This past spring, we notified you about a case involving a brewery that applied to register the mark TACO TUESDAY for its Mexican-style lager.
The US Patent and Trademark Office (USPTO) and then, on appeal, the Trademark Trial and Appeal Board (TTAB) refused registration of the mark on the grounds that “Taco Tuesday” is a widely used message and, as such, can’t function as a trademark.
Now, thanks in part to Taco Bell, “Taco Tuesday” is free for all restaurants to use (at least in 49 states.*)
In May, Taco Bell filed a proceeding with the TTAB, asking it to cancel Taco John’s federal trademark registration for TACO TUESDAY.
Citing the brewery decision, Taco Bell argued that the term “Taco Tuesday” is generic when used in connection with restaurants because it is “used ubiquitously by restaurants throughout the United States in a generic and informational manner to promote the sale and/or consumption of tacos and related products on Tuesdays.”
Not content merely to file its petition with the TTAB, Taco Bell also asked taco lovers to sign its Freeing Taco Tuesday petition at change.org.
This week, Taco John agreed to abandon its registration, stating that, “We’ve always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do.”
Taco Bell has announced that “Taco John’s decision to join the movement and liberate Taco Tuesday means countless businesses big and small, restaurants and taco vendors can now embrace, celebrate and champion ‘Taco Tuesdays’ freely.”
As we mentioned back in March, the TTAB held that the phrase “Taco Tuesday” is “merely informational.”
A proposed mark is “merely informational” when, “based on the nature and context of its use by the applicant and others in the marketplace, consumers would perceive it as merely conveying information about the goods/services or an informational message.”
Because, according to the TTAB, consumers don’t perceive “Taco Tuesday” as a source indicator (a means to identify and distinguish the applicant’s goods/services from others), it fails to perform the function of a trademark.
Pursuant to the USPTO’s guidelines, the “more commonly a term or expression is used in everyday speech, the less likely the public will use it to identify only one source and the less likely the term or expression will be recognized by purchasers as a trademark or service mark for any goods/services.”
Taco Bell’s successful “liberation” of “Taco Tuesday” is a good reminder of the importance of choosing a good trademark after a properly conducted search.
Please feel free to contact us if you have any questions about or need help with choosing, protecting, or enforcing your trademarks.
*Why only 49? In New Jersey, the mark is owned by Gregory’s Restaurant & Bar. One of the restaurant’s owners has stated that Gregory’s has no plans to abandon its mark.
Photo by Jeswin Thomas on Unsplash
