Taco Bell Seeks To Liberate ‘Taco Tuesday’ For Itself, The Masses

Trademark

from the for-whom-the-bell-tolls dept

There is a long history of trademark silliness concerning the phrase “Taco Tuesday.” As with many trademark stories, the original sin in all of this was committed by the USPTO , which in the ’80s somehow managed to grant the Taco John’s chain a trademark on the term, despite it being both very descriptive and, after years of lax enforcement, absolutely generic at present. What you will find missing in the stories that we’ve done on this topic in the past is an entity with real weight behind it attempting to invalidate Taco John’s trademark entirely. Sure, everyone from restaurant trade associations to LeBron James (seriously!) have gotten involved, but what we need here is a good old fashioned Goliath to come and stamp out David when he’s misbehaving.

Enter Taco Bell. The largest player in the Americanized Mexican food market has finally entered the fray and has petitioned the Trademark Office directly to invalidate the mark.

The taco chain filed a petition Tuesday (naturally) with the US Patent and Trademark office to cancel the trademark, owned by rival Taco John’s for 34 years, because Taco Bell claims the commonly used phrase “should be freely available to all who make, sell, eat and celebrate tacos.”

The use of the phrase “potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from [Taco John’s] — simply for pursuing happiness on a Tuesday,” the filing said.

It’s a little cheeky, to be sure, but the meat of the requests relies on solid complaints about the mark. The term is at least partially descriptive: deals for tacos on Tuesdays. And even if it isn’t descriptive enough to be denied a trademark, the term certainly has become so widely used and generic at this point, at least in part due to lax policing from Taco John’s, that it should be invalidated.

The very idea that a taco joint anywhere in America cannot run sales, advertising, or promotions for their own “taco Tuesdays” is a blatant violation of the purpose of trademark law. Nobody is going to see an advertisement for Taco Tuesdays at Taco Bell and somehow think Taco John’s is involved. That is purely due to how the public sees the term. Again, this is a clear indicator that the mark should be done away with.

Taco John’s has 40 days to file a response, and if the two chains can’t reach an agreement, the case will move to a discovery period where each company can make document requests and present evidence stating their case. Following that would be a trial and oral arguments presented in front of the board’s judges.

According to Gerben, Taco Bell has a “strong case” because US trademark law “prevents the registration of common phrases or phrases that become commonplace after a registration is granted.” In this instance, the slogan “has become a cultural phenomenon with a long history of being used by individuals and companies other than the current owner of the trademark,” he told CNN.

And therefore never send to know for whom the Taco Tuesday bell tolls, Taco John’s; it tolls for thee.

Filed Under: taco tuesday, tacos, trademark, tuesdays, uspto
Companies: taco bell, taco john's

‘Taco Tuesday’ No Good As A Trademark For Beer; Paging Taco John’s

Trademark

from the dear-john-letter dept

It’s always fun when the USPTO demonstrates its internal multiple personality disorder on intellectual property concerns. That’s probably a tad harsh; after all, the USPTO is made up of people, and different people will view similar situations differently. Unfortunately, part of what the USPTO is supposed to uphold and set are standards for intellectual property matters. Standards which should be applied evenly throughout all the requests that come its way.

Which brings us to Monday Night Ventures LLC and the trademark application it filed for a “Taco Tuesday” lager.

Monday Night Ventures LLC applied to register TACO TUESDAY as a trademark for “beer,” submitting a picture of a menu displaying this term as a point-of-sale specimen of use, and later providing a picture of a can of beer displaying this term.

The Examining Attorney refused registration on the ground that the proposed mark failed to function as a mark because it is a message widely used by a variety of sources to refer to a well-recognized cultural phenomenon where persons consume tacos and beverages, including beer, on Tuesdays.  The Applicant appealed to the Trademark Trial and Appeal Board (TTAB).

100% the correct decision. I have no notes to offer. Neither did the TTAB, it appears, as it upheld the refusal of registration on appeal.

Notably, the TTAB did not refuse the trademark due to it being descriptive. The phrase absolutely is descriptive when used to sell tacos on Tuesday, of course, but that isn’t the case as applied to the packaging for beer. Instead, the TTAB’s refusal on the mark is due to it being generic and broadly used in general.

You might have concluded that TACO TUESDAY is suggestive of the type of event to which it refers.  A suggestive mark is registrable.  But in this case, the TTAB found that the evidence of widespread use of this term in general, and for beer in particular, tipped the scale to the failure to function side. As a result, TACO TUESDAY appears to be available for use on beer by any brewery.

Agreed. But you know who has a registered trademark for “Taco Tuesday” that is even more generic and descriptive than this example from a brewery? Taco fucking John’s, that’s who.

We have written for years about Taco John’s wielding this registered mark it somehow got from the USPTO to try to keep other eateries and restaurants from being able to host, promote, or advertise their own “Taco Tuesdays.” It sure would be nice if the USPTO could look at its correct decision denying Monday Night Ventures its “Taco Tuesday” mark and then apply that same standard to Taco Johns’ mark.

At the very least, anyone who might want to challenge Taco John’s registration should be able to point to this latest TTAB appeal.

Filed Under: beer, taco tuesday, trademark, ttab, tuesday, uspto
Companies: monday night ventures, taco john's

Restaurant Association Looks To Take Back Taco Tuesday For The People

Trademark

from the nacho-trademark dept

You may have noticed something of a steady stream of posts from us on the topic of a “Taco Tuesday” trademark held by the chain Taco John’s. Taco John’s has used this descriptive trademark to bully all kinds of other restaurants into not advertising their own taco Tuesday offerings, while also leaving alone the vast majority of small purveyors of tacos on Tuesdays. The ubiquity of Taco Tuesdays is mostly what has everyone confused as to why Taco John’s is acting like Taco Jerks: the term is descriptive and, even if it weren’t, fully generic at this point.

It was enough to, and I can’t believe I’m saying this, get LeBron James involved. You see, just like dragons, LeBron loves tacos. And he likes promoting his own consumption of tacos on Tuesdays and he very much thinks that everyone should be able to use the phrase as they please. To that end, LeBron took to the Trademark office pretending to want to trademark “Taco Tuesday” for himself when he was actually hoping to get denied due to the generic and descriptive nature of the mark… which is exactly what happened. We said then that it was now only a matter of time before someone decided to go on the offensive to take Taco Tuesday back by inviting Taco John’s to issue a threat so that this hero group could point to the Trademark Office’s denial of LeBron’s trademark, with the ultimate goal being invalidating the Taco John’s trademark.

Well, that has now happened. The Orange County Restaurant Association has gone all in, going so far as to by the tacotuesday.com domain.

Now joining the effort is California’s Orange County Restaurant Association, which recently bought the domain TacoTuesday.com. Why OCRA? Well, its members know a thing or two about a good taco—and the domain presents a great marketing opportunity for them, founder and president Pamela Waitt told the Orange County Business Journal.

“That’s part of our agenda here, is to really illuminate the Orange County restaurant industry, which can be challenging when you’re sandwiched between Los Angeles and San Diego,” Waitt said.

But she notes that there’s also a bigger goal at play: OCRA hopes to open the phrase up to everyone else, creating a resource for taco culture in general. In a news release, Waitt characterized the group’s role as “peacemaker.”

OCRA can characterize itself however they like, but this is pretty clearly a shot across the bow at Taco John’s, practically begging the chain to issue a threat or file suit. If that occurs, OCRA would likely seek declaratory judgement that its use does not infringe due to the generic nature of the trademark, which would get the ball rolling on invalidating the trademark.

The association plans to relaunch the website next spring with 500 listings of taco shops in five states, providing the listings for free to restaurants. OCRA says it will make the domain “an umbrella brand for taco events, social media activations, media tours, guest chef interviews, and an opportunity to foster strategic partnerships, corporate citizenship, philanthropic giving, and beyond.”

None of which really requires having a domain name of tacotuesday.com, except if the organization wants to promote itself through the news, poke Taco John’s in the eye, or both.

So maybe, just maybe, our long national taco nightmare will come to an end soon.

Filed Under: generic, taco tuesday, trademark
Companies: ocra, orange county restaurant association, taco john's

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

Trademark

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.

Filed Under: generic, taco tuesday, tacos, trademark
Companies: old fashioned tavern & restaurant, taco john's

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

Trademark

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.

Filed Under: taco tuesday, tacos, trademark
Companies: iguana mexican grill, taco john's, tortilla flats