‘Taco Tuesday’ should be for everyone, Taco Bell insists

By Tony Poland, LegalMatters Staff • Taco Bell has thrown down the legal gauntlet in a public-relations-driven battle for “Taco Tuesday,” says Toronto intellectual property lawyer John Simpson.

The restaurant giant recently filed a petition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to invalidate Taco John’s “Taco Tuesday” trademark. 

Taco Bell insists the commonly used phrase “should be freely available to all who make, sell, eat and celebrate tacos,” CNN reported.

The filing stated that the use of the phrase “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 [Taco John’s] – simply for pursuing happiness on a Tuesday,” according to the news agency.

Simpson, principal of IP boutique Shift Law Professional Corporation, called the filing “a preemptive strike.”

Can no longer be considered a trademark

“One interesting aspect of the case is that it is not a trademark owner seeking to enforce its rights, but a prospective infringer who is seeking to cancel those rights. However, it is really much ado about nothing in terms of legal consequences,” he tells LegalMattersCanada.ca. “For all intents and purposes, ‘Taco Tuesday’ can no longer be considered a trademark. It is just a term, a promotional term.

“This seems to be a coordinated public relations effort with Taco Bell telling consumers, ‘Look at this company attempting to assert exclusive rights to something fun such as Taco Tuesday,’” adds Simpson, who is not involved in the case but comments generally. “Taco Bell wants to generate some goodwill and make Taco John’s look like Scrooge because they are claiming exclusive ownership over a fun phrase.”

A Taco John’s franchise owner from Minnesota termed the phrase “Taco Twosday” in the early 1980s to increase sales on the slowest day of the week, CNN reports. The phrase caught on and was shared by other franchisees with the chain later winning a trademark for the term “Taco Tuesday.”

“Taco John’s came up with this fun promotion and it may have been distinctive of them at the time,”  Simpson says. “But then all sorts of restaurants started having Taco Tuesdays. It now appears Taco Bell has decided enough is enough, today is the day we are going to actually have this battle and we are going to invalidate your trademark.” 

Over the years, Taco John’s has attempted to enforce its alleged rights in Taco Tuesday against restaurants of all sizes, it was reported.

Simpson notes that trademark rights “exist only to the extent that they are successfully enforced.”

Can become generic

If the owner of a trademark does not do a good job of policing its rights, an argument can be made that it has become generic, he says.

“If a slogan or phrase becomes too commonly known it no longer functions as a trademark,” Simpson explains. “This is referred to as genericide. As soon as others start using it descriptively or commonly you no longer have any rights. The trademark only works if it is distinctive of one trade source.

“It becomes death by a thousand cuts,” he adds. “A trademark owner has lost the battle when that happens.”

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Reportedly, it could take two years before a decision is issued. In the meantime, Simpson says Taco Bell will likely conduct a survey to determine if the public associates the term “Taco Tuesday” with Taco John’s.

“I think everyone knows what the survey will say,” he says. “And it will be a death knell for the trademark registration, which is Taco Bell’s objective.

“Just about every taco joint at some point thought it would be fun to have a Taco Tuesday promotion,” Simpson adds “At that point it becomes pretty difficult, if not impossible, to claim that the average customer associates Taco Tuesday exclusively with Taco John’s.”

He says he finds it “interesting that a big company such as Taco Bell with its own portfolio of trademarks is calling out another trademark owner about its enforcement.”

‘It might backfire at some point’

“It is sort of unusual and surprising and who knows, it might backfire at some point when Taco Bell tries to enforce its trademark rights against someone else,” says Simpson. “They are calling Taco John’s a trademark bully and that is sort of unusual for someone who has many of its own trademarks.”

Taco Bell is basically positioning itself in the media as fighting on behalf of any restaurant that wants to have Taco Tuesday, he says.

“They are telling Taco John’s to have a little sense of fun and stop preventing other people from making Tuesdays fun. In that sense it is a marketing stunt,” says Simpson. “What makes this somewhat interesting to me is that Taco Bell appears to be using a legal proceeding in conjunction with a marketing campaign.

 “They are trying to show that Taco John’s trademark registration for Taco Tuesday is not only legally indefensible, but they are calling their competitor out for stopping others from using the term, he adds. “Of course, they are likely hoping this will help them sell more tacos. That’s the bottom line.”