Taco Bell Seeks To Liberate ‘Taco Tuesday’ For Itself, The Masses

Trademark

from the for-whom-the-bell-tolls dept

There is a long history of trademark silliness concerning the phrase “Taco Tuesday.” As with many trademark stories, the original sin in all of this was committed by the USPTO , which in the ’80s somehow managed to grant the Taco John’s chain a trademark on the term, despite it being both very descriptive and, after years of lax enforcement, absolutely generic at present. What you will find missing in the stories that we’ve done on this topic in the past is an entity with real weight behind it attempting to invalidate Taco John’s trademark entirely. Sure, everyone from restaurant trade associations to LeBron James (seriously!) have gotten involved, but what we need here is a good old fashioned Goliath to come and stamp out David when he’s misbehaving.

Enter Taco Bell. The largest player in the Americanized Mexican food market has finally entered the fray and has petitioned the Trademark Office directly to invalidate the mark.

The taco chain filed a petition Tuesday (naturally) with the US Patent and Trademark office to cancel the trademark, owned by rival Taco John’s for 34 years, because Taco Bell claims the commonly used phrase “should be freely available to all who make, sell, eat and celebrate tacos.”

The use of the phrase “potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from [Taco John’s] — simply for pursuing happiness on a Tuesday,” the filing said.

It’s a little cheeky, to be sure, but the meat of the requests relies on solid complaints about the mark. The term is at least partially descriptive: deals for tacos on Tuesdays. And even if it isn’t descriptive enough to be denied a trademark, the term certainly has become so widely used and generic at this point, at least in part due to lax policing from Taco John’s, that it should be invalidated.

The very idea that a taco joint anywhere in America cannot run sales, advertising, or promotions for their own “taco Tuesdays” is a blatant violation of the purpose of trademark law. Nobody is going to see an advertisement for Taco Tuesdays at Taco Bell and somehow think Taco John’s is involved. That is purely due to how the public sees the term. Again, this is a clear indicator that the mark should be done away with.

Taco John’s has 40 days to file a response, and if the two chains can’t reach an agreement, the case will move to a discovery period where each company can make document requests and present evidence stating their case. Following that would be a trial and oral arguments presented in front of the board’s judges.

According to Gerben, Taco Bell has a “strong case” because US trademark law “prevents the registration of common phrases or phrases that become commonplace after a registration is granted.” In this instance, the slogan “has become a cultural phenomenon with a long history of being used by individuals and companies other than the current owner of the trademark,” he told CNN.

And therefore never send to know for whom the Taco Tuesday bell tolls, Taco John’s; it tolls for thee.

Filed Under: taco tuesday, tacos, trademark, tuesdays, uspto
Companies: taco bell, taco john's