Once in a while, terms that once functioned as trademarks are so widely used by the public that they lose their trademark status and become generic. At one time, aspirin, escalator, thermos, yoyo and laundromat were all federally registered trademarks. Their owners did not properly enforce these brands, and they became so common that they turned into nouns.
In order to avoid genericide, some brands mount campaigns to advise the public how to use their trademarks properly. For example, in 2017, Velcro released a very funny video imploring people not to misuse the VELCRO trademark. Johnson & Johnson reminds us in commercials and on packaging that their products are Band-Aid brand adhesive bandages, not “Band-Aids.”
Last week, the fast food chain Taco Bell commenced a proceeding asking the United States Trademark Office to cancel the trademark registration for TACO TUESDAY, owned by a competing chain, Taco John’s, since 1989.
In its humorous petition to cancel, Taco Bell’s lawyers wrote:
People like tacos on Tuesdays. They just do. It’s even fun to say: “Taco Tuesday.” Tacos have the unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week. But since 1989, entities associated with Registrant have owned a federal trademark registration for “Taco Tuesday.” Not cool.
Because of the Registration, Registrant is the only restaurant that has the presumptive right to use “Taco Tuesday.” That’s not right.
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. This violates an American ideal: “the pursuit of happiness.”
“Taco Tuesday” is a common phrase. 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 isn’t the only party with an interest in Taco Tuesday.
In 2019, NBA legend LeBron James posted videos of his family’s taco nights on his Instagram, paired with the hashtag #TacoTuesdays. His videos became so popular that he attempted to monetize the moment and filed applications to register TACO TUESDAY as a trademark for several different categories of services. The Trademark Office rejected James’ application, finding that TACO TUESDAY was a commonplace term widely used by various sources that merely conveys a well-recognized concept. The Trademark Office observed that many restaurants and news outlets use the phrase “to express enthusiasm for tacos,” and James couldn’t appropriate it for himself.
While that may sound like a defeat for James, his spokesperson said at least the ruling would protect those “from using ‘Taco Tuesday’ for business reasons.”
Taco Bell decided to capitalize on James’ loss. Seizing on the idea that Taco Tuesday is a commonplace phrase, Taco Bell’s petition to cancel observed that the marketplace is “awash with use of the term ‘Taco Tuesday’ for ‘Taco Tuesday’ events and specials.” Taco Bell argued that Taco John’s failure or inability to police the mark adequately caused it to become generic and lose its significance as a trademark.
Importantly, Taco Bell is not seeking the exclusive right to use TACO TUESDAY for itself. Instead, it wants the mark to be genericized and available for everyone to use without the threat of litigation by Taco John.
Taco John’s has until June 25, 2023, to respond to Taco Bell’s petition. If the case doesn’t settle, there will be discovery and potentially a spicy trial. In the meantime, Taco Bell teamed up with LeBron James and launched a video called “Taco Bleep” to drum up public support and liberate Taco Tuesday.
***
Brand owners often invest in trademark applications and think their work is done. That’s not true. In order to maintain the value of a trademark, it is incumbent on brand owners to prevent unauthorized third-party use. If not properly enforced, a trademark may become diluted and lose its distinctive value. In extreme (and rare) cases, it’s possible for a trademark to become generic.
Given the popularity and widespread use of TACO TUESDAY, it seems that Taco John’s might be on the losing side of this battle. Time will tell. Until then, enjoy some tacos on a Tuesday. Just don’t use TACO TUESDAY in an ad for your restaurant.
