Taco John's Continues To Wage A Long-Lost Trademark War To Keep 'Taco Tuesday' From Becoming Generic

from the trademark-tuesday dept

Way back in 2010, Mike wrote about how the Taco John's restaurant chain had threatened a small restaurant in Oklahoma for daring to use the phrase "Taco Tuesday" in a promotion for cheap tacos on...you know...Tuesdays. Taco John's did indeed have a trademark on the term in 49 of our 50 states, with the exception being New Jersey, because life is strange. The question at the time, as tends to be the question in most trademark disputes, was whether or not there was any potential customer confusion to worry about. Given the somewhat descriptive nature of the phrase, not to mention its widespread use both commercially and in common parlance, the whole thing seemed rather silly.

Six years does little to change things, it seems. Taco John's recently fired off a cease and desist notice to the Old Fashioned Tavern and Restaurant in Wisconsin for using the phrase.

For almost a decade, the restaurant had sold $2 tacos on Tuesday night. Other restaurants and bars in the area had similar promotions, and in cities like San Francisco and Los Angeles, Taco Tuesday specials are as plentiful as yoga classes.

But the author of the letter claimed that “Taco Tuesday” was a federally registered trademark that belonged to Taco John’s, a chain of around 400 Mexican-style fast food restaurants. And as Old Fashioned manager Jennifer DeBolt told the local Cap Times, they quickly realized that “the law firm is completely legit.”

And, because this kind of trademark bullying totally works, the restaurant decided to change the name of Taco Tuesday and set up a poll on its Facebook page for fans of the business to suggest new names. Those suggestions are certainly creative.

  • Cease-and-Desist Taco Special
  • Trademark Tyrant Taco Day!
  • Edible Taco Tuesday
  • Tacos on the Square
  • Taco-tastic Tuesday
  • Dy-no-mite Taco-nite
  • Ye Old Fashioned Taco Tyme
  • Corporate-free Taco Night
  • Totally Renamed Tuesday
  • Wistaco Day
  • The Tuesday Special That Shall Not Be Named

You get the idea. Taco John's trotted out the usual excuses about the need to protect this trademark, lest it devolve into generic status. Simultaneously, it also seems to fully understand exactly how generic the term has become.

“Over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies,” says Billie Jo Waara, the chief marketing officer at Taco John's. (Waara can’t reveal details, but we suspect the pharmaceutical company used “Taco Tuesday” in a drug ad.) “We also recognize that the unauthorized use [of Taco Tuesday] is prolific, and we do our best to communicate ownership. It’s a challenge for sure.”

So prolific, indeed, that it would be silly at this point to claim that there is any actual customer confusion for which to be concerned. Should the average person drive down the street in their hometown and see a tavern advertising "Taco Tuesdays!", that person is not going to think of Taco John's at all, let alone wonder whether there was some kind of affiliation. That's because there is nothing in the phrase that acts as a source identifier. It's mostly descriptive, involves mostly generic words, and the company's protectionism typically induces a sneer.

The biggest threat to Taco John’s ownership over Taco Tuesday, however, is not a populist backlash. It’s that so few people know about its claim. When the Los Angeles Times asked a waitress at a Mexican restaurant about the trademark issue, she responded, “Give me a break. Everybody has Taco Tuesdays.” And that was twenty years ago.

Taco Tuesday belongs to the people now. It'd probably be best for everyone if Taco John's just gave it up.


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  • identicon
    Generic Californian, 3 Oct 2016 @ 11:14pm

    I've been going to Taco Tuesday ever since I've been able to pay for my own tacos. Never heard of Taco John's.

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

    • icon
      That One Guy (profile), 4 Oct 2016 @ 5:26am

      Re:

      Clearly there's only one explanation for this: Whoever you've been buying tacos from is a trademark infringer of the highest order, blatantly stealing a term that only came into existence once Taco Johns filed a trademark application for it, using Taco John's rightful property illegally for their own personal gain.

      I'm sure the second Taco John's lawyers realize this horrific theft of their rightful property they will swiftly bring the guilty parties to justice for daring to steal from them and dilute Taco John's holy trademark on all things Taco and Tuesday.

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

    • identicon
      HaroldK, 4 Oct 2016 @ 6:13am

      Taco Tuesday

      I know Taco Tuesday. Here in California I have to ask who is Taco John? Stupid, Stupid, Stupid!

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

      • icon
        ltlw0lf (profile), 4 Oct 2016 @ 7:14am

        Re: Taco Tuesday

        I know Taco Tuesday. Here in California I have to ask who is Taco John? Stupid, Stupid, Stupid!

        That is because we don't have Taco John's here (I doubt they would do well here either, there is an authentic taco shop on every corner which makes better and less expensive food.) I've been to one in the Midwest, and if you want more expensive and less authentic Mexican food than Taco Bell, you go to Taco John's.

        And apparently Taco John's doesn't believe in California, since just about every restaurant has Taco Tuesdays and I haven't heard a single one of them getting a letter. We should be safe.

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

  • icon
    That One Guy (profile), 4 Oct 2016 @ 2:50am

    'When you think 'Taco Tuesdays', think legal bullies. I mean Taco Johns.'

    Should the average person drive down the street in their hometown and see a tavern advertising "Taco Tuesdays!", that person is not going to think of Taco John's at all, let alone wonder whether there was some kind of affiliation.

    Well, perhaps before reading the article I wouldn't have made the connection, but now I imagine any time I hear the phrase 'taco tuesdays' the connection will indeed be made in my mind between it and the litigious actions of Taco Johns.

    So, congrats on protecting that trademark and avoiding customer confusion I guess?

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

    • icon
      That One Guy (profile), 4 Oct 2016 @ 5:30am

      Re: 'When you think 'Taco Tuesdays', think legal bullies. I mean Taco Johns.'

      (As for the names I'm tied between 'Trademark Tyrant Taco Day!' and 'The Tuesday Special That Shall Not Be Named', both entertaining and delightful ways to mock the bully that is Taco Johns.)

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

  • icon
    soviet_eponge (profile), 4 Oct 2016 @ 3:45am

    The real question here

    Why is nobody talking about the Lego Movie?

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

  • identicon
    anony, 4 Oct 2016 @ 5:13am

    what about their name

    Didn't Autoshack have to change their name because Radio Shack owned the rights to the 'shack' part of their name? Why doesn't Papa Johns go after Taco Johns? Also why doesn't Taco Bell go after Taco Johns. It would seem like they need to change both halves of their company name.

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

  • icon
    Ninja (profile), 4 Oct 2016 @ 5:36am

    Finally! We can eat tacos on tuesdays! Horraaaaay!

    Ahem.

    The amusing bit here is that people will keep living their lives and happily ignoring copyright once it steps over rights it should not. But at least we got one more thing we can rightfully use for free.

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

  • icon
    Nick (profile), 4 Oct 2016 @ 5:42am

    DMCA Tuesday?

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

  • icon
    Chris ODonnell (profile), 4 Oct 2016 @ 5:54am

    Taco Tuesday was a thing at the Taco Bell in West Lafayette,
    IN in the late 1980s. It was 3 tacos for a dollar, which when combined with it also being dollar night at the mall movie theater, made for a very cheap date night.

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

  • icon
    radix (profile), 4 Oct 2016 @ 6:19am

    How do they have a TM in 49 States? If it's Federal, you would think it would cover all 50, and if not, they only operate in 24 States anyway.

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

    • icon
      ltlw0lf (profile), 4 Oct 2016 @ 7:18am

      Re:

      How do they have a TM in 49 States? If it's Federal, you would think it would cover all 50, and if not, they only operate in 24 States anyway.

      Maybe someone challenged the mark in New Jersey?

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

  • identicon
    I.T. Guy, 4 Oct 2016 @ 7:12am

    http://philly.thedrinknation.com/articles/read/12900-Where-to-Find-Philadelphias-Best-Taco-Tuesday-D eals-#

    Taco Tuesday is nothing new. Funny thing... you search Taco Tuesday and Taco Johns is nowhere to be found.

    and of course a little TD history:
    https://www.techdirt.com/articles/20100803/10532810480.shtml

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

  • identicon
    I.T. Guy, 4 Oct 2016 @ 7:21am

    http://www.ocregister.com/articles/cano-645304-torito-calderon.html
    Apparently Taco John was not the first to use it, only the first to get it trademarked.

    And there is historical proof he was not the first to use it:
    http://www.latimes.com/local/obituaries/la-me-larry-cano-20141217-story.html

    "Once named by Time magazine as one of the "Enchilada Millionaires," Cano was at the forefront of a dining trend that boomed through the 1970s and '80s and made "Taco Tuesday" part of everyday lingo."

    I'd love to see these assclowns lose their trademark.

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

    • identicon
      I.T. Guy, 4 Oct 2016 @ 7:44am

      Re:

      [Puts on Tinfoil hat] Is it a coincidence that it appears they started enforcing their trademark just after Larry Cano died?

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

  • identicon
    illuminaut, 4 Oct 2016 @ 7:22am

    I like Trademark Tyrant Taco Day, but to avoid any confusion I'd go with the simpler Fuck You Taco John's Tuesday. It seems more offensive than a trademark violation but more legal.

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

  • identicon
    Anonymous Coward, 4 Oct 2016 @ 7:50am

    Sign scratched into stall of a Taco Bell restroom "Flush twice, it is a long way to Taco John's".

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

  • icon
    ThatDevilTech (profile), 4 Oct 2016 @ 9:32am

    Fitting.....

    That I read this on National Taco Day

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

  • identicon
    stranger in the alps, 4 Oct 2016 @ 10:08am

    "Trademarks Apparently Cover Obviousness" Tuesdays.

    Hopefully no-one shortens it.

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

  • identicon
    David, 4 Oct 2016 @ 10:20am

    "Bold Taco Day"

    Says it all.

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

  • identicon
    TonyLurker, 4 Oct 2016 @ 10:43am

    Is it too late for me to trademark "twofor Tuesday" and start suing classic rock stations?

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

  • identicon
    Anonymous Coward, 4 Oct 2016 @ 10:58am

    Since we are going to have a taco truck on every corner, I guess this trademark complaint is extra stupid.

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

  • identicon
    Michelle, 4 Oct 2016 @ 12:07pm

    Unaware it was a Taco Johns trademark

    The first time I heard this term was in the The Lego Movie, where it was a major plot point. Then, later, in the My Little Pony: Equestria girls movie Rainbow Rocks where it was a throwaway joke.

    This is the first time that I've heard it connected to anything outside entertainment. and there are four Taco Johns in my area. And I used to eat at Taco Johns on a not exactly irregular basis.

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

  • identicon
    Digitari, 4 Oct 2016 @ 12:23pm

    how about...

    "Taco toilet Tuesday"

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

  • icon
    Eldakka (profile), 4 Oct 2016 @ 5:48pm

    How about

    Totally Not Taco Johns Taco Tuesday.

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

  • identicon
    Zonker, 5 Oct 2016 @ 5:36pm

    When I hear the phrase "Taco Tuesday" I automatically think of my grade school cafeteria lunch calendar back in the early '80s where I first heard of it, yet I have never heard of Taco John's before today.

    Now I know where I will never go for Tacos (since apparently they are full of shit).

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

  • identicon
    Philly Bob, 6 Oct 2016 @ 12:10am

    Who and or what the hell is Taco John's?

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

  • identicon
    Gordon Yang, 6 Oct 2016 @ 7:23pm

    well Taco John's logo look like TJ Maxx's

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


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