to itself as a “subway”? That’s for another post, I guess.

To the topic at hand, the owners of the Subway chain of sandwich shops is sending out cease-and-desist letters to other sellers of sandwiches who use the term “Footlong” to describe the length of sandwiches they sell.

The main argument behind the letters appears to be the idea that they have spent a lot of money on advertisements featuring the word “Footlong.” Of course, under trademark law, this isn’t nearly enough to create trademark protection in a word, phrase, or image.

Here’s a basic refresher on trademark law – if you own a business which sells a product or service, you obviously want to have some shorthand for describing your product or service, and identifying your business as its source, as well as differentiating it from your competitors. Trademarks allow you to do this.

For example, we’re all familiar with Coca-Cola™. When you buy a bottle of the stuff, you know what you’re getting, based pretty much entirely on the name (assuming that you, like most people, have drunk it before). This is the case because only the Coca-Cola Corporation can use the “Coca-Cola” name to identify its products. If everyone were allowed to use this name, it would lose all meaning, and you’d never know what you’re getting when you buy something called “Coca-Cola.” One bottle bearing the name could contain a tasty, if unhealthy, beverage, and another could have dishwater in it.

Trademark law allows a company that has used a word, phrase, or image to identify their product to use it exclusively, under certain circumstances. This protects consumers by ensuring that there are some legal prohibitions against selling counterfeit goods, and it protects businesses by letting them control the use of their name, and preventing others from stealing any goodwill they’ve worked to build up.

However, in order for a word to be eligible for trademark protection, it has to be distinctive. This makes sense: we wouldn’t want Subway (for example) to be able to monopolize a descriptive term like “sandwich.”

In this case, it seems very unlikely that Subway, if it actually decides to go through with legal action, will succeed. There are certain classes of marks that can never receive trademark protection. This includes marks that are purely descriptive, and do nothing to indicate the source of a product.

“Footlong” is used to describe the size of a sandwich that Subway sells. We have been measuring things in feet for hundreds of years, and people have probably been using feet and inches to measure sandwiches for, well, I don’t know how long. But probably for a long time.

There is absolutely nothing in the phrase “Footlong” that uniquely identifies Subway or its products. If, on the other hand, they had decided to identify their foot-long sandwiches with something completely arbitrary or fanciful, they’d almost certainly be able to get trademark protection, assuming nobody did it first.

This is part of a broader trend I’ve noticed: knee-jerk threats of legal action when somebody does something we don’t like. We’ve seen it in the over-criminalization of many areas of law, when the problems being addressed could easily be solved through the civil justice system, or other means.

We’ve also seen in recent years some pretty absurd trademark claims being filed by various corporations, including McDonald’s sending cease-and-desist letters, and sometimes filing lawsuits, against almost any business which uses the “Mc” prefix in its name, even if that’s simply the name of the owner or founder of the business.

That’s just one example of many. Honestly, these large companies must have quite a few good lawyers on staff. Do they honestly believe that these outlandish claims have any merit? Probably not.

More likely, they’re hoping that a threat of legal action from a large company is enough to scare off much smaller competitors (or, in some cases, businesses that aren’t even in direct competition). If Subway succeeds it scaring businesses from using simple, descriptive terms like “footlong”, it has just succeeded it making it much more difficult for those businesses to advertise their products.

If they succeed in court (which, again, seems very unlikely, if it even comes to that), many other small to medium-sized businesses will take note, and perhaps stop using similar terms.

Conduct like this defeats the purpose of trademark law, which is meant to protect consumers as well as businesses. Trademark law is meant to create a somewhat even playing field in the business world, by ensuring that, for good or ill, a company has control over its name, and that they can’t blame anyone but themselves if their brand becomes associated with an inferior product.

This type of conduct does nothing to advance that objective, and is actually counterproductive: attempting to monopolize descriptive terms does not create an even playing field, and actually tilts it in the monopolist’s favor.

Hopefully small businesses will start calling these kinds of bluffs, and maybe large corporations will stop doing this.