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In the trademark and copyright law world, few disputes have garnered the attention of both the legal and culinary world quite like the “Taco Tuesday” debate. The controversy revolved around the rights to a popular phrase that has been simmering for years, pitting businesses against each other and igniting a discussion around the usage of common expressions. “Taco Tuesday” is a phrase that’s widely used across the United States to promote restaurant deals for tacos sold on a Tuesday. While the term might seem commonplace, that is the focus of the legal dispute.

In the late 1980’s, Taco John’s, a prominent fast-food chain based out of Cheyenne, Wyoming, successfully registered the trademark for “Taco Tuesday.” They sought to claim exclusive rights over this catchy phrase in 49 out of the 50 states, excluding New Jersey where another entity held a prior claim. Since then, Taco John’s has fiercely defended its trademark, even going as far as sending cease-and-desist letters to other businesses using the term to promote their own Tuesday taco specials.

The crux of this debate lies in the question of whether a commonly used phrase like “Taco Tuesday” can be owned by an induvial entity, thereby restricting its use in commercial settings. Critics of Taco John’s argued that the term had become too generic, used widely and indiscriminately, and thus should be free for everyone to use – In other words, they argued “genericide” of the trademark.

On May 16, 2023, Taco Bell filed a Petition for Cancellation with the U.S. Patent and Trademark Office to cancel the trademark, arguing that the phrase “Taco Tuesday” should be canceled under the legal claim of genericness. The basis for any cancelation of a trademark falls into two categories: (1) claims that can be raised within the first five years of a trademark’s registration; and (2) claims that can be raised at any time. During the first five years after a trademark has been registered, cancellation commonly occurs through a variety of claims such as the likelihood of confusion or dilution of a prior registered trademark. After a trademark has been registered for at least five years, it becomes incontestable precluding cancellation on the grounds of descriptiveness. Thereafter, many of these claims are no longer available to raise, but certain claims remain – where a petitioner alleges claims of abandonment, fraud, misrepresentation of sources, or notably, genericness.

Genericness or genericide refers to the process whereby a trademarked term becomes generic through use by the common individual and becomes so common that it loses its protected status. When a term is generic, it cannot be trademarked. This can be expensive and damaging to companies. Controlling how society uses the term is challenging and can become more expensive as it becomes more common in the everyday vernacular.

If the “Taco Tuesday” trademark lost protection because of its genericness, it would not be the first or last time that a trademark has lost protection through becoming generic. Escalator, cola, and aspirin were once trademarked terms that fell victim to genericide. Xerox is a frequently used example of a trademark that was threatened under the claim of genericness. As a result, the company advertised and encouraged consumers to use the term “photocopying” rather than “Xeroxing” to stop misuse of its mark.  Ultimately, these efforts were successful in pivoting common usage and defending against genericness.

Companies looking to protect their trademarks from a potential claim of genericness can take certain measures to reduce any potential risks. Such measures may include adding a descriptive term beside the product to avoid the brand name becoming generic, refraining from using the trademark in generic ways (such as in the form of a verb), using marketing campaigns to change the way consumers refer to their products, and most importantly, consistently enforcing trademark rights through legal guidance when there is common infringement of the trademark.

Ultimately, and significantly on a Tuesday, Taco John’s decided to abandon the “Taco Tuesday” trademark, saying it would “share” the catch phrase, and that instead of defending the trademark against a claim of genericide, would be donating money to charity. The “Taco Tuesday” dispute and its resolution demonstrates the dynamic intersection between language, culture, and trademark law.

While that may be a wrap on the “Taco Tuesday” trademark dispute, if you are concerned about protecting your trademark from genericness, or alternatively, are accused of infringing a trademark whose mark is ubiquitously used to refer to a type of product or service, please contact Elliot Boerman or one of our trademark attorneys at Manning Fulton & Skinner, to discuss in further detail.

 

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