Perhaps Instead Of Taco Tuesday, They Should Call It Trademark Tuesday

from the tuesdays-with-tacos dept

Rose M. Welch points us to the news that Mexican food chain Taco John's has threatened a small Oklahoma Mexican restaurant, called the Iguana Mexican Grill, for daring to use the phrase "Taco Tuesday" to describe their $1 taco promotion on (you guessed it!) Tuesdays. It seems like "Taco Tuesday" is descriptive, meaning it shouldn't deserve a trademark, but you know how these things go. Taco John's claims that it's used the phrase "Taco Tuesday" since 1982 and held a registered trademark on it since 1989.

Amusingly, the article notes that a totally different restaurant, Tortilla Flats, based in California appears to hold the domain TacoTuesday.com, though it appears to be more of a banquet hall/weddings/receptions type of place. That place claims it's used the phrase since 1976 and insists that it holds the trademark on the term. A quick trip to the USPTO search suggests Tortilla Flats may think it holds the trademark, but it does not. A little investigating finds that the owner of Tortilla Flats did, in fact, apply for a trademark on Taco Tuesday (a few times), but it was not granted, and is considered abandoned.

It's also worth noting that, for whatever reason, Taco Johns seems to own "Taco Tuesday" as a trademark in 49 states. In New Jersey, the Taco Tuesday trademark is held by Gregory's Hotel in Somers Point, New Jersey. A few others have also tried to register the trademark and failed, though one (mostly) Florida-based chain, Tijuana Flats, was successful in getting a trademark on Taco Tuesdaze, instead. Now, that strikes me as being more trademarkable. Taco Tuesday, by itself, really does seem descriptive. At least with Tuesdaze, there's something distinctive about the mark.

The whole thing seems pretty pointless. Taco John's doesn't even have any locations in Oklahoma and the likelihood of confusion seems incredibly low. Even if they were in direct competition, it's hard to believe anyone would accidentally go to one of these places for Taco Tuesday, believing they were really going to the other.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    icon
    johnjac (profile), Aug 5th, 2010 @ 3:49pm

    Save #TacoTuesday

     

    reply to this | link to this | view in thread ]

  2.  
    icon
    Colin Samuels (profile), Aug 5th, 2010 @ 3:54pm

    Tweets May Have Jeopardized Some of Taco John's Trademark Protection

    As Brett Trout pointed out earlier today (see http://blawgit.com/2010/08/05/is-taco-johns-twittering-its-way-into-trademark-trouble/), a tweet from Taco John's account referencing a date of first use different (by several years) from the company's trademark registration may have jeopardized their trademark to some degree. That in addition to the issues you raise seem to make this a difficult fight if Taco John's really wants to pursue it. Perhaps they could bully the Oklahoma restaurant, but considering the negative attention this has bought thus far, why would they? Hopefully, cooler heads will prevail.

     

    reply to this | link to this | view in thread ]

  3.  
    icon
    Jeremy7600 (profile), Aug 5th, 2010 @ 3:58pm

    Where I live, across the street, is a little Tex Mex joint that USED TO BE called Taco John's. That was until this chain made him change the name. So sad. Now its just called John's Tex Mex Eatery. I liked the name Taco Johns better (and most people who know still call it Taco Johns). There aren't any Taco Johns in this state, either.

     

    reply to this | link to this | view in thread ]

  4.  
    identicon
    Anonymous Coward, Aug 5th, 2010 @ 4:00pm

    Up next... Wing Wednesday and Sundae Sunday

     

    reply to this | link to this | view in thread ]

  5.  
    icon
    Rose M. Welch (profile), Aug 5th, 2010 @ 4:11pm

    Required defense of trademark?

    I loved Taco John's tweet about their copyright on the phrase Taco Tuesday.

    Taco John’s holds the copyright to Taco Tuesday giving us the exclusive right to use and protect it.

    Bad manners, punctuation and law, all in one tweet.

    You know, it seems like most companies that defend their trademark (not copyright) do so with the intention of keeping their trademark from becoming generic, which would invalidate their claim.

    A random Yahoo! search brings up over 16 million results, very few of which have anything to do with Taco John's. It seems as though this phrase has become fairly generic.

    I think that the Iguana Grill would have a good case to press, if they wanted to spend the money. The sad thing is that they probably don't have the budget to fight this bullying by Taco John's.

     

    reply to this | link to this | view in thread ]

  6.  
    icon
    James Carmichael (profile), Aug 5th, 2010 @ 4:47pm

    I just find it weird that some people actually waste their time on that sort of issue (nothing against reporting it of course). You'd think humanity has run out of problems to solve and has nothing better to do than arguing about trademark semantics.

     

    reply to this | link to this | view in thread ]

  7.  
    identicon
    The Topical Taco Troll, Aug 5th, 2010 @ 5:12pm

    Another food story from Mike. Any guesses what he had for lunch?

    You get three guesses, and the first two don't count.

    I think he had Outback Steakhouse® Aussie Cheese Fries with Ranch Dressing.

     

    reply to this | link to this | view in thread ]

  8.  
    identicon
    Anonymous Coward, Aug 5th, 2010 @ 5:57pm

    This topic....

    Makes me hungry!

     

    reply to this | link to this | view in thread ]

  9.  
    identicon
    Anonymous Coward, Aug 5th, 2010 @ 6:14pm

    A few points:

    A descriptive mark can still be protected (as long as it's not generic)

    Trademark rights are acquired through use, not registration, so whether or not someone has a registration, they may still have a trademark and related rights.

    The conceptually weakest trademarks are the ones that require the most enforcement to avoid losing completely.

     

    reply to this | link to this | view in thread ]

  10.  
    identicon
    Anonymous Coward, Aug 5th, 2010 @ 6:37pm

    Is this a Friday article?

    I know of a bar that has a "Taco Night" with $1.00 Tacos and $1.00 Margaritas. But in this situation, Taco John's, the company, may have abandonded the trademark. "TacoTuesday.com" was first registered 08-Aug-1997. That is significant. I would not be surprised if the trademark/IP attorneys for Tortilla Flats raced to re-file for the "Taco Tuesday" name if they caught wind that Taco John's was suing a third party for the trademark.

    The reason: the attorneys would be smart enough to know that they could make a huge amount of money by contesting Taco John's filing, and forcing Taco John's to settle out of court in order to secure the name, assuming it's for somthing more than what the Taco John's Marketing Department wants. It's a bit of blackmail to be sure, but all very legal.

     

    reply to this | link to this | view in thread ]

  11.  
    identicon
    Tom The Toe, Aug 5th, 2010 @ 7:02pm

    Taco Johns Not in Ok

    I love eating at Iguana Grill. It is just up the street from me on Western Ave in OKC. Great place for many years. Taco John's is wasting time and money going after the Iguana no one here knows or cares about Taco John's or their bullying tactics.

     

    reply to this | link to this | view in thread ]

  12.  
    identicon
    Anonymous Coward, Aug 6th, 2010 @ 12:19am

    Re: Save #TacoTuesday

    So badly photoshopped it isn't even worth a giggle.

     

    reply to this | link to this | view in thread ]

  13.  
    identicon
    Any Mouse, Aug 6th, 2010 @ 12:27am

    Re: Required defense of trademark?

    I think Google could be just as telling.

    '"taco tuesday"' = 118,000 results. The first two referencing Del Taco.

    '"taco Tuesday" "taco johns"' = 2,520 results. Third result being this article.

     

    reply to this | link to this | view in thread ]

  14.  
    identicon
    Michael, Aug 6th, 2010 @ 5:57am

    Descriptive...

    Is it no longer descriptive if Taco Tuesday is on Wednesday? What if they do not serve tacos during Taco Tuesday?

    I can see the ad now:

    Taco Tuesday!
    Every Thursday night from 6:30 to 6:45
    25 cent wings and dollar drafts!

     

    reply to this | link to this | view in thread ]

  15.  
    identicon
    Danny, Aug 6th, 2010 @ 6:06am

    You know what this means....

    The whole thing seems pretty pointless. Taco John's doesn't even have any locations in Oklahoma and the likelihood of confusion seems incredibly low.

    Chances are they are about to try to setup shop in OK and they are doing this to "clear the way" for their name.

     

    reply to this | link to this | view in thread ]

  16.  
    icon
    Rose M. Welch (profile), Aug 6th, 2010 @ 6:10am

    Re: You know what this means....

    Then it'll be their fourth attempt, and it'll fail just like the first three times. :P

     

    reply to this | link to this | view in thread ]

  17.  
    icon
    johnjac (profile), Aug 6th, 2010 @ 6:45am

    Re: Re: Save #TacoTuesday

    Not even a, "this poor poor soul thinks he can 'shop" giggle?

     

    reply to this | link to this | view in thread ]

  18.  
    identicon
    Xan, Aug 6th, 2010 @ 7:59am

    Used everywhere

    There are a lot of Mexican restaurants where I live in California and it seems every one of them has Taco Tuesday. I can't believe anyone would be allowed to have the trademark to that phrase.

     

    reply to this | link to this | view in thread ]

  19.  
    icon
    johnjac (profile), Aug 6th, 2010 @ 11:03am

    Re: Re: Save #TacoTuesday

    Well the only person who matters liked enough to put it on his blog.

    http://chefrp.wordpress.com/2010/08/06/tacos-not-just-for-tuesday-anymore/

     

    reply to this | link to this | view in thread ]

  20.  
    icon
    Overcast (profile), Aug 6th, 2010 @ 12:40pm

    Re: You know what this means....

    John can shove his Tacos and his Tuesdays. I hate these corporations going after local business like that.

    It's pointless. There really needs to be some law stating that any 'normal' word - like Tuesday CAN'T be a part of any trademark, etc..

    It's not as catchy as they might think it is, lol.

     

    reply to this | link to this | view in thread ]


Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Save me a cookie
  • Note: A CRLF will be replaced by a break tag (<br>), all other allowable HTML will remain intact
  • Allowed HTML Tags: <b> <i> <a> <em> <br> <strong> <blockquote> <hr> <tt>
Follow Techdirt
A word from our sponsors...
Essential Reading
Techdirt Reading List
Techdirt Insider Chat
A word from our sponsors...
Recent Stories
A word from our sponsors...

Close

Email This