Last spring, we wrote about Subway sending out cease-and-desist letters to sandwich shops that dared to use the term “footlong.” Now, Casey’s General Stores, a regional convenience store chain, has thrown down the gauntlet, challenging the fast food Goliath’s claim to exclusivity on the word.
Iowa-based Casey’s is in the process of rolling out made-to-order, 12″-long sandwiches to a handful of its approximately 1,600 stores and dared to use the word “footlong” on signs and menus.
That’s when they got the above-referenced C&D letter from the Subway lawyer. In addition to declaring “footlong” as a term exclusive to Subway (whose application for trademark has not yet been approved), the letter also notes that “the offers of soup and pizza, as well as the design of the advertising offers, are all designed to create confusion to the average consumer.”
So rather than give in or be sued by Subway, Casey’s filed its own lawsuit last Friday in U.S. District Court.
From USA Today:
Casey’s is asking for a jury trial and is seeking a declaration that the term “footlong” is generic and does not violate any trademark owned by Subway. Casey’s is also asking for unspecified damages over Subway’s “frivolous” claims.
“Casey’s has and will continue to use ‘footlong’ to describe a sandwich,” writes Casey’s in its petition.
When asked in 2010 about Subway’s attempt to trademark “footlong,” a company rep told NPR, “Any legal process we go through is to protect the investment our franchisees have made in the brand… If ‘footlong’ is a name that’s been associated with us, it would benefit them that we would take an action like this to protect the association.”
Casey’s sues Subway over rights to ‘footlong’ [USA Today]