The Taco chain restaurant decided to fill a petition today (Tuesday) before the US Patent and Trademark Office to cancel the trademark registered by a smaller business, Taco John’s, which has been active for 34 years. According to Taco Bell, the catchphrase should be “freely available to all who make, sell, eat and celebrate tacos.”
Since Taco John’s is the trademark owner, other restaurants and businesses who are interested in using the phrase must ask for permission to utilize “Taco Tuesday” in their own brands and advertising of their products. About this, Taco Bell expressed that it:
… potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from [Taco John’s] — simply for pursuing happiness on a Tuesday. Nobody should have exclusive rights in a common phrase
According to Maggie Mettler, legal issues’ director for Taco Bell’s company, Yum! Brands: “this is a bold brand action we hope others (referring to restaurants and businesses) are willing to support”. She also expressed that this petition might be helpful to “fix this injustice” in terms of branding. In addition, trademark attorney, Josh Gerben, said the “Taco Tuesday” catchphrase has become commonly used over the years and, in that line, Taco Bell’s actions seem to be serious, despite their looking ironic at first sight.
In the words of Gerben, Taco Bell has a “solid case”, as the US trademark law “prevents the registration of common phrases or phrases that become commonplace after a registration is granted”. In this sense, the slogan “has become a cultural phenomenon with a long history of being used by individuals and companies other than the current owner of the trademark.”
Even though Taco John’s invented and used the catchphrase first, this might not be a strong enough defense, according to Gerben. This is because the “Taco Tuesday” phrase is “widely utilized by Americans in a way that has nothing to do with the defendant’s restaurant.”
For this petition to come to a final conclusion, Taco John’s has a 40-days limit to present a response to Taco Bell’s petition. In the event both food chains are not able to reach an agreement, the case will move on to a discovery period, in which each business might request documents and present evidence in their own defense. After that, a trial will be done and oral arguments might be presented before the juries.