TACO TUESDAYS: The story of a now-defunct trademark and the risk of trademarks becoming so general with time that they can no longer be protected.
TACO TUESDAYS as a Registered Trademark
Since 1979, Taco John’s (a regional taco chain based in Wyoming) has used TACO TUESDAYS to promote their restaurant. In 1989, Taco John’s successfully registered the trademark TACO TUESDAYS for restaurant services outside of New Jersey, since a New Jersey restaurant, Gregory’s, had shown earlier use particular to that state. Indeed, Gregory’s was not the only business to use TACO TUESDAYS prior to Taco John’s, with other uses dating back decades, but none asserted a claim against Taco John’s use or registration.
Enforcement Efforts by Taco John’s
Since registering the mark, Taco John’s has regularly sought to enforce it against other restaurants, a few apparel companies, and a dinnerware manufacturer that was using the mark in connection with a plate with divots for tacos. These attempts have long been derided, with restaurants that found themselves in Taco John’s crosshairs instead calling their weekly promotions “Trademark Tyrant Taco Day” or “Totally Renamed Tuesday.” Despite their efforts, the term has seen broader and broader use with no connection to Taco John’s, including on school lunch menus, at restaurants and bars around the country, and in The Lego Movie. Notably, LeBron James began posting about his family’s taco nights using the tag #TacoTuesday, and received such a response that he sought to register it himself (through his company LBJ Trademarks, LLC) for online and marketing services and downloadable audiovisual material – in response to which, the United States Patent and Trademark Office (“USPTO”) refused the application as a “Commonplace Message,” citing multiple websites and newspaper articles using it for taco events with no connection to Taco John’s.
It has long been apparent that Taco John’s was facing “genericide,” the loss of a trademark that’s become generic. Other marks that have faced this fate include DUMPSTER, DRY ICE, ESCALATOR, LINOLEUM, and TRAMPOLINE, while the owners of XEROX, VELCRO, JELL-O, and BUBBLE WRAP keep up the fight to protect their exclusive rights. But TACO TUESDAY stayed on the register, and Taco John’s continued to come after restaurants that publicized TACO TUESDAY deals or events.
Taco Bell and “Liberation”
In the past, Taco John’s targets have acquiesced to its demands to cease use. This May, Taco Bell, the largest taco restaurant in the U.S., took action, filing a Petition to Cancel Taco John’s TACO TUESDAY registration, combining it with a press release and social media campaign claiming it was fighting to “liberate” TACO TUESDAY. Taco Bell did not claim it had earlier rights or that Taco John’s couldn’t continue to use TACO TUESDAY, only that the mark was generic (i.e. for tacos sold on Tuesdays), and that as a now-common phrase, it should not be registered by one party. Notably, Taco Bell’s petition is considerably more humorous than the usual, calling Taco John’s enforcement “[n]ot cool” and its monopolization of the mark “like depriving the world of sunshine itself.” It was not just a PR stunt, however, as it also set forth Taco Bell’s grounds for cancellation.
Taco John’s owners did enter an answer to the petition in June, but on July 18, 2023 (notably, a Tuesday), Taco John’s surrendered their registration for cancellation, making their own press release characterizing it as a move “to share TACO TUESDAY,” and calling on Taco Bell, other taco restaurants, and LeBron James to donate to a charity for restaurant workers. This was likely a wise move, as contesting the cancellation proceeding beyond this point would likely have been more costly than any benefit of its exclusive (in reality, semi-exclusive at best) use of TACO TUESDAY, and a continuing PR issue for Taco John’s.
For restaurants, choosing common phrases, keywords, or mottos for your trademarked brand can turn into a PR issue down the road, as illustrated by the now infamous phrase “TACO TUESDAY.” It’s important to know what is required to protect your trademarks for your business or product, to effectively protect your intellectual property.