Let’s Taco ‘Bout Trademarks
On May 16th, 2023, Taco Bell filed a petition with the United States Patent and Trademark Office to cancel the “Taco Tuesday” trademark currently owned by rival restaurant chain Taco John’s. What was once seen as a publicity stunt has turned into a full marketing campaign for Taco Bell with an ongoing “liberation journey” to free Taco Tuesday for the masses.
Nearly one week into the expedition, global superstar and longtime Taco Tuesday supporter, Lebron James, joined the effort to free Taco Tuesday.
“‘Taco Tuesday is a tradition that everyone should be able to celebrate. All restaurants, all families, all businesses – everybody,” says LeBron James. “‘Taco Tuesdays’ create opportunities that bring people together in so many ways, and it’s a celebration that nobody should own.”
Lebron James stars in the new ad campaign for Taco Bell promoting the fight against the ownership of Taco Tuesday and encouraging the taco community to join together. One commercial titled Taco Bleep aims to highlight the silliness of this “journey” with James getting censored every time he tries to say Taco Tuesday.
Honestly, it seems that a lot of this journey is designed to be tongue in cheek. In their petition, Taco Bell claims that the current registration of Taco Tuesday could hurt taco supporters “simply for pursuing happiness on a Tuesday.” Also, Taco Bell asks how can they tell their fans to Live Más, “if their favorite taco joints aren’t even allowed to freely say Taco Tuesday.” The preface of the petition ends with the rallying cry, “when tacos win, we all win.”
However, even with the comedic approach within the petition, Taco Bell does make genuine legal arguments for the cancellation of the trademark. The first claim for cancellation is that the trademark Taco Tuesday has become generic.
A trademark can become generic through a process known as genericide. Genericide occurs when a trademark that was once distinctive and associated with a particular brand or source becomes widely used by the public as a generic term, or phrase, to refer to a general category of products or services, rather than a specific brand. Many well-known trademarks have been lost due to genericide, some famous examples include Thermos, Aspirin, and Escalator.
Taco Tuesday is a tradition that everyone should be able to celebrate. All restaurants, all families, all businesses – everybody. Taco Tuesdays’ create opportunities that bring people together in so many ways, and it’s a celebration that nobody should own.”Lebron James
The second claim for cancellation by Taco Bell is that the trademark has been abandoned due to the owner’s conduct which includes acts of omission and/or commission. The argument from Taco Bell here is likely that Taco John’s failure to actively enforce their rights and their allowance of others to use Taco Tuesday without objection has contributed to the mark becoming generic. If a mark is consistently used by others, it erodes a mark’s distinctiveness and leads to it becoming generic.
It’s important to note that Taco Bell is not seeking any damages and they are not planning on registering Taco Tuesday for themselves. Instead, Taco Bell decrees that they are, “honoring people’s right to come together and celebrate the joys of tacos, on Tuesdays and every other day.”
I agree with Taco Bell that Taco Tuesday has become a widely used and recognized phrase, however, commonly used phrases have become registered trademarks in the past. One example of a commonly used phrase that has been trademarked is the famous slogan of Nike, “Just Do It.” “Just Do It” is a widely recognized and often-used phrase in everyday English that conveys a sense of motivation, determination, and action. Nike successfully registered this phrase as a trademark for their athletic apparel and related products.
Taco John’s seems not to be taking the Taco Bell petition lightly. “When it comes right down to it, we’re lovers, not fighters, at Taco John’s,” the chain’s CEO Jim Creel said in a statement. “But when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”
In my opinion, I think the legal arguments from Taco Bell are compelling and could possibly succeed in cancelling the registered mark, but regardless, I believe the bad publicity from this campaign will end up being the reason for the liberation of Taco Tuesday when all is said and done. In this rare case, I don’t mind a company giving up their legal intellectual property rights for the common good. As Taco Bell said in their request, “a win for Taco Bell here is a win for all.”