By: NICK KUHLMANN
The legal tug of war over “Taco Tuesday,” it seems, has come to its last bite. Taco John’s, which claimed legal ownership of the popular catchphrase, announced last week that it would be ending its efforts to protect the famous verbiage, citing mounting costs as its reason. The longtime fast food chain had most recently been at odds with competitor Taco Bell, who sought to cancel the trademark so anyone could use the term without fear of recourse.
The popular Mexican-inspired fast food chain had been a longtime advocate for keeping the saying in the public vernacular, with Taco Bell petitioning to terminate the trademark registration behind Taco Tuesday so no restaurant or individual could claim legal ownership of it. In May, the franchise filed petitions with the USPTO Trademark Trial and Appeal Board. Taco Bell claimed its intent was not for monetary damages or for exclusive rights to Taco Tuesday. Rather, Taco Bell wanted simply to cancel all federal trademark law registrations. (Taco Bell had garnered longtime support from LeBron James, who at one time attempted to trademark Taco Tuesday himself.)
Biting Into the Background of “Taco Tuesday”
Industry rival Taco John’s owned the rights to the phrase since 1989 in 49 states (except in New Jersey). That’s because a local establishment in Somers Point, N.J. — Gregory’s Restaurant & Bar — first owned rights to the trademark from 1979 until 1989. When failure to renew the trademark resulted in its cancellation by the USPTO, Taco John’s jumped on the opportunity and filed a trademark application for Taco Tuesday — a term it had been using since 1982.
Although Gregory’s lost out to Taco John’s, it was determined that the restaurant had still held trademark rights over Taco Tuesday in the state of New Jersey. This is a demonstration that the local community in New Jersey has been more likely to associate the trademark of Taco Tuesday with Gregory’s, rather than Taco John’s.
Since then, the Wyoming-based Taco John’s reputation was one of staunch protectiveness over the alliterative phrase, known to send cease-and-desist letters to other establishments that used the phrase without permission, leading to controversy and backlash.
For example, Taco John’s sent one such letter to a brewery located less than one mile from its headquarters in Cheyenne, Wyo. The company, Freedom Edge Brewing, quipped on Facebook after receiving the letter: “We have nothing against Taco John’s, but do find it comical that some person in their corporate office would choose to send a cease-and-desist to a brewery that doesn’t sell or profit from the sales of tacos.”
“It’s been ours for 34 years, and we’re very proud of that,” Taco John’s CMO, M. Barry Westrum said of the trademark before ending their trademark fight. “To this day, Tuesdays are our best-selling days of the week. While Taco Tuesdays may have become part of the American lexicon, that doesn’t give our competition the right to take it from us.”
However, Taco Bell, the arguable champ of Mexican-inspired fast food, and now, of giving Taco Tuesday back to the public, believes that that the term should remain of the people, for the people, in perpetuity.
Did Taco Tuesday Suffer from Genericide?
Trademarks of catchphrases, slogans and terminologies walk a thin line into some very gray areas — just one reason why these types of legal struggles begin, irrespective of outcome. Technically, if a word or term is so strongly associated with a certain product or service, it may be eligible for trademark protection, especially if it sets one entity’s brand name or goods apart from other parties or competitors.
This, in a nutshell, became Taco John’s continued defense — that protecting its Taco Tuesday trademark was, in fact, a powerful and savvy marketing tool directing hungry consumers to choose them over Taco Bell and other industry players.
The irony of Taco Bell’s assertion that no singular entity can lay legal claim to eating tacos, on Tuesday — or any day of the week, for that matter — was not to squash the competition but to essentially welcome all industry players, including Taco John’s, onto an even playing field.
“The registration 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,” Taco Bell’s petition stated. “This violates an American ideal: ‘the pursuit of happiness.’”
It continues: “‘Taco Tuesday’ is a common phrase. Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say ‘What’s up’ or ‘brunch’? Chaos.”
And while it’s true that it may seem ridiculous to attempt trademarking those types of common nouns or pleasantries we say all the time, Taco John’s didn’t share the same sentiment as of last week: “A registered trademark (being) ‘fun to say’ does not constitute legal basis to cancel a trademark that has been registered with the USPTO for 34 years and was first used by Seasonings and its licensees as early as 1979.”
So, does Taco Tuesday fall into the same camp? Its ubiquitous overuse over the years may ultimately have made it a victim of genericide: even if a word or phrase is trademarked, it can become so commonly used that it no longer satisfies the legal requirements of being unique or distinct.
Think of generic phrases we use all the time, like velcro, styrofoam, cellophane, escalator, trampoline and others. They all suffer from genericide because they’ve become so closely associated with the products themselves that the brand names become common nouns. Kleenex is a catch-all for facial tissue; chapstick for all lip balms; aspirin referring to any pain medication.
Does the Taco Tuesday Case Set a New Legal Precedent?
Although the Taco Tuesday debacle ultimately ended before reaching extensive legal deliberation, does the case open the doors for other similar examples where genericide is a defining factor?
Challenging the exclusivity of widely-used terms in the food industry, the case, as one example, might open the floodgates for other businesses to use similar phrases without fear of legal repercussions — whether it’s tacos or some other popular food or consumer product. Brand dilution and consumer confusion over who offers the best tacos, or burgers, or coffee, might be one possibility in a hypothetical scenario.
On the other hand, if a business similar to Taco John’s demands exclusive rights to another common catchphrase, other competitors would need to find alternative ways to present their advertising language, potentially leading to a shift in marketing strategies and branding efforts, good or bad. This could reinforce the notion that a company can claim ownership of a common phrase by consistently and extensively using it in commerce, stifling competition and hindering the ability of other companies to market their goods and services. It might set a precedent for future phrases or terminologies.
Now, given the fact that both parties — Taco John’s and Taco Bell — have reached a resolution, it could also paint a similar picture for future cases in that legally opposed parties may agree to coexist by establishing specific guidelines for the use of phrases or marketing language. This could involve licensing agreements or territorial restrictions, allowing multiple commercial entities to benefit while avoiding direct competition.
Targeting Trademark Law
Trademarks serve to protect brand identities and distinguish a company’s unique offerings. However, the line between a protectable trademark and a generic term can sometimes be blurred. Even when a legal compromise proves successful, this peculiar case of Taco Tuesday isn’t all about semantics, after all — rather, it highlights the tension between the desire to protect intellectual property and the need to preserve the public’s right to use common, descriptive phrases.
It also illustrates that no matter the backstory or elements in each individual case, trademarks serve a purpose in our legal lexicon. The attorneys at Patterson Thuente have worked tirelessly for years to protect the assets and brand language of businesses, creators and inventors.
How can we help you? Contact Nick Kuhlmann today, the trademark expert at Patterson Thuente IP.