In a bid to protect anyone who wants to “make, sell, and celebrate” tacos using the phrase “TACO TUESDAY” from the “possibility of legal action or angry letters”, Taco Bell IP Holder, LLC (“Taco Bell”) asked the United States Patent and Trademark Office's Trademark Trial and Appeal Board ("TTAB") to cancel two federal trademark registrations for TACO TUESDAY.
The attack targets two companies that have owned their respective registrations for the catchy, now common place phrase, for decades.
The first is Spicy Seasonings, LLC a Wyoming based company that slings tacos on Tuesday, and every other day of the week, under the name Taco John’s with over 370 locations across 23 states. The second subject of Taco Bell’s challenge is Gregory Hotel, Inc., which uses the mark in connection with its New Jersey spot, Gregory’s Restaurant & Bar. Gregory’s’ website proudly touts a status coveted by all: “Home of the original Taco Tuesday since 1979!”.
In a Petition to Cancel a trademark registration on the basis that it fails to function as a trademark, the petitioner must prove that the mark fails to serve as an indicator of the source of the goods and services covered by the registration, failing to identify and distinguish the respondent's goods and services from those of others in the eyes of consumers. Taco Bell must prove that when consumers encounter the term TACO TUESDAY they do not think only of Taco John's or Gregory's Restaurant & Bar, but instead that consumers perceive the mark as a generic reference to preparing, selling, and eating tacos on a Tuesday, regardless of the source of the tacos.
In its Petitions for Cancellation, Taco Bell notes that it seeks no damages (notably nor could it; the Trademark Trial and Appeal Board is not authorized to award monetary damages), instead just “reason and common sense.” In support of cancellation, Taco Bell argued that the trademarked phrase is generic for restaurant services and is used widely.
Taco Bell turned the words of the Trademark Trial and Appeal Board against the respondents, noting that in a 2022 decision the TTAB found TACO TUESDAY to be a “a ‘very commonplace term that refers to having tacos and drinks on that particular day of the week.’” Notably, the TTAB also propounded that sentiment in 2019, when it issued an Office Action refusing Lebron James' application for TACO TUESDAY on the basis that, among other reasons, the phrase is a “commonplace term” that fails to distinguish the source of James’s good and services from that of others. In fact, the Examiner noted that “the wording Taco Tuesday is a ‘widely used message’ use by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday”.
Trademark cancellation petitions do not often generate much public interest or attention. But here, Taco Bell clearly is trying to benefit from its legal effort. The Company ran a full page ad in today's New York Times headlined "Freeing Taco T***day" and including the first page from its cancellation petition. The ad suggests that people "Support the liberation movement" and provides a website address for those so inclined: change.org/freeingtacotuesday
The Registrants’ Answers to Taco Bell’s Petition are due on June 26, 2023, just 5 TACO TUESDAYs away.