Taco Bell’s Taco Tuesday Fight

By Bill Honaker, The IP Guy

Taco Bell is trying to cancel the trademark registration for the phrase, “Taco Tuesday.” A competitor, Taco John’s, registered “Taco Tuesday” as a trademark with the United States Trademark Office on December 19, 1989.  Cision PR reported that Taco Bell’s Chief Marketing Officer, Taylor Montgomery stated:

“Our passion for liberating ‘Taco Tuesday’ is fueled by the community of taco enthusiasts who turned two simple words into a cultural phenomenon. To see the support and excitement in response to our efforts to free ‘Taco Tuesday’ for everyone is not something we take lightly. And, much like Taco Tuesday itself, it’s better when shared.”

CIsion PR also reported that Lebron James supports the effort. Lebron James stated:

“‘Taco Tuesday’ is a tradition that everyone should be able to celebrate. All restaurants, all families, all businesses – everybody, Taco Tuesdays create opportunities that bring people together in so many ways, and it’s a celebration that nobody should own.”

In a Taco John’s press release, CEO Jim Creel said, “I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday® is best celebrated at Taco John’s®. … When it comes right down to it, we’re lovers, not fighters, at Taco John’s®,” continued Creel. “But when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”

This fight provides important reminders to trademark owners.

  1. Trademarks are valuable and should be registered. Why else would Taco Bell care? Taco Bell wants to use Taco Tuesday without being concerned about litigation. One of the most important rights that registration provides is the ability for a trademark to become incontestable. Since Taco Tuesday® is incontestable, they have a valuable position in litigation. If a trademark becomes incontestable the registration is: 
    1. conclusive evidence of the validity of the registered mark and its registration, 
    2. of the registrant’s ownership of the mark, and 
    3. of the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions which can be found here.
  2. Trademarks can be lost through improper use. This is Taco Bell’s argument. They believe Taco Tuesday® has become generic. This means that the trademark has lost its right to act as a trademark. It has become a common term for a common thing and can no longer identify a single source for products or services. This has happened to many famous trademarks. Once famous trademarks like laundromat, cellophane, linoleum, and trampoline have all been lost because they became generic. Wikipedia provides a list of other marks that have become generic.
  3. To avoid your trademark becoming generic, use it always as an adjective, never a verb or noun. If there is a chance that your mark is susceptible to becoming generic, notices to the public that you own the trademark, and that it must be used as an adjective, can help to avoid this problem. Lego® is presently in such a campaign to avoid losing their valuable trademark for bricks. Among other warnings, Lego’s Fair Play legal warning states: 

“If the LEGO trademark is used at all, it should always be used as an adjective, not as a noun. For example, say, “MODELS BUILT OF LEGO BRICKS”. Never say “MODELS BUILT OF LEGOs”. Also, the trademark should appear in the same typeface as the surrounding text and should not be isolated or set apart from the surrounding text. In other words, the trademarks should not be emphasized or highlighted. Finally, the LEGO trademark should always appear with a ® symbol each time it is used.”

Trademarks can be canceled for a variety of reasons, one of which is that the mark has become generic. The United States Trademark Office has a procedure for canceling trademark registrations. 

The Takeaway

Your trademark is one of your most valuable assets. To protect it, register it with the USPTO. After five years of use, file an affidavit to elevate the mark to incontestable status. And always use your trademark as an adjective, never a verb or a noun.

 

Bill Honaker, The IP Guy

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

To get answers to your questions click here. To schedule a time to talk, you can access my calendar by clicking here, email Bill @IPGuy.com or call me at 248-433-7381.

 

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