UK Restaurant Threatens Other UK Restaurant Over Trademark On ‘Taqueria’
from the a-place-that-sells-tacos dept
One of the cornerstones of trademark law in most countries is that you cannot trademark descriptive terms or words. The reason for this should be obvious. If I start a search engine and want to trademark my company name, calling it “Google” differentiates me from the rest of the market. But if I named my search engine “Search Engine” and then tried to trademark that, it would be rejected because trademark law isn’t meant to preclude competitors from identifying what their products are.
So, too, should be the case with “taqueria”, which is a word that means “place that sells tacos.” And, yet, it appears that the UK somehow allowed Worldwide Taqueria to register the word. Now that company is threatening another taqueria, Sonora Taqueria, simply for having that word in its name.
On 6 September, lawyers on behalf of Taqueria served Sonora’s owners with a 20-page letter. The letter, seen by Eater London, outlined the technicalities of the alleged infringement of Taqueria’s trade mark, in addition to all instances of the alleged infringement. It also provided recommendations for resolution, with a deadline for a response of 21 September.
In response to a request for comment on the letter issued to Sonora, Ismael Munoz, Taqueria’s operations manager said that, “As with all UK trademark registrations, the provisions of the Trademarks Act grant the proprietor the exclusive right to the trade mark, and those rights are infringed when the trade mark is used in the UK by another undertaking without the proprietor’s consent. As such, Sonora Taqueria Ltd’s use of TAQUERIA without Worldwide Taqueria Ltd’s consent constitutes trademark infringement.
If this ends up going to UK court and doesn’t get laughed out of the courtroom, there should be pitchforks and torches prepped for all the good taco-loving people of England to march on the trademark offices. This is absurd.
What is more likely, though, is that this threat Worldwide Taqueria lobbed at a competitor will spur a petition to simply cancel the mark entirely. It never should have been granted in the first place. “Taqueria” is no less descriptive than “burger joint” or “pizza parlor”. Granting a trademark on those terms is not only against the entire point of trademark laws in the first place, but it would cause absolute chaos in the market and court system.
The folks at Sonora Taqueria appear to be ready to fight.
“Basically, the general feeling we’re getting has been that it’s worth fighting it,” Napier said. From early conversations with lawyers who contacted Sonora after the owners posted to their Instagram account last week, they’ve been encouraged to learn of a distinction, where, in Napier’s words, “if you copyright something, it has to be non-descriptive and distinctive. And the use of the word ‘taqueria’ is descriptive and non-distinctive.
“For [Taqueria] it’s the name of a company, but for anybody else, it’s descriptive. It’s describing what your company does. And it’s not distinctive, because there can be many taquerias, just as there can be many pizzerias.” Taqueria filed its copyright in 2004, when, Napier says, “I imagine that were very few places in the U.K. using the word ‘taqueria’. But now there’s lots of them.”
Other than the conflation of trademark and copyright, that is all pretty much spot on. We see courts and IP offices get things wrong often, but this one has to be one of the easiest trademark cancellations I’ve come across.
Filed Under: taqueria, trademark, uk
Companies: sonora taqueria, worldwide taqueria
Comments on “UK Restaurant Threatens Other UK Restaurant Over Trademark On ‘Taqueria’”
“Sigh”
The U.K. gets more like the U.S.A. everyday. This trademark dispute is way beyond ridiculous. As for you, Worldwide Taqueria, you are way beyond the description “wankers”.
We see courts and IP offices get things wrong often, but this one has to be one of the easiest trademark cancellations I’ve come across.
You’d think so, but when Ferrero had its trademark on ‘Kinder’ cancelled because it’s just the German for ‘children’, the UK was part of the EU. And now, we’re not. I don’t know how that might affect this case, but I certainly hope that the UKIPO is sensible and cancels this incorrectly awarded trademark too.
Re:
I’m not sure we can count on common sense in this day and age, but my attitude is that if you can’t trademark an English word for a purpose, then it probably shouldn’t be as easy as just picking the same word in a different language. These people should be working to build the property they want protected, not just strip mining dictionaries.
Re: Re: Argupaultative
Gosh I’ve missed your sardonic lack of wit.
Taqueria has been in the Oxford English Dictionary for almost 20 years. Is that enough for you to consider it a generic word, or is there some special criteria that differentiates “curry” from “taqueria” for you?
Do pay attention. Oxford, I hear tell, is in England, which is part of the UK.
E
https://public.oed.com/updates/new-words-list-march-2003/
Re: Re: Re:
I’ll be asking for a trademark on the obscure French term ‘Restaurant’
Re: Re:
Please do not conflate common sense with good sense. The Venn diagram has little overlap to begin with in general and when it comes to the IPO and other government offices there is none whatsoever.
Re: Re: Re:
Actually, ‘common sense’ is ‘good sense’ under its common misnomer…
Taqueria
I live in Tucson, which is in southern Arizona, around 100 miles from the border with Sonora Mexico.
Taaquerias are everywhere. Anybody with a van on the south side sells tacos, street tacos, burritos, quesadillas, and more from their taqueria truck or sometimes a small building with a bathroom and a couple of tables… and the truck in front of it.
It’s not just “a” descriptive word. It is “the” descriptive word, like “shop” or “restaurant” or “bodega” or “kitchen.”
Sure would be fun if some eurotrash tried tradmarking such an obvious descriptive product here. The clerk of the court would laugh too hard to file it.
The UK has outlived its “united” and killed its “kingdom” — wait, Harry can NOW wear his uniform but yesterday he couldn’t because king charles and his wife Camilla Parker-Horseface or what?
F the UK. F the offices that approved this mark. I live in the city of taquerias. The Brits haven’t a clue, and aren’t likely to get one anytime soon.
Brits making tacos. OMG. It’s like cats pretending to care.
Re:
“Taaquerias are everywhere”
Good for you. Britain has a culture of immigration from the Indian subcontinent, Europe and former Commonwealth rather than the Americas, which means the streets are lined with curry houses and kebab shops instead of Mexican food. This is fine.
Instead of being a xenophobic twat, viva la difference and let’s fight together against corporate ownership of words on both sides of the pond.
Taqueria aren't everywhere
I suspect Taqueria was able to be registered as the person in the UK reviewing it had never heard of the word. I certainly hadn’t as Taco’s aren’t that popular in the UK.
A quick look at the Taco Bell website in the UK only suggests there are only about 100 taco bells outside of London. If you exclude that chain then I doubt there are more than a hundred or so places outside London that specialize in them, if even that.
Yes it shouldn’t have been allowed, but you can’t expect people in other countries to know descriptive words worldwide when reviewing them.
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True, but must have heard of the Internet…
Re:
I remember just a couple of years back when they opened their first ever flagship UK location. The franchise wasn’t even a thing in this country prior to that. There were a few american themed restaurants that offered them on the menu, but mostly those of us who like them just needed to cook them at home.
Re:
If you exclude that chain then I doubt there are more than a hundred or so places outside London that specialize in them, if even that.
There are three taco places (including Taco Bell) in Meadowhall alone, and that place is just a tram ride away from me.
Re:
“A quick look at the Taco Bell website in the UK only suggests there are only about 100 taco bells outside of London”
That’s a hell of a lot more than there were before I left the UK many years ago (I used to relish in visiting TB, Subway and other chains that hadn’t made it to those shores yet).
But, the lack of a multinational brand doesn’t mean the concept doesn’t exist. Travel is also a thing, and while someone who doesn’t do such things might find the word new, the many, many people who travel to the US and Mexico from the UK every year are likely more familiar.
It’s true that taquerias are less common in the UK than in the US due to the obvious lack of cultural history and land border, but they’re not completely foreign ideas. There’s probably more people familiar with the Old El Paso shelf in their local supermarket than an authentic taco but that’s no reason to lock up the concept.
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Another Tucson native here. Please do not conflate the honorable term “taqueria” with any “food” product produced by the Taco Bell corporation.
Re: Re: Yeah
El Cheque first west side south of River.
The Quesadillas Craycroft east side north of Grant.
Tacos Apson 12th st southside and I hear Oro Valley also.
Yeah, not Taco Bell 🙂
Descriptive v. Generic
You can have a trademark in a descriptive term if it has secondary meaning. Seems almost impossible that the UK entity would meet that standard. And, moreoever, taqueria isn’t descriptive–it’s generic. No one should have a trademark on it.
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And, moreoever, taqueria isn’t descriptive–it’s generic.
Actually, ‘taqueria’ is descriptive,and it’s that descriptiveness that males the word generic. (-_Q)
Re: Re:
I’m using the words in the legal sense, under trademark law. “Descriptive” and “Generic” are two separate categories. A Descriptive word or phrase can be protected as a trademark if is what so-called “secondary meaning.” A Generic word or phrase cannot be protected at all.
This is why I’m trademarking “ye olde shoppe”
Re:
I’m sorry to inform you that I have already trademarked “Þe olde shoppe™”, see Thorn (letter)
😀
Taqueria? WTF is one of those?
To all those who say that Taqueria is either generic or descriptive, it is not so in British English.
It didn’t even get added to the Oxford English Dictionary until 2003. It’s not even the correct spelling; that would be ‘tequeria’. https://en.wiktionary.org/wiki/taqueria
I’d never come across the world in over 50 years of speaking English, until today.
Re:
There are rules relating to translations of foreign words. In the U.S., at least, even though it is a Spanish word it would likely be considered generic here. UK has a similar doctrine–iirc it depends on whether the relevant target consumers would understand the term in its generic/descriptive sense. In which case, you get to argue over the relevant consumers.
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“It didn’t even get added to the Oxford English Dictionary until 2003”
So, it’s fine to lock up an existing word that’s been part of that dictionary for 19 years? What’s the time limit? Does that limit also apply to new words invented by the British, or just foreign loan words?
“It’s not even the correct spelling; that would be ‘tequeria’”
So… why did you link to something that doesn’t contain that spelling? I can’t find that spelling anywhere, except relating to a different food apparently popular in Venezuela, which is nothing like a taco.
“I’d never come across the world in over 50 years of speaking English, until today.”
I had. So?
Re: Re: Shibolet
Yeah, it’s actually correctly spelled. I said it wasn’t to see who would click through. You didn’t. If you can’t be bothered don’t expect anone else to.
It’s a word. It’s been in the OED for 20 years. It’s descriptive. Your lack of knowledge of it AND your lack of desire to click to see it defined is not a failure of the language or the OED… it’s a failure on your part.
No, you clearly had not.
Play stupid games… win stupid prizes. Today’s stupid prize is the Paul T special.
Re: Re: Re:
You clearly didn’t read the part of PaulT’s comment where he stated your source hadn’t spelled “taqueria” the way you claimed they had, proving he did indeed “click through.”
Play stupid games… win stupid prizes. This month’s stupid prize is the Ehud “The Troll” Gavron special.
Re:
“It’s not even the correct spelling; that would be ‘tequeria’”
The correct spelling is ‘taqueria’, from American-Spanish (as distinguished from Spanish-Spanish)’taquería’ from the Am. Sp. ‘taco’. That in turn is from Mexican-Spanish ‘taco’ meaning a tortilla-wrapped filling; from Spanish-Spanish ‘taco’, a plug or wad, often meaning an explosive charge of paper-wrapped gunpowder using in mining.
Play stupid games... win stupid prizes...
https://tmsearch.uspto.gov/bin/showfield?f=toc&state=4804%3Aeei48t.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=restaurant&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=ADJ&a_default=search&a_search=Submit+Query&a_search=Submit+Query
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“This search session has expired. Please start a search session again by clicking on the TRADEMARK icon, if you wish to continue.”
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If you’re trying to prove that the word ‘taqueria’ alone isn’t trademarked in the US, well done. You’ve achieved your goal.
Re: Re:
But strangely, the word “flipper” by itself has multiple trademark grants in the last few years.
(I have no idea why I thought of searching for that term!)
Re: Re: Re:
Whether a proposed mark is descriptive or generic depends on the goods or services involved. You could register the mark TAQUERIA for golf clubs, for example. Just like you can have a trademark on the word APPLE for computer but not for actual apples.
What about Ugg?
Sheepskins boots in Australia were commonly call uggs and an Australian started importing them into the US calling his company Ugg. Invalidate due to being a generic description or does the US trademark win preventing Australians from using ugg as a description for their exported boots?
https://www.npr.org/2022/09/13/1122820376/the-good-the-bad-and-the-uggly
They should rename themselves, THE Taqueria… oh wait…
Perception vs reality
Well, that’s what should happen. But we all read on because so often it’s not the way it works.
That’s how we wind up with discount discount shoe warehouse shoe warehouse
*Meanwhile: Pizza Hut is sitting quietly in the corner snickering at the whole thing.
Registrations
I think I’ll apply to register Taqueria-Dirt (TaqueDirt for short) with the USPTO.
Anyone want to bet how this works out?
E
Re:
As if you hadn’t already proved it’s only trademarking a single word in relation to the service the business provides that’s problematic… 😤
What is this thing where trademark owners think they literally own every word (or similar word) individually, which comprises their trademark?
Acme Screw: We own the word “screw”! Everyone else stahhhhhp!
As a semi-professional taco aficionado, I suspect by name alone that Sonora tacos are exceedingly better than Worldwide tacos.
Ridiculous
This is the most ridiculous threat ever. There most be a way to appeal this! Is the same as registering the name “PUB” or “Restaurant” as a trademark It must be prohibited to register that!
It looks like worldwide taqueria is scared of something to threaten a business with such absurd argument.
You can register “worldwide taqueria”; but “taqueria” only is ridiculous!!!!