Almost everyone has probably heard of “Taco Tuesday.” Ads, local restaurants, celebrities—they use this popular slogan to refer to the idea that it is fun to eat tacos on Tuesdays. But although this phrase is used by many, two restaurant companies actually own TACO TUESDAY trademark registrations that they can assert as conclusive evidence of their exclusive rights to use the slogan and enforce those rights against anyone who tries to use the mark. Taco Bell is seeking to change that.
On May 16, 2023, Taco Bell filed petitions, available here and here, with the Trademark Trial and Appeal Board (TTAB) at the United States Patent and Trademark Office to cancel two trademark registrations for “TACO TUESDAY” currently owned by the Wyoming-based Taco John’s franchise and Gregory Hotel, a restaurant and bar in New Jersey. Taco John’s registered the mark in 1989, and Gregory Hotel registered the mark for concurrent use in New Jersey in 2009 based on its common law use dating back to 1979. Taco John’s is reportedly notorious for sending cease-and-desist letters to those who use the mark.
According to Taco Bell’s website, the popular fast-food chain is seeking to “liberate” the popular phrase because TACO TUESDAY “should belong to all who make, sell, eat, and celebrate tacos.”
Taco Bell is arguing that TACO TUESDAY is a common phrase and therefore is a generic mark. A generic mark is a common phrase that describes a class of goods or services rather than a specific mark and is therefore not entitled to protections as a trademark. The Lanham Act, which governs U.S. trademark law, allows a third party to petition to cancel a trademark registration when it “becomes the generic name for the goods or services, or a portion thereof, for which it is registered.” 15 U.S.C. § 1064. In their petition against Spicy Seasonings LLC, Taco John’s parent company, Taco Bell argues that TACO TUESDAY is “used ubiquitously by restaurants throughout the United States in a generic and informational manner to promote the sale and/or consumption of tacos and related products on Tuesdays.”
Some may recall that Lebron James previously tried to register the phrase “Taco Tuesday” in 2019. However, the U.S. Trademark Office refused the application on the basis that the phrase is “a commonplace term, message, or expression.” The trademark office also previously refused an application to register TACO TUESDAY as a trademark for beer in 2020 and affirmed the refusal on appeal, stating in a non-precedential decision that “Taco Tuesday is a very commonplace term that refers to having tacos and drinks on that particular day of the week.’” In re Monday Night Ventures LLC, Ser. No. 88817107 (TTAB, Nov. 28, 2022), at 21. After reviewing the evidence of widespread third-party uses, the TTAB determined that the phrase fails to function as a mark pursuant to Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051-52 and 1127. Id. at 23.
Despite these prior determinations by the Trademark Office, Taco John’s appears ready to fight to hold onto its trademark registration. In response to Taco Bell’s petition, Taco John’s launched a “Taco Tuesday” promotion selling two tacos for $2. Taco John’s CEO Jim Creel stated: “I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s.” Their press release further said that “when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”
Taco Bell stated in their petitions that they are not seeking damages (which are not available in proceedings filed before the TTAB), only “reason and common sense.” Taco John’s and Gregory Hotel have 40 days to file a response.
