A restaurant owner launches a challenge against a trademark registration of TACO TUESDAY. Even more restaurant competitors are up in arms about this previously unknown registration. Shouldn’t everyone be free to use “Taco Tuesday”?
If you think this is just about the high-profile battle pitched by Taco Bell against Taco John’s, you don’t know your TACO TUESDAY history.
Just as there are seemingly endless varieties of Taco Bell sauces, there is something for everyone in the past and present TACO TUESDAY sagas:
History:
In 1997, Steve Levinson, doing business as California restaurant Tortilla Flats, filed a petition for cancellation of Taco John’s registration of TACO TUESDAY, which was registered in 1989 and claims first use a decade before that.
Unfortunately, we do not know the tasty details of that case since the USPTO’s electronic files do not go back that far. Around the same time, an article in the Los Angeles Times reported that Levinson had sent cease and desist letters to eight California restaurants and eventually filed suit in federal court. The article quoted a waitress from one of the defendant restaurants as saying, “Give me a break. Everybody has Taco Tuesdays.”
That waitress’ sentiment is the exact one Taco Bell is now trying to convey in its petition to cancel filed in May 2023 against the very same Taco John’s registration, which covers restaurant services. The rather unorthodox “preface” to the cancellation seems to be closer to a social media post than a legal filing, with claims that the registration is “not cool” and “violates an American ideal: ‘the pursuit of happiness.’”
Concurrent use:
Taco Bell’s Petition states that “registrant is the only restaurant that has the presumptive right to use ‘Taco Tuesday.’” However, this is not quite the case. On the same day Taco Bell filed its petition to cancel the Taco John’s registration, it filed a petition to cancel a second TACO TUESDAY registration. This one is owned by Gregory Hotel of Somers Point, New Jersey, also covers restaurant services, was registered in 2009, and, like the Taco John’s registration, claims first use in 1979.
The Gregory Hotel registration “is limited to the area comprising the State of New Jersey,” while the Taco John’s registration covers “the entire United States, except for the state of New Jersey.” This means that Taco John and the Gregory Hotel likely agreed to coexist with geographic limitations on their use.
Genericism:
In each of its petitions to cancel, Taco Bell alleges the phrase TACO TUESDAY “is used ubiquitously by restaurants throughout the United States in a generic and informational manner.”
Proving that a registered trademark is generic is a fairly high bar. A generic term is one that is incapable of identifying a single source of goods and that customers would understand refers to a class or category of goods, like “aspirin” for pain relievers, a once registered mark that became generic.
Celebrity appeal:
Taco Bell recently announced that LeBron James “shares his support” and is starring in an ad supporting the “liberation” of TACO TUESDAY.
In 2019, James’ company LBJ Trademarks, LLC applied to register TACO TUESDAY for advertising and marketing, podcasting, and entertainment services. The application was refused in part on the basis of a registration for TECHNO TACO TUESDAY, as well as because “the wording Taco Tuesday is a ‘widely used message’ used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.”
Taco Bell will likely point to the USPTO’s own prior pronouncements on the informational nature of TACO TUESDAY as its petitions for cancellation go forward, as well as the history of other TACO TUESDAYs.
Taco Bell is living mas on the publicity generated by the case. Taco John’s also reports an uptick in sales. So, for now, the apparent frontrunner in the dispute is the humble taco, which is okay by us any day of the week.