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, 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.

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Companies: iguana mexican grill, taco john's, tortilla flats

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Comments on “Perhaps Instead Of Taco Tuesday, They Should Call It Trademark Tuesday”

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Colin Samuels (profile) says:

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

As Brett Trout pointed out earlier today (see, 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.

Rose M. Welch (profile) says:

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.

Anonymous Coward says:

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.

Anonymous Coward says:

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. “” 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.

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