Monday Night Ventures LLC, a small Atlanta-based brewery that does business under the name Monday Night Brewing, applied to register the mark TACO TUESDAY for its Mexican-style lager, which is sold on tap as well as in cans.
The US Patent and Trademark Office (PTO) 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.
To be protectable, a trademark must be “distinctive.” This means it must be used to identify the source of the product or service.
Courts classify marks into categories of distinctiveness. The most distinctive marks are those that are arbitrary or fanciful. Examples include EXXON for gasoline and APPLE for electronics.
Suggestive marks, those that require some imagination to determine the nature of the goods or services, are also protectable. An example is MUSTANG for fast cars.
A descriptive mark receives trademark protection only if the mark’s owner can prove that the mark has acquired “secondary meaning” in the minds of the relevant public. In other words, consumers must associate the mark with a unique source and think of the term as a brand name rather than as a description.
For example, TV GUIDE is descriptive of a guide to TV programs, but because of its extensive advertising, promotion and public recognition, this mark has achieved secondary meaning and is protectable.
A generic term is the name for a general class of product or service. Take, for example, a shoe manufacturer with a line of sandals branded as SANDALS. When consumers see that term, they’ll think of open shoes with straps from any manufacturer, not just your brand. Generic terms receive no trademark protection.
At first glance, it would appear that there’s no problem using TACO TUESDAY as a trademark for beer since when you see or hear “Taco Tuesday,” you likely don’t immediately think of beer.
Monday Night Ventures appealed the trademark examiner’s ruling to the Trademark Trial and Appeal Board (TTAB), arguing that because the common use of “Taco Tuesday” to mean eating tacos on Tuesdays doesn’t involve beer, its mark is valid.
The PTO’s examining attorney, however, provided evidence showing that “Taco Tuesday” is a phrase often used in connection with beer at breweries and restaurants.
In fact, several other breweries sell beers under the name “Taco Tuesday,” and “Taco Tuesday” events hosted by restaurants, bars, and the like often involve beer specials.
After reviewing all of the evidence, the TTAB held that “the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning distinguishing the goods and services from similar goods and services of others.”
That is, the phrase “Taco Tuesday” is, according to the TTAB, “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 consumers don’t perceive the alleged mark 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 or service maker and, for that reason, cannot be registered.
According to the PTO’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 decision 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.
Photo by BENCE BOROS on Unsplash
