Advertising Law Blog

“If one of us is not free to celebrate ‘Taco Tuesday,’ then none of us are free to celebrate ‘Taco Tuesday.’”

In a somewhat whimsical, but still serious, trademark cancellation proceeding filed on May 16, 2023, Taco Bell is seeking to cancel the registration of the trademark TACO TUESDAY, which has been owned by Spicy Seasonings, LLC (dba Taco John’s) since 1989. Taco Bell is not seeking trademark protection of its own for the phrase. Rather, Taco Bell is arguing that no one should own the phrase, and everyone should be entitled to use it.

Taco Bell states that it is “not cool” that Taco John’s owns the trademark registration for TACO TUESDAY because the phrase has become widely used by the public. “Taco Bell believes ‘Taco Tuesday’ is critical to everyone’s Tuesday. To deprive anyone from saying ‘Taco Tuesday” – be it Taco Bell or anyone who provides tacos to the world – is like depriving the world of sunshine itself.”

Under the U.S. trademark laws, a party who believes it is being or will be damaged by a registered trademark can seek cancellation of that registered trademark on various grounds by filing a Petition for Cancellation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. One of the grounds upon which a registered trademark may be cancelled is if the trademark has become “generic” for the goods or services for which the mark is registered. Another ground is that, by failing to enforce its rights in the trademark, the trademark owner has abandoned the trademark. Taco Bell’s cancellation action is based on both of these grounds.

A trademark is first and foremost an indicator of source – meaning that the consuming public who encounters the trademark in connection with goods or services associates the trademark with only one individual or entity. If a trademark becomes generic, that means the trademark has become the common name for goods or services with which it is used, and therefore the trademark is no longer associated with any one source.

One of the most famous examples of a trademark becoming generic involves the word “aspirin,” which used to be a registered trademark owned by Bayer AG. Over the years, consumers began to identify the product itself as “aspirin,” and in 1920, it was held that the word “aspirin” no longer had any trademark significance because the word had become the common name for the product itself. Other common words that started out as registered trademarks include “cellophane,” “linoleum,” “kerosene,” “flip phone,” and “escalator.”

Taco Bell is also seeking cancellation of the TACO TUESDAY trademark registration on the ground that Taco John’s has abandoned its rights in the mark by failing to enforce its rights in the mark. A trademark owner must take actions to prevent infringing uses of its mark, or it can be in danger of losing its trademark rights. Again, the reason for this is that a trademark must identify only a single source for the goods or services in the minds of the consuming public. If a trademark is used by others for the same goods or services, the public will eventually not associate the trademark with just one source. Thus, the trademark could be deemed abandoned by the trademark owner if the trademark owner fails to take actions to prevent others from using the mark.

If Taco Bell is successful in its cancellation proceeding, Taco John’s will no longer own a registered trademark for TACO TUESDAY and will have no grounds to prevent others from using the phrase in connection with the sale of tacos. Taco John’s – just like everyone else – will still be able to use the phrase, but it will almost certainly not be able to prevent anyone else from using it. No one will own the exclusive right to use TACO TUESDAY, and as Taco Bell states in its cancellation action, “‘Taco Tuesday’ should belong to everyone.”

Takeaway: Trademark owners must continuously monitor the relevant marketplace in order to be in a position to swiftly take action if a third party begins using the same mark. Trademark owners must also pay attention to how the public refers to the mark. If the public begins calling the goods or services by the trademark name, the trademark could be in danger of becoming generic. It is important for trademark owners to make sure their marks are protected at all times. Obtaining a registration is not, in and of itself, sufficient to assure trademark rights as those rights can be lost over time.