Five Dollars says Footlong not Subway Trademark Infringement

February 17th, 2011. By AbiK

[vimeo]http://vimeo.com/10535376[/vimeo]

Any any any…FIVE…five dollar…five dollar footlong…any any any… Ok, if you sat transfixed in front of the tube during the last Olympic games, you could not have possibly missed the Subway jingle touting their five-dollar footlong sandwich. For that matter, if you’ve EVER sat in front of a television, you’ve probably needed some form of medical help to get that “any, any, any FIVE” exorcised from your brain.

Be that as it may, it seems Subway has taken claim to the word, “footlong”. Now, I use the term “word” loosely—as, after all, any self-respecting writer or editor would tell you that “footlong” is not, actually, a word. (Don’t believe me? Refer to the layman’s abridged Merriam-Webster online edition of the dictionary. It simply is not a word.) But, let’s just assume for now that it is.

Iowa chain store Casey’s General Stores, Inc.—which uses “footlong” on its menu boards—has filed a lawsuit against Subway seeking a federal judge to rule that “footlong” is a part of the vernacular, part of the “general English language” and not a word that can be the special property of Subway. Why, it would be as silly as suggesting that “yardstick” or “half-gallon size” were trademarkable. And what? Would every vendor who pushes a footlong hot dog be subject to trademark infringement if Subway could put a claim on the word?

You can see the absurdity of it. And, for that matter, why The Washington Post reports that the lawsuit filing also charges Subway with “frivolous litigation”. Think about it—there are well-paid attorneys working on this for Subway.

Speaking of Subway in-house counsel, Valerie Pochron is the attorney who had written to Casey’s to inform them that Subway had applied for a trademark on “footlong” and that Casey’s should cease and desist from using the word or face the consequences…the wrath of Subway in the form of legal action.

Interesting thing about Pochron though. This isn’t her first at-bat over trademark issues—hell, let’s hope not as she’s apparently a trademark attorney. Pochron had not too long ago gone after a website “MySubwayRewards.com”, claiming trademark infringement. She filed a complaint with the WIPO Arbitration and Mediation Center in January, 2010. Now, yes, it’s a similar looking and sounding name and if Subway, the food chain, had actually been using “MySubway” or “MySubwayRewards” maybe Pochron would’ve been onto something.

But, while acknowledging that “Subway” is a fairly well known—perhaps even “famous” name—the owners of “MySubwayRewards.com” apparently never responded to the complaint (bluemaumau.com), and, here’s the kicker, the decision as it’s stated on the case document was as follows: “For all the foregoing reasons, the Complaint is denied.”

Ouch! It was pretty plain as day that such a URL could ultimately be a trademark issue—ok, maybe not right at that moment, but you could see where Pochran may have stood a chance. But no! And more specifically, the case doc states that “Inasmuch as the Panel finds that Complainant has failed in these proceedings to discharge its burden of establishing that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, it is unnecessary to consider whether the second and third elements of the Policy have been met in the circumstances of this case.”

Failed to discharge it’s burden?!?

Slam! Case closed!

Don’t get me wrong here—I’m sure Pochron is a good lawyer who’s won a case or two. Be that as it may though, with the MySubwayRewards.com case as a backdrop, let’s see how successful Pochron is at claiming “footlong” is trademark infringement when she couldn’t even cough up enough to establish trademark violation when the company namewas being used. Note also that Subway tried to go after Sheetz Inc. convenience stores in Pennsylvania in 2009 for use of the word “footlong”—and they left that one empty-handed as well.

Given that neither Pochron or Subway had either offered comment or responded to the Casey’s lawsuit, maybe they’re taking a move out of MySubwayRewards.com’s playbook and figuring silence is golden. More to come.

Tags: Casey's General Stores, Five Dollar Footlong, Footlong, Subway, Trademark, Trademark Infringement, Valerie Pochron

This was posted on Thursday, February 17th, 2011 at 2:46 pm and is filed under Emerging Issues, Intellectual Property . Feel free to respond, or trackback. Read our comments policy.