Given the weighty domestic and foreign news of the day, trademark wars shouldn’t be capturing as much media attention as has the recent kerfuffle over the mark “TACO TUESDAY.” But it has. If you haven’t heard, Taco Bell, LeBron James, and some restaurant establishments are fighting over ownership of the trademark rights to TACO TUESDAY. The trademark owners claim that they have exclusive rights to the terms for restaurant services, whereas Taco Bell and LeBron James are in a no-holds-barred effort, including a television commercial, to have the United States Patent and Trademark Office cancel the existing registrations for TACO TUESDAY and rule that it is simply a generic term that anybody can use. So, here are the combatants:
- Taco John’s, a Wyoming taco franchise
- Gregory’s Restaurant & Bar, a local restaurant in Somers Point, New Jersey
- Taco Bell restaurant franchise
- LeBron James, yes, the NBA star
Here’s how this is playing out. Taco John’s was granted a trademark for TACO TUESDAY for restaurant services in December 1989, claiming it first used the term in commerce in 1979. Gregory’s Restaurant & Bar was granted trademark rights for the same services in 2007, also claiming first use in February 1979 but restricted only to New Jersey where Taco John’s does not operate. It was able to obtain this restriction through what is known as a “concurrent use proceeding,” which is a Trademark Trial and Appeal Board (TTAB) proceeding where a “party may voluntarily limit the geographic scope of its application while conceding the rights of another party to a different geographic territory.” That sets the stage. Behind this backdrop, use of “taco Tuesday” by the public takes hold. Wikipedia provides the following definition, but the identity of the article’s author remains obscure (Taco Bell?):
Taco Tuesday is a custom in many US cities of going out to eat tacos or in some cases select Mexican dishes, typically served in a tortilla on Tuesday nights. Restaurants will often offer special prices, for example, “$1 fish taco every Tuesday night”.
It is popular in many big cities across the nation, and especially popular in the beach cities of Southern California…Taco Tuesday is similar to Happy Hour in that restaurants vary in their participation, hours, and specials offered.
In the meantime, in 2019, LeBron James filed a trademark registration application for TACO TUESDAY for several different goods and services, including downloadable works, advertising and marketing services, podcasting services, and online entertainment services. It was rejected on various grounds, including a likelihood of confusion with a registered trademark, TECHNO TACO TUESDAY, owned by a Nevada company for advertising and marketing services. James’ application said nothing about restaurant services. James abandoned the trademark application in March 2020.
Now the fun begins. In May 2023, Taco Bell filed a cancellation action against Taco John’s TACO TUESDAY registration, alleging that the mark had become generic. We have written about generic “trademarks” many times over the years:
It happens when a trademark owner fails to defend the use of its mark by reminding the public that a trademark is always an adjective used to describe only one kind of the generic product or service offered. A famous instance of genericide was the 1921 Bayer Co. v United Drug Co. case, in which Bayer lost its trademark for Aspirin. (Judge Learned Hand ruled that “aspirin” had become generic for acetylsalicylic acid, and could be used by any manufacturer of the drug.)
In the same month, Taco Bell filed another cancellation action against Gregory’s Restaurant & Bar, alleging the same basis as it did against Taco John’s TACO TUESDAY. The tone of Taco Bell’s cancellation petitions is light hearted (why?). On one level, Taco Bell appears to be enjoying its battle against the Wyoming and New Jersey establishments, even enlisting LeBron James, who himself unsuccessfully attempted to register TACO TUESDAY, to produce a slick television advertisement:
Hmm, is Taco Bell spending its resources just for the public good? Or, does it want TACO TUESDAY for its own restaurant services even if it claims that the trademark is generic. From its petition, Taco Bell asserts:
G. Taco Bell supports everyone’s right to celebrate, and say, “taco Tuesday,” no matter who they are. How can we tell our fans to Live Mas if their favorite taco joints aren’t even allowed to freely say “Taco Tuesday”? Anything else is menos.
How altruistic. Sarcasm aside, whether Taco Bell prevails will depend upon whether the TTAB determines whether TACO TUESDAY has become genericized. We’ll keep you apprised.
— Adam G. Garson, Esq.