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T-Bell's Trademark Battle for 'Taco Tuesdays'

By Eric Harvey, J.D. | Last updated on

We've all been there: tired from the beginning of another work week, too exhausted to make dinner at home. What's more appealing than a tasty deal with some fun alliteration? "Taco Tuesday" has become a phrase familiar to all and a signifier of quick, easy, and cheap food that can satisfy a voracious family when all else fails.

But there's a few fun facts that might surprise you about this promo that's become a household phrase. While it sounds like modern buzzwords, the phrase actually dates back scores of years. From where? Maybe the last place you'd expect: Wyoming. And another thing you might not have known is that there's a battle underway for unrestricted commercial use of the phrase. That lucky restaurant in Wyoming actually got the U.S. Patent and Trademark Office (USPTO) to grant it a trademark in 1989. Since then, a lot of other Mexican joints have used the catchy line.

Taco . . . John's?

Attorneys for Taco Bell have asked U.S. regulators to strip a Wyoming-based restaurant of its trademark to the phrase. T-Bell claims that their fast food foe has held certain intellectual property rights to 'Taco Tuesdays' for far too long. That foe is known as Taco John's. In a USPTO filing, Taco Bell has asked that the Office suspend Taco John's trademark on the phrase.

According to attorneys for Taco Bell, too many restaurants use the phrase for the trademark to justify it belonging exclusively to the Wyoming joint. Their Trademark Office filing frames restrictions on use of the phrase as "depriving the world of sunshine itself." And to their credit, the fact that so many restaurants do use the phrase speaks to one of the most fundamental elements of trademark protection.

Taco Bell isn't the only entity to contest Taco John's rights to the phrase. It seems that taco-lovers from so many walks of life, corporate or otherwise, feel the phrase is a valuable tool for promoting the dish. NBA superstar LeBron James, for example, once tried to claim the phrase in 2019—to no avail. All in all, prevention of others' free use of the expression is apparently causing widespread discontent—or at least, that's what Taco Bell lawyers are arguing.

Recipe For a Trademark

Under relevant U.S. law, a trademark is any word, name, symbol, device, or a combo of those things, that a person uses (or intends to use in the future) to identify their goods and distinguish them from goods sold by others. As a "brand name," the purpose of a trademark is to indicate to consumers where a given product comes from.

U.S. Code Chapter 15, Section 1127, dictates that something (such as a combination of words, as "Taco Tuesday" is) qualifies for a trademark, only if it is not "generic." At the same time, as a result of legal precedent in the U.S., it must also be "arbitrary," "fanciful," or "suggestive." Other requirements are that the trademark has to be "inherently distinctive" and have a "secondary meaning" in "the minds of the consuming public."

What does all of this legalese mean? In short, it means that characteristics of the trademark must not cause confusion in consumers' minds as to the distinct origins of a product. If the product causes confusion and results in a belief that any given product comes from a source other than the maker who trademarked it, then the product does not qualify for a trademark.

"Taco Tuesday" a Victim of Genericide

NYC-based attorney Emily Poler explained the legal term "genericide" as the process by which a trademark becomes so generic over the years that it no longer satisfies the requirement of inherent distinctness, which is necessary to continue to qualify for a trademark. Once genericide has run its course, a trademark no longer qualifies for intellectual property protections.

'Taco Tuesday' may soon be a victim of genericide, but it would be far from the first. Other victims include "cellophane," "escalator," and "trampoline." Believe it or not, those words were all once trademarked. Over the years, however, they became so common that they no longer satisfied the requirements for trademarks. Once that happened, the words become part of everyday language. As a result, anyone that wanted to use those words—including any company that made cellophane, escalators, or trampolines—could do so without facing legal consequences.

Will T-Bell Be the First to Win?

Since the 1980s, Taco John's has been enforcing its trademark claim on the phrase. In one IP battle from 2019, Taco John's demanded that a restaurant only five blocks from it stop using the expression. And apparently, Taco John's has fought similar battles with many other restaurants that have tried to use 'Taco Tuesdays," taking some to court. It remains to be seen what will become of the dispute over use of the phrase, as Taco Bell has begun its crusade to strip Taco John's of its rights to the expression.

To learn more about the laws and legal issues at stake in the battle for "Taco Tuesdays," review FindLaw's Learn About the Law pages:

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