The TACO TUESDAY Trademark Tiff Reminds Us that Genericide is Real
“Whether they are successful before the TTAB or not (and I believe they will be), Taco Bell has won.”
Taco Bell is on the short list as one of my guilty (or not-so-guilty) pleasures. So, when the popular restaurant chain filed a cancellation action against the TACO TUESDAY trademark, I knew I had to write a piece about it.
On May 16, 2023, Taco Bell filed a Petition for Cancellation of the trademark for TACO TUESDAY, which was registered by Spicy Seasonings, LLC in 1989 for “restaurant services. Spicy Seasonings operates the Taco John’s restaurant franchise. As you can see on their website, they claim to have coined the phrase:
Over the years, they have also enforced attempts by others to use the name. That said, the quickest way to lose your trademark rights is to allow others to use it in a generic fashion (i.e., not in reference to your brand). Generic names are not protectable. For example, Starbucks cannot claim any rights to the word “coffee” even though it is part of their trademark for “STARBUCKS COFFEE.” In much the same way, a once-protected trademark can lose its rights if its once-distinctive trademark becomes the commonly used and understood word for a certain type of good or service, in general, and not in reference to any one particular product or manufacturer—otherwise known as “genericide.” Examples of trademarks that have been genericized include: aspirin, escalator, flip phone, heroin, laundromat, and videotape – each of which was, at some point, a registered trademark.
Enter, Taco Bell. Taco Bell decided it had enough of Taco John’s claimed exclusive ownership of the TACO TUESDAY trademark, so it filed a Petition for Cancellation before the Trademark Trial and Appeal Board (TTAB). The basis for any cancellation can be divided into two categories: 1) those that can only be brought within the first five years of a trademark’s registration; and 2) those that can be brought at any time. During the first five years of registration, cancellation is commonly brought based on a wide variety of claims, including likelihood of confusion or dilution. Many of these claims are no longer available after this period, but certain claims persist – claims of abandonment, fraud, and notably, that the trademark has become generic.
Not Cool
Taco Bell’s Petition is fun—dare I say funny—in a way most legal pleadings are not. So funny that I am compelled to include the petition’s Preface:
- 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.
- This Petition is brought because Taco Bell believes that tacos, just like the joy they bring, belong to everyone on any day. Ergo, “Taco Tuesday” should belong to everyone.
- Taco Bell believes “Taco Tuesday” is critical to everyone’s Tuesday. To deprive anyone of saying “Taco Tuesday”—be it Taco Bell or anyone who provides tacos to the world— is like depriving the world of sunshine itself.
- Taco Bell supports everyone’s right to celebrate, and say, “Taco Tuesday,” no matter who they are. How can we tell our fans to Live Más if their favorite taco joints aren’t even allowed to freely say “Taco Tuesday”? Anything else is menos.
- Taco Bell seeks no damages; it simply seeks reason and common sense.
- If one of us is not free to celebrate “Taco Tuesday,” then none of us are free to celebrate “Taco Tuesday.” A win for Taco Bell here is a win for all. When tacos win, we all win.
I cannot emphasize this enough; this is not standard for cancellation proceedings. A number of trademark colleagues went back and forth via email as to whether the use of “not cool” was “embarrassing,” “hilarious,” “fun,” or simply “playing to the press.” Either way, it received a lot of press.
Don’t Bleep LeBron
Apparently though, Taco Bell had another trick up its sleeve. Enter: LeBron James. As you can see from this now three-year-old video, King James is quite the fan of Taco Tuesday. In fact, he regularly posts about Taco Tuesday on his social media accounts. He loves Taco Tuesday so much, he applied for a trademark registration in 2019 for advertising and marketing services, podcasting services, and entertainment services. His application, however, was refused by the U.S. Patent and Trademark Office (USPTO) because “the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” If LeBron is not allowed to register Taco Tuesday because it is so commonplace, why should Taco John’s be allowed to?
On May 23, 2023, Taco Bell released an absolutely hilarious commercial starring the athlete turned entertainer and businessman in which he is bleeped each time he attempts to use the phrase “Taco ****”. The story, which was already widely covered, has now exploded. This is the power of celebrity. Whether they are successful before the TTAB or not (and I believe they will be), Taco Bell has won.
Taco Tuesdays are for Everyone
While it is clear Taco Bell is going to milk these proceedings for all they are worth, they are not wrong. While the phrase may have been unique in 1989, it no longer serves as a “source identifier.” Most people do not think about Taco John’s when they hear it. It is simply a common phrase used by all. And with that, I join in the chorus and wish you all a joyous TACO TUESSSDAAAAYYY!
Heather Antoine
Heather Antoine is a Partner and Chair of Stubbs Alderton & Markiles LLP’s Trademark & Brand Protection and Privacy & Data Security practices, where she protects her client’s intellectual property […see more]
