Liberate TACO TUESDAY! Who Owns It Anyway?
Given the important domestic and international news of the day, trademark wars hardly attract as much media attention as the recent TACO TUESDAY trademark lawsuits. But this. If you haven't heard, Taco Bell, LeBron James and other food service establishments are competing to own the TACO TUESDAY brand. Trademark owners claim they have exclusive rights to the restaurant's terms of service, and Taco Bell and LeBron James are working tirelessly to get the US Patent and Trademark Office to revoke their existing registrations, including television commercials. TACO TUESDAY and rule that it's just a generic term that anyone can use. So here are the fighters.
That's how it works. Taco John's trademarked TACO TUESDAY for restaurant services in December 1989 and claims to have first used the term commercially in 1979. Gregory's Restaurant & Bar acquired trademark rights for the same services in 2007 and also claimed first use in February 1979, but in a limited manner in New Jersey, where Taco John's does not operate. It was able to achieve this reduction through what is known as the "concurrent use process" operated by the Trademark Trial and Appeal Board (TTAB), where one party "deliberately limits the geographic scope of its claim and submits it to the leave other party. ". can give rights". to another geographical area. This prepares the frame. In this context, the public use of "Taco Tuesday" is increasing. Wikipedia gives the following definition, but the identity of the author of the article is unclear ( Taco Bell).
Taco Tuesday is a tradition in many American cities to eat tacos, or in some cases a variety of Mexican dishes, usually served in a tortilla on a Tuesday night. Restaurants often offer special prices, such as "$1 fish tacos every Tuesday night."
It's popular in many major cities across the country, and especially popular in the beach towns of Southern California... Taco Tuesday is like happy hour, as restaurants vary in attendance, hours, and specials. .
LeBron James, meanwhile, applied to the TACO TUESDAY brand in 2019 for various products and services, including downloadable works, advertising and marketing services, podcasts and entertainment services. online The application was rejected for several reasons, including the possibility of confusion with the TECHNO TACO TUESDAY trademark, which is owned by a Nevada advertising and marketing services company. James' order says nothing about food services. James filed the trademark application in March 2020.
Now the fun begins! In May 2023, Taco Bell filed a cancellation lawsuit against Taco John's TACO TUESDAY registration, claiming that the trademark had become generic. Over the years we have written a lot about common "brands".
This occurs when the trademark owner fails to protect the use of their trademark by reminding the public that the trademark is still an adjective used to describe only one type of generic product or service offered. A famous example of genocide is Bayer Co. f. United Drug Co. In 1921, there was a lawsuit where Bayer lost the aspirin brand. (Judge Learned Hand held that "aspirin" had become a common use for acetylsalicylic acid and could be used by any manufacturer of the drug).
That month, Taco Bell filed another lawsuit against Gregory's Restaurant & Bar, citing the same grounds as Taco John's TACO TUESDAY. The tone of Taco Bell's cancellation requests is light-hearted (why?). On one level, Taco Bell seems to enjoy taking on the Wyoming and New Jersey businesses, even recruiting LeBron James, who himself tried unsuccessfully to take on TACO TUESDAY, to do a witty TV ad do;
Hmmm, Taco Bell just devotes its resources to the common good. Or does he want TACO TUESDAY for his restaurant services, even though he says it's a generic brand? Taco Bell says in its filings:
Q. Taco Bell supports everyone's right to celebrate and say "Taco Tuesday," no matter who they are. How are we going to let our Live Mas fans know what their favorite tacos are when they can't even freely say Taco Tuesday? All the others are less so.
What altruism! Sarcasm aside, a victory for Taco Bell will depend on the TTAB deciding whether TACO TUESDAY was generic. We will let you know.
- Adam G. Garson, Esq.
The post Free TACO Tuesday! Who is it anyway? It first appeared in Adam G. Garson, Esq. |: Lipton, Weinberger and Husick.
