Details of the case
In its petition of May 16, 2023, Taco Bell seeks to cancel Registration No. 1572589 for the word mark TACO TUESDAY, owned by Taco John’s. Taco Bell seeks no damages or trademark rights in Taco Tuesday. According to the petition, "It simply seeks common sense for usage of a common term. In filing the legal petitions, Taco Bell is honoring people's right to come together and celebrate the joys of tacos, on Tuesdays and every other day."
The phrase "Taco Tuesday" is a common expression used to promote the idea of enjoying tacos on a Tuesday. However, the trademark for "Taco Tuesday" is currently owned by a company called Taco John's International, a fast-food restaurant chain that specializes in Mexican-inspired food. It was founded in 1969 by John Turner in Cheyenne, Wyoming, USA. The company primarily operates in the United States, with over 380 locations across 23 states.
In the early 1980s, Taco John's successfully obtained a trademark for the term "Taco Tuesday." This means that they have exclusive rights to use the phrase for promotional and advertising purposes within the United States. They utilize the trademark by incorporating "Taco Tuesday" into their marketing campaigns and promotions. They often highlight special deals and discounts on Tuesdays to encourage customers to visit their restaurants.
Trademarks for generic phrases
In general, generic terms are words or phrases that describe the common name or category of a product or service, and they cannot be monopolized by any single entity. This is because granting exclusive rights to generic terms could unduly restrict competition and hinder free use of the language.
While Taco John's International owns a trademark for "Taco Tuesday" in the United States, it is important to understand the specific scope and limitations of the trademark. In the case of Taco John's, they were able to secure the trademark by demonstrating that they had established a secondary meaning and association between the phrase and their brand through consistent and extensive use in their advertising and promotions. This means that Taco John's has exclusive rights to use the term "Taco Tuesday" in the context of promoting and advertising their restaurant services.
However, it is crucial to note that trademark protection is not absolute, and there are limitations on how far it extends. Trademarks are generally granted within specific categories or industries, and they can coexist with other trademarks for similar terms or phrases as long as they are not likely to cause confusion among consumers. Additionally, the ownership of a trademark does not prohibit the general public from using the phrase in everyday conversation or in a descriptive manner.
