The phrase “Taco Tuesday” elicits a visceral reaction in foodies and families alike. What comes to mind when you hear it? Crunchy or soft tacos? Queso? Margaritas? Does a specific restaurant come to your mind? If you answered “no” you may be among those that agree with Taco Bell, who recently filed a Petition to Cancel trademark registrations for the mark TACO TUESDAY.
On what basis can Taco Bell do this, you may ask? Let’s break down the history. In the early 1980s, a Taco John’s franchise owner sought to increase business on the restaurant’s slowest day of the week. The owner offered two 99-cent tacos and coined the phrase “Taco Twosday.” It was well received by customers and soon the phrase was shared across several Taco John’s franchises. In 1989, the chain filed a federal application claiming first use of the mark and received registration for the adjusted “Taco Tuesday” and never looked back.
At least that is Taco John’s version of events. The Trademark Trial and Appeal Board records indicate that Taco John’s is no stranger to defending and enforcing its TACO TUESDAY mark. There have been other attempts to register TACO TUESDAY derivative marks for dinnerware and clothing which have been blocked by Taco John’s and in 1995, it agreed to concurrent use with a restaurant in New Jersey, Gregory Hotel Inc., after the hotel claimed prior use dating back to 1979. In 1997 and 1998, Steve Levinson d/b/a Tortilla Flats Restaurants petitioned to cancel TACO TUESDAY, and while the action was ultimately dismissed by the TTAB, it is fair to assume Mr Levinson thought it unfair that he was being barred from using the phrase at his restaurant. Since that time, it’s been relatively quiet on the TTAB front – until now.
On May 16, 2023 (notably a Tuesday), Taco Bell filed its petition with the USPTO to cancel the registrations for TACO TUESDAY. The better-known competitor has apparently grown tired of the supposed “injustice” and claims they “must be able to promote their goods and services using the generic, informational term ‘Taco Tuesday’ to compete effectively in the marketplace” and that by preventing said use, “the Registration [of ‘Taco Tuesday’] is a source of damage to [them] and others in the food industry.”
Specifically, Taco Bell has made two claims within its pleadings as to why Taco John’s should lose their golden mark, both relying on 15 U.S.C § 1064(3). Taco Bell first argues that TACO TUESDAY has become generic for restaurant services. Taco Bell’s second claim is that the mark has been abandoned as a result of Taco John’s conduct.
This concept of genericide is nothing new and refers to the gradual process of a trademarked term becoming generic through use by the common individual. Genericide has served as a basis for cancellation of many once-popular trademarks such as Aspirin and Escalator. The facts are less than ideal for Taco John’s on this point. Taco Bell included ample evidence of third-party use of “Taco Tuesday,” cited a survey which allegedly “reveals that 86% of consumers nationwide believe that ‘Taco Tuesday’ is a common name not associated with any particular company,” as well as an opinion from the TTAB which states that “‘Taco Tuesday’ is a very commonplace term that refers to having tacos and drinks on that particular day of the week.”
Facing those facts, the prior conduct of Taco John’s in policing its mark will be a pivotal data point. In a 2016 interview, Taco John’s marketing executive Billie Jo Waara said that “over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies” and that “we also recognize that the unauthorized use [of ‘Taco Tuesday’] is prolific, and we do our best to communicate ownership.”
Only time will tell whether Taco John’s enforcement efforts will be deemed sufficient to stop the viral nature of Taco Tuesday and maintain its registration. Given that tacos are essentially a food group of their own in households across America, I suspect many restaurateurs will be anxiously awaiting the outcome of this proceeding so they can revamp their Tuesday menus.
Written by Melissa Gray, Partner, Klemchuk PLLC.
