FOOTLONG®?

Subway is getting a lot of press lately for a cease-and-desist letter it sent to a local hot dog store here. The St. Pete times reported on it here. NPR did a piece here.

Briefly, Subway demanded a local hot dog restaurant, Coney Island Drive Inn (whose website is http://www.gotfootlongs.com) stop using the word "Footlong" to sell its foot long hot dogs. Since Coney Island Drive Inn has been selling footlong hot dogs since 1963, the restaurant was surprised by Subway's demand.

Subway is still negotiating with the U.S. Patent and Trademark Office in its attempt to get a trademark registration for the mark Footlong. Subway's trademark application was initially refused for being descriptive -- "Footlong" merely describes a feature of applicant's goods.

Subway responded by arguing that the mark had acquired secondary meaning -- the consuming public has grown to associate the mark "Footlong" with Subway's services. To support this argument, Subway provided evidence that it had sold almost 1 billion (yes, with a "b") sandwiches in 2008.

The Trademark Examining attorney retracted the distinctiveness rejection (agreeing that Subway had put forth evidence of secondary meaning). But Subway and the Patent and Trademark Office are continuing to argue over whether or not Subway has shown use of the Footlong mark in connection with "restaurant services," the goods/services Subway claims it has been using the mark with.

The file history of the negotiation between Subway and the Patent and Trademark Office is below. Since all the attention from this cease-and-desist, Subway has since retracted the demand, stating it was a clerical error and it should not have been sent to Coney Island Drive Inn in the first place.

False marking suits are like an infestation of dandelions?

Following up on yesterday's post on false marking, I learned today via Docket Navigator that at least one Court rejected a false patent marking defendant's argument that, as a matter of pleading, affixing an expired patent number to a product could not be actionable. As restated by the Court, the defendant's argument was:

its challenged articles are not "unpatented" [as required for a false marking claim] because they practice a once-existing, but now-expired, patent.

The Court explained that the Federal Circuit's Forest Group, Inc. v. Bon Tool, Co. decision addressed this question:

All of those perceived evils [i.e. allowing the public to rely on marking, dissuading competitors from entering the market, deterring scientific research] are present when a patentee continues to affix the "patent" designation to an article even after it has entered the public domain by reason of the patent's expiration.

Most notable for me was the Court's introductory paragraph -- it does not seem happy:

Stanley Black & Decker, Inc has noticed up for presentment on May 14 a motion to dismiss this action brought against it by Zojo Solutions, Inc. -- an action among the very large number of lawsuits around the country that claim false patent marking in violation of 35 U.S.C. 292(a). This and all such other actions, which dot the greensward of patent litigation like an infestation of dandelions, have been prompted by the Federal Circuit's decision in [Forest Group] which has created the prospect of extraordinarily large damage awards in qui tam suits brought to enforce Sectino 292(a).

Zojo Solutions, Inc. v. The Stanley Works, Case No 1:10-CV-01175 (N.D. Il, May 12, 2010)