Taco Bell has launched a campaign to “liberate” the Taco Tuesday trademark and cancel two trademarks registered with the U.S. Patent and Trademark Office (“USPTO”). On May 16, 2023, Taco Bell filed petitions to cancel the TACO TUESDAY registrations held by Spicy Seasonings, LLC and Gregory Hotel, Inc.
Taco Bell argues that the term TACO TUESDAY is a common phrase which has become generic and thus subject to cancellation. According to Taco Bell:
“Taco Tuesday” should belong to all who make, sell, eat and celebrate tacos. In fact, the very essence of “Taco Tuesday” is to celebrate the commonality amongst people of all walks of life who come together every week to celebrate something as simple, yet culturally phenomenal, as the taco. How can anyone Live Más if they’re not allowed to freely say “Taco Tuesday?” It’s pure chaos.
History of the TACO TUESDAY Trademark
Both Spicy Seasonings, LLC, which owns and operates the Taco John’s restaurant franchise, and Gregory Hotel, Inc.. have owned their respective federal trademark registrations for TACO TUESDAY term since 1989.
Taco John’s was the first to file its trademark application and receive a registration, but a concurrent use proceeding brought forth by Gregory Hotel successfully limited Taco John’s registration to “the area comprising the entire United States, except for the state of New Jersey. Concurrent use proceeding No. 972 with serial no. 73/816,022.” The Gregory Hotel registration, on the other hand, is “limited to the area comprising the State of New Jersey.”
What is a Concurrent Use Registration?
A concurrent use trademark registration is a situation where two or more parties are granted trademark registrations for similar or identical marks in relation to similar goods and services. In these types of situations, the trademark owners agree to use their marks in specific geographical areas or in different market segments without creating confusion or infringing on each other’s rights.
Is TACO TUESDAY a Generic Term?
Taco Bell’s argument is centered around the concept that the term TACO TUESDAY has become a generic term. A trademark runs the risk of becoming “genericized” when the mark becomes the generic name for the goods or services it is associated with. In other words, once generic, a trademark no longer functions as a source identifier of the brand owner.
In its petitions, Taco Bell brings up the following points to make its argument:
- The term TACO TUESDAY 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 TUESDAY “is an informational message conveying the ordinary and familiar concept or custom of consuming tacos and related products on Tuesdays, and it is used widely by the public and by merchants to convey that concept or custom.”
- There are examples of the Trademark Trial and Appeal Board (TTAB) having found that TACO TUESDAY is a “very commonplace term that refers to having tacos and drinks on that particular day of the week.”
- Because of the widespread use of the term, the public “does no use or understand the term as a source identifier.”
- A survey commissioned by Taco Bell found that 86% of consumers nationwide believe that TACO TUESDAY is a common name and not associated with any particular company.
Why Can’t Generic Words Function as Trademarks?
Generic terms cannot be registered trademarks because the general public would not be able to associate them with one specific company or brand. Granting a trademark a generic term would also prohibit others from defining and identifying particular products or services. This would result in the trademark owner having a significant advantage over its competitors. For example, if the generic term RESTAURANT was granted to a restaurant owner as a registered trademark, no other restaurant would be able to use the term in its name. There aren’t many alternatives to describe a restaurant and such a registration would be crippling to others when marketing their establishments.
It will be interesting to see how this one shakes out, especially with how Taco Bell has essentially launched a marketing campaign around the entire cancellation proceeding. Answers to the petitions are due by June 25, 2023 and this post will be updated as this progresses.
