Trademark Two-sday: Subway and Play-Doh Get Protective

posted Feb 15, 2011, 1:39 PM by Calan McConkey
(1) According to Subway, the term "footlong" is theirs. Not too long ago, Subway sent some letters to a Midwest-based general store -- Casey's -- informing them of the same. Casey's is apparently trying its hand at making sandwiches and has started using "footlong" to describe their product. Based on the threatening letters it received, Casey's has now filed suit in order to determine that Subway does not have any rights in the common word.

My take: Subway has a tough hill to climb. The term "footlong" is descriptive at best. More likely just generic and, therefore, not trademarkable. Granted, when I hear the term "footlong" I think of Subway, but that is not the only test when it comes to trademark rights and infringement. We will see what happens. Probably just another case of a big company trying to bully the smaller one into compliance, which is why Casey's has now taken the offensive.



(2) Cookie dough = fine, dough boy = fine, Homer's "Doh!" = fine, but play dough = NOT FINE. Coming from a recent court case in the United Kingdom, Hasbro -- the owner of the Play-Doh trademark -- has prevailed against a competing dough manufacturer -- 123 Nahrmittel (what is this company name?!?). 123 Nahrmittel got into legal trouble because:

    it used the phrase "play dough" on its Yummy Dough product. Yummy Dough's box describes it as     "the edible play dough."

The rule is pretty straightforward: spelling/grammar does not affect the trademark rights. Essentially meaning that dough = doh. It makes sense that simply misspelling (or correctly spelling) a trademarked word does not circumvent the protection. For example: you could not open a fast-food chain called "Mick Donald's" or create a soft drink called "Pep-See" because you would still be infringing trademarks by confusing customers due to the pronunciation of the name.

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