L.A. TECH & MEDIA LAW FIRM – Intellectual Property & Technology Law

Taco Bell vs. Taco Tuesday Trademark Dispute

Law Firm Blog - L.A. Tech and Media Law - Taco Bell vs. Taco Tuesday Trademark Dispute
In today’s tech-driven landscape, entrepreneurs and startups encounter a multitude of critical decisions during the trademark selection and adoption process, and learn from major business litigation happening in real-time, such as the current Taco Bell vs. Taco Tuesday trademark dispute happening in the United States Patent and Trademark Office (USPTO). One such pivotal choice revolves around selecting a brand name or trademark for their business. It’s crucial to note that not all trademarks are equally protected under U.S. trademark law. Even if a trademark successfully passes the likelihood of confusion clearances, there remains a significant risk associated with descriptive and generic trademarks. This blog delves into the compelling case of the TACO TUESDAY trademark dispute, which is currently facing a fierce challenge from one of the world’s largest fast food companies, Taco Bell.
Taco Bell and Lebron James media campaign to cancel Taco Tuesday Trademark via https://www.instagram.com/tacobell/

Taco Bell and Taco Tuesday Trademark Dispute

On May 16, 2023, Taco Bell’s parent company took legal action by filing two lawsuits with the USPTO Trademark Trial and Appeal Board, aiming to cancel trademark registration rights for the term “TACO TUESDAY.” Taco Bell IP Holder Inc. submitted a Petition for Cancellation (No. 92082333) with the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB), targeting U.S. Trademark Registration Number 1572589, owned by Spicy Seasonings, LLC. This mark has been registered for restaurant services since December 1989. Additionally, Taco Bell filed another Petition for Cancellation (No. 92082327) against U.S. Trademark Registration Number 3621366, owned by Gregory Hotel Inc., which has been registered for restaurant services since 2009. It’s essential to note that Taco Bell’s objective in these lawsuits is not to secure the “TACO TUESDAY” trademark for themselves. Instead, Taco Bell seeks to establish the freedom of all restaurants to use the term “TACO TUESDAY” without the risk of trademark infringement. Both lawsuits put forth nearly identical allegations. In a somewhat playful manner, the plaintiff argues that the term “TACO TUESDAY” is generic. They state, “People like tacos on Tuesdays. They just do. It’s even fun to say: ‘Taco Tuesday.’ Tacos have the unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week. However, since 1995, the Registrant has held a federal trademark registration for ‘Taco Tuesday.’ Not cool.” Taco Bell’s legal team further asserts, “This Petition is filed because Taco Bell firmly believes that tacos, much like the joy they bring, belong to everyone on any given day. Therefore, the term ‘Taco Tuesday’ should be accessible to all. Taco Bell considers ‘Taco Tuesday’ to be essential to everyone’s Tuesday. To deny anyone the ability to say ‘Taco Tuesday’—whether it’s Taco Bell or any entity that offers tacos to the world—is akin to depriving the world of sunshine itself. The Registrant’s failure or inability to adequately enforce the ‘mark’ in question has led it to become a generic name for the goods or services associated with it, thereby losing its significance as a trademark. Consequently, the ‘mark’ has been abandoned under the provisions of 15 U.S.C. § 1127.” The petitioner, along with its affiliated entities, must be able to promote their goods and services using the generic and informational term “Taco Tuesday” to effectively compete in the marketplace. It is argued that the ‘mark’ in question has either become or is now generic for the described services. Thus, the Registration should be canceled in accordance with 15 U.S.C. § 1064(3).

The Legal Merits of Taco Bell’s Arguments Against Registration of TACO TUESDAY

Legally speaking, as discussed in my book “Tip-Top Trademarks: Brand Protection Blueprint for Business” in Chapter 2 titled “How to Trademark Conflict Checklist for Descriptiveness,” the key question at hand is whether the term in question is descriptive or generic. According to the law, generic terms are understood by the relevant purchasing public primarily as common or class names for goods or services (In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001)).
Source: Table of Contents, Tip-Top Trademarks: Brand Protection Blueprint for Business, E-Book available on Amazon
Therefore, the success of Taco Bell’s trademark lawsuit depends on its ability to convince the Board of the Trademark Trial and Appeal Board that the term “Taco Tuesday” is primarily understood by the relevant public as a generic name for the category of goods or services with which it is associated

Entrepreneur Trademark Tips 

Entrepreneurs, technology startups, and small businesses seeking to register a new trademark can draw valuable lessons from the TACO TUESDAY trademark dispute. It serves as a reminder that not all trademarks receive equal protection under the law. The degree to which the words in a trademark are related to the products or services being offered can determine its descriptiveness. Consequently, trademarks that are highly descriptive are more vulnerable to cancellation attacks. On the other hand, fanciful and coined trademarks enjoy the highest level of protection. Examples of such trademarks include EXXON for energy solutions, KODAK, REVLON, and PEPSI, to name a few. According to U.S. trademark law, specifically the Trademark Act, Section 15 U.S.C. §1052(f), fanciful trademarks composed of words without any English meaning are considered the strongest types of trademarks, as they face the least vulnerability to challenges, such as the one currently faced by the owners of the Taco Tuesday trademark, based on issues of descriptiveness and genericness. For technology startups, entrepreneurs, and trademark owners who wish to avoid descriptive trademarks and select stronger trademarks eligible for U.S. registration with the USPTO, it is highly recommended to review the insights provided in Tip-Top Trademarks: Brand Protection Blueprint for Business,” particularly Chapter 2, titled “How to Trademark Conflict Checklist for Descriptiveness.” Additionally, seeking the guidance of an experienced trademark attorney to assess the risk level of their trademarks on the descriptiveness spectrum is crucial. By implementing these strategies and leveraging expert advice, businesses can enhance their understanding of trademark selection and protection, mitigating the risks associated with descriptive trademarks and ensuring stronger legal safeguards for their intellectual property assets.  
David N. Sharifi, Esq.
David N. Sharifi, Esq.

David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal.
Office: Ph: 310-751-0181; david@latml.com.

Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2019. All rights reserved.

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