Nicholas Gingo

Earlier this month, Taco Bell filed cancellation proceedings against two registrations of TACO TUESDAY as a trademark related to restaurants in the U.S. One is owned by Taco Johns and applies to all U.S. states except New Jersey. The other is owned by the Gregory Hotel and applies to New Jersey only.  In both cases, Taco Bell seeks to cancel the registrations on the theory that the phrase itself is incapable of functioning as a trademark. If Taco Bell were to succeed, then no one could own the rights to the phrase, at least with regard to restaurants.

Is it Just Another Marketing Strategy?

On its face, this seems like a marketing ploy.  The petitions in both cases are packed with pithy soundbites that would seem more at home in marketing pieces than legal filings. And in addition to the TTAB proceedings, Taco Bell has also started a change.org petition and is planning on hosting a Reddit Ask Me Anything session.  Meanwhile, Taco Johns is currently running a promotion for 2 tacos for $2 on Tuesdays. And both parties are making hay on Twitter, of course.

But from a legal standpoint,  this argument may actually have some legs. In particular, the TTAB has previously found that the phrase TACO TUESDAY failed to function as a trademark in the context of beer (opinion attached - https://ttabvue.uspto.gov/ttabvue/v?pno=88817107&pty=EXA&eno=16)). And USPTO Examiners have held that the phrase could not function as a trademark for kitchen appliances (https://tsdr.uspto.gov/documentviewer?caseId=sn88573020&docId=OOA20200828134655#docIndex=1&page=1) and digital advertising and marketing services, podcasting, and social media websites (https://tsdr.uspto.gov/documentviewer?caseId=sn88579771&docId=OOA20190911183214#docIndex=1&page=1). In all cases, the basis for these decisions was that the phrase could not act as a source identifier because it was so commonly used in the marketplace already.

Here, the fact that the marks have been in use for so long (going back to 1979 according to the filing at the USPTO) would certainly be helpful if the mark owners had to show that the mark had acquired distinctiveness in the marketplace.  But because the argument focuses on the ability of the phrase to function as a mark at all, this long use is potentially irrelevant. On the other hand, maybe at the time that use began, the phrase was not so ubiquitous. Can a mark lose its failure to function over time? This sounds an awful lot like genericide, which has long been the bane of mark owners whose marks have become synonymous with their products (e.g., aspirin, cellophane, escalator, flip phone, and trampoline). Taco John’s and the Gregory Hotel just might have a real fight on their hands here.

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