Tag: cease and desist

It’s the classic five dollar David v. Goliath story

Five!
Five dollar!
Five dollar –GAH, EXCUSE ME WHILE I STAB MYSELF IN THE BRAIN.

Many people share that same sentiment as I, but ultimately to no avail. Subway has become a perpetual monster of the sandwich shop (but not ye olde sandwitch shoppe), even going so far as to state that the term “footlong” is exclusive to Subway and Subway alone (trademark pending). Major emphasis should be on the trademark pending portion, but nonetheless, that’s not stopped Subway from sending C&D’s to companies over their usage of the term.

But perhaps that may not continue. Casey’s General Stores of Ankeny, Iowa, a regional convenience store chain with around 1600 locations, has decided to not be bullied into submission.

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.

We for one wouldn’t be against cheering for the little guy, though mainly because our Subway in college was too far away to get free cookies from late at night.

The King is dead

And he will continue to stay that way, even in the digital world. After more than a year spent dancing into our hearts and gardens, objections from the King of Pop’s estate have caused PopCap Games to replace the killer Michael Jackson lookalike in Plants Vs. Zombies.

The Dancing Zombie in Plants Vs. Zombies will be removed from the game, though not from our hearts, as plans are currently underway to replace him in all versions of the game with a disco-themed imposter.

“The Estate of Michael Jackson objected to our use of the ‘dancing zombie’ in PLANTS vs. ZOMBIES based on its view that the zombie too closely resembled Michael Jackson. After receiving this objection, PopCap made a business decision to retire the original ‘dancing zombie’ and replace it with a different ‘dancing zombie’ character for future builds of PLANTS vs. ZOMBIES on all platforms. The phase-out and replacement process is underway.”

The change has already been implemented in the iPhone version of the game with the latest update, with plans to phase out the dead pop singer across all platforms. Hoo-hoo!

Five. Five dollar. Five dollar trademark.

When you hear “footlong,” does a Subway sandwich immediately come to mind? The company hopes so: They’re taking measures to trademark the term for their twelve-inch sandwiches, but being met with some strong resistance.

Subway is taking an aggressive approach, sending cease-and-desist letters to mom-and-pop restaurants, including some that have been using “footlong” in their marketing for decades. For example, Coney Island Drive Inn in Brookfield, FL, has been selling footlong hot dogs for forty years, even using the term in its web address. Subway’s legal department recently sent them a strongly worded letter:

“You must immediately remove all references to FOOTLONG ™ in association with sandwiches.”

From a legal standpoint, the question is this: Can “footlong” be considered a trademarkable term? Food purveyors who have for years used “footlong” as a descriptor are stepping up to say that it’s too generic; Subway, however, argues that their relentless use of the term in advertising has given it, essentially, a second meaning.

Of course, to get around this, other companies may simply need to use a solution as simple as just utilizing a different parsing: “foot long,” rather than “footlong.” Another solution? Make 13″ sandwiches and call sandwiches by “competitors” small.

Ultimately, I think we all know that there’s one person on this planet who might need to contest this trademark: Ron Jeremy.