Unsuspecting Moms Beware: Does Your “Taco Tuesday” Violate Trademark Rights?

Did You Know? Taco John’s Owns the TACO TUESDAY Trademark

Before you incorporate “Taco Tuesday” into your family’s weeknight menu, consider this: Cheyenne, Wyoming-based Taco John’s registered a federal trademark for TACO TUESDAY® with the United States Patent and Trademark Office (“USPTO”) in 1989 and has aggressively pursued various offenders of the mark nationwide for more than 30 years.  

Protection of the TACO TUESDAY® Trademark

Most recently, Taco John’s took aim at the Freedom’s Edge Brewery Company just five miles down the road from the Taco John’s headquarters. The complaint? Freedom’s Edge used “Taco Tuesday” to advertise a local taco truck that sets up shop outside the brewery one day per week.  In response, Freedom’s Edge took the complaint live on social media, sparking extensive comments both for and against Freedom’s Edge use of the phrase.

But can the use of one of the more common phrases in American pop culture truly give rise to trademark infringement claims?  According to the USPTO—the federal entity charged with reviewing, approving and granting registration of trademarks in the U.S.—a trademark “is a brand name” and may include “any word, name, symbol, device or any combination, used or intended to be used to identify or distinguish the goods or services of one seller or provider from those of others and to indicate that seller as the source” of the goods or services. However, not just any name can be trademarked.  The USPTO (and U.S. Courts) separate trademarks into five categories from strongest to weakest: (1) fanciful marks; (2) arbitrary marks; (3) suggestive marks; (4) descriptive marks; and (5) generic marks.  

What Kind of a Mark is TACO TUESDAY®?

Fanciful marks are made-up words that have no meaning apart from identifying a particular product or service.  Arbitrary marks are real words but they have a meaning typically unrelated to the goods or services; for example, “Apple” for computers rather than fruit.  Suggestive marks are also real words, but they may hint or give some impression as to the type or quality of a product; the mark Microsoft is suggestive of computer software. Descriptive marks are more than simply suggestive—they actually describe the good or service.  And a generic mark, considered the weakest type of mark, is a commonly-understood term for a class of goods or services.  

Fanciful, arbitrary, and suggestive marks are eligible for registration of a trademark provided all other requirements of the law are met.  Descriptive marks are only eligible for registration of a trademark if the owner can establish secondary meaning, i.e., that the general public recognizes the mark as identifying the source of the good or product. Generic marks are never eligible for registration.

Has the TACO TUESDAY® Trademark Become Generic?

So where does “Taco Tuesday” fit on this sliding scale, and is your weeknight menu putting you at risk along with Freedom Brewery? Although it remains undecided, it is likely any formal infringement claim related to the TACO TUESDAY® trademark would fail based on the doctrine of genericide.  Genericide of a trademark occurs when a previously strong mark loses its protection as a mark because the popularity or significance of the mark has caused it to become a generic name for a general class of goods or services. In other words, when a trademark is so widely known that the primary meaning of the mark becomes the goods or services themselves rather than identifying the source of the goods or services, it can be considered generic and lose any trademark protection.  For example, hovercraft, kerosene, lanolin, laundromat, linoleum, teleprompter and videotape all were formerly registered trademarks that lost their protection due to genericide.

Taco John’s Battle to Preserve the TACO TUESDAY® Trademark 

Given the widespread use of “Taco Tuesday” in American culture—a reference that no longer bears any real identification of Taco John’s, but instead refers to a common American practice—it is likely that in any formal challenge, Taco John’s trademark could go the way of “raisin bran,” “aspirin,” and “dry ice” and would be deemed ineligible for trademark protection. 

Nevertheless, until a formal challenge is launched and an opinion offered by the USPTO and/or federal district courts, one should anticipate ongoing attempts by Taco John’s to preserve any rights and protections in the mark, leaving unsuspecting adopters of “Taco Tuesday” open to informal—and possibly formal—challenges to their use of the mark.  The end result? For now, it’s better to keep the family menu within the family.

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