Sometimes your business does not need to register a mark to make headway in its marketing – sometimes it is more beneficial to file a Petition for Cancellation of a trademark before the Trademark Trial and Appeal Board (TTAB). This action may help if ownership of the mark by another is getting in the way of your business being able to use it, even if you do not want to keep its usage all to yourself.
In a recent petition filed with the TTAB, Taco Bell has asked for just that. They are requesting that the USPTO cancel Taco John’s trademark registration for “Taco Tuesday.” Their assertion: the marketing magic of Taco Tuesday should be available to all purveyors of tacos.
Taco John’s Claims Origin of Taco Tuesday
Taco John’s registered a trademark for the phrase “Taco Tuesday” in 1989. But the owner, Gregory Gregory, says that the Wyoming- and New Jersey-based restaurant invented the phrase in 1979. He believes that they owe much of their taco profit over the years to the use of “Taco Tuesday.” For these reasons, he feels that their ownership of the “Taco Tuesday” registration is justified.
On top of that, he feels that Taco Bell is trying to take out some “little guy” competition by wresting this trademark from them. In a way, he is issuing a challenge to the Mexican fast food chain: You are not suffering commercially – why do you need to take action against our trademark?
Taco Bell: Hero or Persecutor
On Taco Bell’s part, they have lobbed many criticisms at Taco John’s trademark ownership, including:
- “Taco Tuesday” refers to any sale of taco products on a Tuesday, so it is too informational and generic of a description to warrant a primary mark registration
- “Taco Tuesday” is used in a ubiquitous way by restaurants far and wide, so it lacks distinctiveness – it is no longer associated with one brand
- “Taco Tuesday” is a common spoken phrase, so people and businesses should not need to get permission from Taco John’s in order to use it
What does Taco Bell want out of this situation? They claim to seek neither damages nor exclusive ownership – only the ability to use the phrase without worry. In their petition, they frame themselves as heroes of common sense, freeing the phrase from Taco John’s prison for all taco sellers to use.
How Will the USPTO Decide Taco Tuesday’s Fate This Time?
It is interesting to note that LeBron James was denied a 2019 trademark application for “Taco Tuesday” in a different category (related to podcasting and digital media), because the USPTO called it a “commonplace term.” Is it possible that their reasoning will double back on them in answering this petition to cancel?