Taco Tuesday
This past July, we notified you that, as a result of Taco Bell filing a proceeding with the Trademark Trial and Appeal Board (TTAB) requesting cancelation of Taco John’s federal trademark registration for TACO TUESDAY, Taco John’s agreed to abandon its mark. This meant that the term “Taco Tuesday” became free to use by restaurants in 49 states.
Taco Bell’s filing was prompted by a case involving a brewery that had applied to register the mark TACO TUESDAY for its Mexican-style lager. The US Patent and Trademark Office and then, on appeal, the 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.
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.”
Taco John’s voluntary abandonment of its trademark left one state, New Jersey, where restaurants could not use the “Taco Tuesday” phrase without fearing a trademark-infringement lawsuit. That’s because the mark was owned by Gregory’s Restaurant & Bar in Somers Point, New Jersey.
Although in July one of the restaurant’s owners said that Gregory’s had no plans to abandon its mark, it did so late last month.
“For Gregory’s Restaurant and Bar, ‘Taco Tuesday’ brought a lot of pride over the past 40 years,” said co-owner Gregory Gregory. “Relinquishing the trademark registration doesn’t change that, but it does allow others in New Jersey the same opportunity to build their own traditions and help spread Taco Tuesdays throughout New Jersey.”
How the TTAB Ruling on “Taco Tuesday” Might Affect Your Trademarks
In the lager case, 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.”
This is a good reminder of the importance of choosing a good trademark after a properly conducted search. You’ll want your lawyer to check to see not only if someone else has the mark you want, but whether the proposed mark is likely to be considered informational or unprotectable for other reasons.
Please feel free to contact us if you have any questions about or need help with choosing, protecting, or enforcing your trademarks.
Photo by Jeswin Thomas on Unsplash
