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.