By Jamie Cutler
For some, “Taco Tuesday” is a day of the week to look forward to. The company Taco John’s Seasonings Limited Partnership (“Taco John’s”) started using “Taco Tuesday” in 1979 and, since December of 1989, has exclusively owned the Federal trademark registration, giving it the right to use the mark TACO TUESDAY in association with restaurant services. Until now. As of August 1, 2023, the registration for TACO TUESDAY has been canceled and TACO TUESDAY now belongs to everyone.
On May 16, 2023, Taco Bell IP Holder, LLC (“Taco Bell”), the well-known restaurant chain, filed a petition with the Trademark Trial and Appeal Board (the “TTAB”) to cancel the TACO TUESDAY registration owned by Taco John’s. In its petition, Taco Bell claimed that the term TACO TUESDAY is generic for restaurant services as it “is used ubiquitously by restaurants throughout the United States in a generic and informational manner to promote the sale and/or consumption of tacos and related products on Tuesdays.” In essence, Taco Bell argued that allowing only one person to use TACO TUESDAY in association with restaurant services could create a monopoly since other merchants cannot use the term to effectively advertise their sale or promotion of tacos and drinks on that particular day of the week.
Taco Bell also claimed that since TACO TUESDAY is a commonplace term, it fails to function as a trademark for restaurant services because the public does not associate this term as identifying a single owner. Thus, the use of TACO TUESDAY cannot distinguish one’s restaurant services from another’s. To prove this, Taco Bell offered evidence of a recent survey showing “that 86% of consumers nationwide believe that ‘Taco Tuesday’ is a common name not associated with any particular company.” In June, Taco John’s answered Taco Bell’s challenge. Soon after, however, Taco John’s decided that it did not want to be involved in a protracted and expensive fight and on July 17, 2023, voluntarily surrendered its Federal registration of TACO TUESDAY. The mark was officially canceled on August 1, 2023.
Taco Tuesday is now free to use – except possibly in New Jersey. While Taco John’s voluntarily surrendered its trademark claim in 49 states, Gregory Hotel, Inc. (“Gregory Hotels”), has owned a state registration for TACO TUESDAY in association with restaurant services since May 19, 2009. Taco Bell also filed an identical petition against Gregory Hotels to cancel that registration. Trial for this case is set to start around April 27, 2024.
The case at hand demonstrates that particularly weak marks, even if they have been registered for more than 5 years and are considered “incontestable” and difficult to invalidate, are still vulnerable and subject to third-party attacks based on genericism. Many marks over the years have suffered identical fates where registrations were canceled because the trademark name became generic. Some of these marks include “escalator”, “thermos”, “yo-yo”, “laundromat”, “hacky sack”, “wine cooler”, “pilates”, “bubble wrap”, “zipper”, “Aspirin”, “app store”, and “trampoline”.
To avoid this fate, it is important that companies use their marks as trademarks to identify to consumers and others the source of goods and/or services, as opposed to using the mark to describe the actual goods or services themselves. This includes using the marks in this manner on product packaging, marketing materials, websites, and/or signage. Registered trademarks should be used in association with the ® symbol to indicate that the mark is registered. Unregistered marks can use the TM symbol instead. Lastly, companies should always bring to the attention of their IP counsel any unauthorized uses of their trademarks they become aware of. Not only is a trademark owner required to police their marks, enforcing one’s rights against unauthorized third-party uses helps avoid widespread use which can ultimately cause the mark to become generic.
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