In today’s tech-driven landscape, entrepreneurs and startups encounter a multitude of critical decisions involving trademark disputes during the trademark selection and adoption process. Learning from major business litigation happening in real-time, such as the current Taco Bell vs. Taco Tuesday trademark disputes in the United States Patent and Trademark Office (USPTO), can provide valuable insights. One 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 cases of the TACO TUESDAY trademark disputes, currently facing a fierce challenge from one of the world’s largest fast-food companies, Taco Bell.
The 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 trademark disputes 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 trademark disputes 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 Trademark Disputes Against the Registration of Taco Tuesday
Legally speaking, 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)).
Therefore, the success of Taco Bell’s trademark disputes 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.
Trademark Disputes and Entrepreneurs
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.
Best Practices for Trademark Selection and Protection
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.
Steps for Strong Trademark Selection
- Conduct Thorough Research: Before finalizing a trademark, conduct comprehensive research to ensure it is not descriptive or generic and does not conflict with existing trademarks.
- Choose Fanciful or Arbitrary Marks: Opt for fanciful or arbitrary marks that do not directly describe the goods or services. These marks are inherently distinctive and receive the highest level of protection.
- Consult an Attorney: Work with a trademark attorney to evaluate the strength of your chosen mark and navigate the registration process effectively.
- Monitor and Enforce Your Trademark: After registration, actively monitor the market for potential infringements and enforce your rights to maintain the trademark’s strength and exclusivity.
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.
Learning from the Taco Bell vs. Taco Tuesday Trademark Disputes
The ongoing Taco Bell vs. Taco Tuesday trademark dispute offers a wealth of insights for entrepreneurs and startups navigating the complex landscape of trademark selection and protection. Understanding the distinctions between descriptive, generic, and fanciful trademarks is crucial for securing robust trademark protection and avoiding legal challenges.
As this high-profile case unfolds, it serves as a reminder of the importance of selecting strong, distinctive trademarks and seeking professional guidance to navigate the registration process. By learning from this and other trademark disputes, businesses can make informed decisions that enhance their brand protection and support long-term success.
For personalized guidance on trademark disputes and other legal matters, contact L.A. Tech and Media Law Firm. Our experienced attorneys are here to help you navigate the complexities of trademark law and protect your valuable brand.
Trademark Disputes Lawyer
If you are facing a trademark dispute or have questions about trademark registration, contact L.A. Tech and Media Law Firm to schedule a consultation. Our experienced trademark disputes attorneys are ready to assist you in navigating the complexities of trademark law and protecting your business.
