This Week in Junk Food Trademark Fiascos

Those of you not following us on Twitter (we’re at @95years) might have missed out on a remarkable run of news stories about questionable trademark enforcement efforts by fast food companies.

First out of the gate in the mad dash towards trademark enforcement infamy was Subway, which, as detailed by NPR’s Planet Money blog, sent a cease and desist letter to the Coney Island Drive Inn, a hot dog vendor which owns and uses the URL GotFootlongs.com.

The C & D stated that “DAI [Subway's parent company] has applied for the trademark FOOTLONG(TM) in association with sandwiches . . . DAI has become aware that your restaurant is using the term FOOTLONG(TM) in violation of DAI’s trademark rights.”

As TechDirt noted, “There are all sorts of problems with this.” DAI has only attempted to register a federal trademark in “footlong”; it hasn’t yet established that it has any rights to the mark. Immediately after DAI concedes in its own letter that DAI doesn’t yet hold the trademark, however, DAI invokes its “trademark rights” and accuses the hot dog vendor of violating those rights. Mind you, a federal trademark registration isn’t necessary to assert trademark rights, but “footlong” is a common term, and one which Coney Island Drive Inn has been using in its domain name since at least 2006, years before Subway’s “$5 Footlong” campaign took flight.

A separate issue is that DAI is asserting rights in the word “footlong” — a word which is almost certainly merely descriptive of the length of Subway’s sandwiches, and thus not registrable as a trademark (and if the photo above is to be believed, “footlong” doesn’t accurately describe every full-size Subway sandwich).

Even Subway conceded that they only sought to trademark “footlong” with regard to sandwiches, and hot dogs aren’t necessarily sandwiches.

(An aside: Subway is free to use the TM symbol in connection with “footlong” in its letter because the TM symbol may be used by any party which wishes to put other parties on notice that it asserts rights in a mark, regardless of whether its mark has been registered. The circle-R symbol is reserved solely for registered trademarks.)

Chik-fil-A got into the act this week as well, sending a cease and desist letter to a Florida produce stand named “Eat More Produce,” which Chick-fil-A’s counsel claims is “playing off of and imitating Chick-fil-A’s valuable Eat Mor Chikin Intellectual Property by using a domain name and trade name that are confusingly similar to Chick-fil-A’s.”

Arguing that “Eat More Produce” is “confusingly similar” will likely be a legal dead end for Chick-fil-A, as Eat More Produce is a produce stand, has a tomato as a logo, and doesn’t sell fried chicken sandwiches, meaning that the likelihood of any sort of consumer confusion between Eat More Produce and Chick-fil-A is basically nil.

We can assume that Chick-fil-A will additionally assert, though, that the use of “Eat More Produce” as a mark will result in trademark dilution. Under the doctrine of trademark dilution courts will allow holders of famous marks (and “Eat Mor Chikin” is certainly famous if you live in the South like I do) to enjoin uses of similar marks if the use of such similar marks would tend to lessen the association between the famous mark and the product or products which it advertises. Trademark dilution has a little more heft as a legal theory in these circumstances, but if I were representing Eat More Produce, I’d argue that the “Eat More Produce” mark is actually a parody of “Eat More Chikin,” since it serves to advertise (healthy) vegetables and implicitly mocks Chick-fil-A’s trade in (unhealthy, though delicious) fried chicken sandwiches, and is therefore potentially exempt under at least federal anti-dilution statutes.

For those of you who are not well-versed in trademark law and therefore inclined to conclude that these companies are completely nuts, they have merely gotten carried away in necessary efforts to do what’s known as trademark policing. In American trademark law, holders of trademark rights must consistently patrol the marketplace for infringement upon those rights and assert those rights against competing users — or risk losing them. It’s usually better to be overzealous in one’s policing than insufficiently aggressive, though overzealous policing may lead to enforcement actions which confound common sense.

Two bonus food-related trademark stories (what is it about this week?):

In Spain, the term “donut” is trademarked, so Dunkin Donuts is known as Dunkin Coffee.

A Pakistani restaurant across the street from the New York Times displeased the Gray Lady by changing its name to the Times Cafe and employing a certain famous font on its awning.