What We Can Learn from the “Taco Tuesday” Trademark Dispute

“Taco Tuesday” is truly a time-honored tradition. Many restaurants celebrate with discounted taco offers each Tuesday and families often make their own at home to celebrate. For some businesses, though, the tradition is more than just a fun phrase accompanied by discounted food – and this is exactly why this tradition recently turned into a major intellectual property dispute. Let’s get to the meat of this taco fight.

Taco Tuesday Trademark Fight

Taco John’s, which has about 400 locations in the United States, owned trademark rights to the “taco tuesday” phrase in all 50 states except New Jersey dating back to 1989. Taco Bell, along with NBA superstar and entrepreneur LeBron James, took issue with those trademark rights and pushed for the U.S. Patent and Trademark Office (USPTO) to “free” Taco Tuesday and cancel the Taco John’s trademark. I reported on this dispute in a blog post on LinkedIn earlier this summer.

In late July, the taco and basketball giants won when Taco John’s conceded and relinquished the trademark. The restaurant chain claims it did not want to continue the fight and instead asked Taco Bell to make a donation in honor of the agreement to give up the trademark.

What We Can Learn

This is yet another famous intellectual property case that captured national attention. In this case, Taco Bell argued “Taco Tuesday” was too generic of a phrase for anyone to claim ownership over it. Because the Trademark Trial and Appeal Board (TTAB) did not issue a decision, we don’t know if this argument would have held up – but we do know that generic marks are weak source identifiers and not worthy of trademark protection.

Other businesses should take note. You and your teams work hard to create original brands, logos, trademarks, and protecting them is necessary to distinguish you and your products and services from that of your competition. They’re important to your bottom line. To avoid your hard work becoming generic, like the “taco tuesday” mark, it’s important to properly use the mark in your own business and also to police third party uses of your mark.

Generic trademarks are generally marks that are or have become synonymous with the industry, idea, or product they represent. They do not (or no longer) serve as source identifiers, and instead represent just the name or term for the product or service itself. Understanding how your use of your marks and your review of third party uses of your mark can impact their continued protection is critical to maintaining the value in your trademarks.

In this case, simply using “Taco Tuesday” implied that it was just a thing – it represented the concept itself and not a source identifier for a business who provided certain goods or services associated with the trademark. Alternative uses could have been “Taco Tuesday Specials” or “Taco Tuesday Taco Platters.” In these examples, the mark “Taco Tuesday” is used as a source identifier for the specials or platters offered by the business using the trademark. The “Taco Tuesday” aspect of the mark describes a specific item or event it is associated with as opposed to attempting to stand on its own. It’s also critical to police third party uses of the mark that could render your mark generic.

Talk to a Trademark Attorney About Your IP Portfolio

Are your trademarks strong enough? Are you concerned about whether you are properly using your trademarks? Are you concerned about third party uses of your marks? If so, we can help. McDermott IP Law offers thorough reviews of client intellectual property portfolios and will help you strategize to get the most out of your intellectual property. Contact the firm today and protect your innovation.

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