“Taco Tuesday” is Freed (Almost)
In May of 2023, Taco Bell filed petitions against Taco John’s and Gregory’s Restaurant and Bar to cancel the trademark registrations existing on the trademark “Taco Tuesday.” Why did Taco Bell do this? Taco Bell wanted to be able to use the phrase “Taco Tuesday.” While this phrase was trademarked by the prior owners, Taco Bell could not legally utilize it, nor could anyone else.
How was Taco Bell able to free “Taco Tuesday”? Through a combination of the two trademark concepts of genericness and cancellation, Taco Bell was able to persuade Taco John’s to give up (aka abandon) it’s over 30-year-old trademark. Taco John’s had the rights to the trademark in all US locations except for New Jersey.
One of Taco Bell’s arguments is that “Taco Tuesday” is now a generic term. A generic term, pursuant to the USPTO is “the common, everyday name for your goods or services.” Taco Bell argued that no one should be able to own the phrase “Taco Tuesday,” for selling tacos on Tuesday.
The other concept at work is trademark cancellation. Every trademark filed, even a trademark that was renewed and that is otherwise considered incontestable, is still vulnerable to cancellation if it is found to be generic.
The United States Patent and Trademark Office did not get to decide on Taco Bell’s genericness argument. Taco Bell came to an agreement with Taco John’s, and Taco John’s voluntarily abandoned its trademark claim to exclusive use of the term “Taco Tuesday.” The settlement terms are confidential.
However, the fight continues with Gregory’s Bar and Restaurant, who owns federal trademark rights to “Taco Tuesday” limited to the geographic area of New Jersey.
So, what do you think? Is “Taco Tuesday” generic?
To get your questions answered by this RRC member expert Tiffany Donaldson, click here.