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August 11, 2023 | LitigationNewsTrademark

Let’s TACO ‘Bout It: The Battle Over “Taco Tuesday”

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The “Beef” in question 

In a surprising turn of events, the trademark battle over the phrase “Taco Tuesday” has come to an end for one party involved.  Taco John’s, a fast-food taco chain, has finally relinquished its hold on the popular phrase, making it free for anyone to use.  The trademark had been registered to Taco John’s since 1989, except in New Jersey, where Gregory Hotel, Inc. holds the rights.

The battle to liberate “Taco Tuesday” began earlier this year when Taco Bell filed a petition for cancellation with the U.S. Patent and Trademark Office (USPTO), arguing that no one should have exclusive rights to such a common phrase.  Taco Bell contended that trademark ownership of this phrase was an improper attempt to monopolize the use of a generic expression in the restaurant industry.  Taco Bell asserted that “Taco Tuesday” should be freely available to all restaurants and taco vendors without fear of legal repercussions, and thus it petitioned to cancel the trademark without seeking damages.

Taco John’s and Gregory’s Restaurant & Bar opposed Taco Bell’s petitions to cancel their federal trademarks.  Taco Bell claimed that its effort was to “liberate” the phrase, but Taco John’s and Gregory’s countered that Taco Bell’s true motive is to promote its own tacos.  Both establishments denied Taco Bell’s claim that the phrase is generic and not eligible for trademark protection.  Taco John’s, holding the federal trademark for 34 years, argued that its trademark does not prevent others from selling tacos on Tuesday. 

How would Taco Bell succeed?

To successfully cancel a trademark, a party must file a petition to cancel under the Lanham Act, presenting a legal argument for the removal of the trademark from the federal register.  The process is usually handled by the Trademark Trial and Appeal Board (TTAB), but the dispute can also be litigated in federal court.  The petitioner must demonstrate that the existence of the trademark will cause harm, and it is not necessary to prove that damages have already occurred.  Specific grounds for cancellation include confusion with existing marks, prior usage of the mark, fraudulent registration, generic usage and more.  The petition process can be complex, akin to a full-blown civil litigation.  Here, Taco Bell sought to cancel the trademark by claiming that “Taco Tuesday” was generic.

Taco John’s decision to concede and the legal impact of that move 

After some preliminary litigation, Taco John’s finally conceded the trademark and released a statement saying, “we’re lovers, not fighters.”  This decision to liberate “Taco Tuesday” means that businesses, both large and small, along with restaurants and taco vendors, can now openly embrace, celebrate and promote “Taco Tuesdays” without any restrictions or fear of infringement liability.

Taco John’s decision to affirmatively abandon a registered federal trademark is significant, as it involves surrendering certain rights.  A trademark registered with the USPTO offers numerous benefits, such as clear evidence of exclusive ownership and use, easy public access through the USPTO database, which can deter competitors from using similar or confusing marks, the ability to sue for infringement in federal courts, the potential to recover profits, damages, attorneys’ fees and costs for infringement, heightened protection after five years of registration and more.  By relinquishing the mark, Taco John’s made the irreversible decision to forfeit the benefits of trademark registration.

However, commentators have pointed out that the trademark had little value left.  Continued litigation would have likely ended in a significant public relations loss for Taco John’s.  Thus, by affirmatively abandoning the mark, Taco John’s was able to shape public opinion around this dispute in its favor.  

What now? 

Right now, there is a single legal dispute over the term “Taco Tuesday.”  Gregory Hotel, the parent company of Gregory’s Restaurant and Bar in New Jersey, has asserted ownership of the “Taco Tuesday” trademark in the state since 1979, as indicated on its website.  Taco Bell’s petition filed in May to challenge and potentially cancel that specific trademark still stands.  Gregory’s now remains a lone soldier in the battle against Taco Bell for “Taco Tuesday.”  In contrast to Taco Bell, Gregory’s is a small business that acknowledges its limitations in pursuing a lengthy legal dispute.

If Taco Bell continues with action against Gregory’s, the next step is the discovery process, possibly followed by Taco Bell conducting a survey to gauge the public’s association of “Taco Tuesday” with Gregory’s, versus its general use as a custom for eating tacos on Tuesdays.  Gregory’s may also conduct its own investigation to determine whether Taco Bell has been assisting other restaurants or celebrities in using “Taco Tuesday” to challenge their trademark rights, possibly with a similar customer survey. However, a resolution is still distant without a settlement, as the legal process could extend up to about two years.

Andres Munoz is admitted to practice law in New York and Florida.

Contributions to this blog by Raegan Brizek.

 

Photo by PJ Gal-Szabo on Unsplash
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