NPR (“Taco John’s trademarked ‘Taco Tuesday’ in 1989. Now Taco Bell is fighting it“):
It’s a battle between taco chain restaurants.
Taco John’s, which has about 400 locations in 23 states, trademarked “Taco Tuesday” back in 1989.
Now, Taco Bell argues it should be able to get in on using the popular phrase – with no legal ramifications. It filed a petition with the U.S. Patent and Trademark Office on Tuesday asking for the trademark to be reversed.
“The Registration potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from Registrant – simply for pursuing happiness on a Tuesday,” the company said in the filing. “This violates an American ideal: ‘the pursuit of happiness.’”
The company added: “Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say ‘what’s up’ or ‘brunch?’ Chaos.”
Taco Bell has more than 7,200 locations in the U.S. and about 1,000 restaurants across 30 countries internationally.
In response to the petition, Taco John’s rolled out a two-week long Taco Tuesday deal offering two tacos for $2.
CNN Business (“Taco Bell is fighting to cancel the ‘Taco Tuesday’ trademark“) sheds more useful light on the suit:
Since Taco John’s owns the trademark, other restaurants and companies must seek permission to use “Taco Tuesday” in branding and advertising.
[…]
Taco Bell added that “nobody should have exclusive rights in a common phrase.”
[…]
Although Taco Bell’s action sounds tongue-in-cheek, the company says it’s serious. And it may have a strong case, because “Taco Tuesday” has become a commonly used phrase, according to trademark attorney Josh Gerben.
“Taco Twosday” was coined by a Taco John’s restaurant owner in the early 1980s to increase sales with a 99-cents deal for two tacos on its slowest day of the week. It worked, and sales turned around at the restaurant so much that the owner shared it with other franchisee owners.
The name was tweaked to “Taco Tuesday” and the chain trademarked the phrase in 1989, making it part of its marketing. Since then, Taco John’s has defended its use of the phrase and sent cease-and-desist letters to others trying to use it.
“Over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies,” former Taco John’s marketing executive Billie Jo Waara said in a 2016 interview. “We also recognize that the unauthorized use [of Taco Tuesday] is prolific, and we do our best to communicate ownership.”
[…]
According to Gerben, Taco Bell has a “strong case” because US trademark law “prevents the registration of common phrases or phrases that become commonplace after a registration is granted.”
In this instance, the slogan “has become a cultural phenomenon with a long history of being used by individuals and companies other than the current owner of the trademark,” he told CNN.
Although Taco John’s invented the phrase, that may not be a strong enough defense, Gerben said. The “Taco Tuesday” phrase is “widely used by Americans in a way that has nothing to do with the defendant’s restaurant,” he added.
It’s a longstanding feature of American trademark law that marks can be “genericized” over time and no longer protected. When exactly that happens is a matter for the courts.
A 2019 NYT piece (“How a Brand Name Becomes Generic“) provides useful background:
When you need to blow your nose, there’s a good chance you ask for a Kleenex, even if the box being handed to you doesn’t bear the Kimberly-Clark-owned Kleenex logo. When you use a brand name as a generic term, you’re using a proprietary eponym, or, more simply, a generic trademark. You’re probably familiar with this phenomenon, but there are more examples of it than you might realize.
You may be aware of Kleenex, Velcro and ChapStick, but what about escalator? Or dumpster? Linoleum, zipper, trampoline? All of these are (or were) trademarks of companies whose products were so successful that they came to represent an entire category. And it can actually cause quite a problem for those companies.
“Over time, a brand can be so famous and so ubiquitous that people associate that with the action,” said Michael N. Cohen, an intellectual property lawyer in Los Angeles. “In everyday usage, people start using that term.”
You may think nothing of it when you ask for a Band-Aid to cover a cut or scrape. But a company like Johnson & Johnson, which makes the world’s most famous brand of adhesive bandages, might have reason to worry because — theoretically, anyway — that degree of easy familiarity could put it in jeopardy of losing its trademark.
“When something becomes so pervasive in everyday society as a result of its own fame, there’s an argument that it no longer represents the brand, it almost represents the action,” Mr. Cohen said. “So as a result of that, in trademark law, you cannot trademark things that are descriptive or generic in nature.”
Bayer Co. v. United Drug Co. was a seminal case in which Bayer lost its trademark for Aspirin to what experts now refer to as “genericide.” That 1921 case set the table for the modern standard that courts currently follow: If a brand name is understood by the public to refer broadly to a category of goods and services rather than a brand’s specific good or service, a company may be at risk of losing its trademark. Escalator, cellophane, and laundromat have all lost their trademark status to genericide.
There are still plenty of familiar names that hold their trademarks. Bubble Wrap is a trademark of Sealed Air, Frisbee remains a trademark of Wham-O, and Velcro is trademarked by the company of the same name. There are generic terms for all these products, but when was the last time you packed a box with inflated cushioning, tossed a flying disc or attached anything using hook-and-loop fasteners?
Some companies are fighting back against the generic use of their trademarks. For example, when you see a company using its brand as an adjective (“Use a Xerox copier”) rather than a verb (“Go Xerox this”), it is trying to prevent genericization. Companies may also avoid using the plural form of the trademarked word (favoring “Lego bricks,” for instance, over “Legos”). They may even use a distinctive typeface to make the trademark stand out.
As to “Taco Tuesday,” I can preach it either way. On the one hand, I had no idea before this morning that it was a proprietary phrase owned by Taco John’s. Indeed, despite there being nearly four hundred stores in 23 states, they were a Western and Midwestern franchise until quite recently and I don’t think I’ve ever encountered one of their outlets. On the other, unlike most of the lost trademarks, “Taco Tuesday” isn’t a generic name for a product and the company has worked diligently to protect its use by their competitors. Ironically, though, their claim would likely be even stronger if they’d stuck with “Taco Twosday,” which is more distinctive.
It seems perfectly reasonable that the chain should be able to enjoin other national taco chains from using the catchphrase, which they’re all surely aware is registered. They’re not, after all, trying to prevent anyone from selling tacos on Tuesday—which is surely a generic thing—but from using a registered mark to promote the practice.
At the same time, I would think the courts would frown on Taco John’s suing, say, school cafeterias or church groups for the use of the phrase to promote menus or events. Then again, I’m pretty sure they’re not doing that.
