On July 18, 2023, the phrase “Taco Tuesday” was returned to the public after Taco John’s submitted a notice of abandonment for its TACO TUESDAY trademark registration before the United States Patent & Trademark Office’s Trademark Trial and Appeal Board. Taco John’s, a popular fast-food chain with locations in the Western United States, has owned and maintained the trademark registration for TACO TUESDAY since 1989.
Taco Bell, the predominant rival fast-food chain, filed a petition to cancel the mark in May 2023, arguing that “Taco Tuesday” is “critical to everyone’s Tuesday” and “should belong to everyone.” In fact, to Taco Bell, depriving anyone of the ability to use “Taco Tuesday” is akin to “depriving the world of sunshine itself.” Taco Bell sought no damages in its action, but simply wanted to set free a phrase that is “used ubiquitously” throughout the United States.
The campaign to “liberate” the phrase did not stop there. One week after filing its petition, Taco Bell announced a partnership with LeBron James, who, in 2019, himself attempted to register TACO TUESDAY. Taco Bell also posted a link to a public petition on its website titled “Freeing Taco T***day,” which garnered nearly 25,000 signatures.
Taco John’s initially responded to the cancellation action by largely denying the allegations, but a few weeks later decided to abandon its registration for TACO TUESDAY altogether. Taco John’s CEO Jim Creel released a statement saying, that “paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do.” Instead, the company will donate $40,000 to Children of Restaurant Employees, a non-profit which provides financial relief to family members of restaurant workers.
Although the fight between these companies ended before it started, it likely would have been a losing battle for Taco John’s. Taco Bell argued that TACO TUESDAY had become generic in connection with the restaurant services identified in the registration. Generally, a mark is considered generic if the relevant public understands the designation to refer only to the common name for the goods or services at issue. A generic term is incapable of acquiring distinctiveness and thus fails to serve as a unique source identifier, i.e., a trademark. To prevail in the cancellation action, Taco John’s would need to prove that TACO TUESDAY is not generic for its restaurant services, meaning the consuming public would understand the trademark to refer to Taco John’s’ restaurants. With such a commonplace phrase, the Trademark Trial and Appeal Board may well have sided with Taco Bell, as evidenced by its other decisions finding common terms to be generic for the applied-for goods or services (e.g., CHURRASCOS for a restaurant featuring churrasco steaks and CANDY BOUQUET for retail and mail order services for candy gift packages). Now that TACO TUESDAY is free for all to use, that’s something to taco’bout.