Another One Bites the Dust: "Taco Tuesday" and the Doom of Genericide

By Alexandria Kerns, Associate Editor

In December 1989, a Wyoming-based restaurant named Taco Johns trademarked the slogan “Taco Tuesday.”[1] However, the enforcement of that trademark may now be in trouble according to experts, who say that the phrase has become the most recent victim of “genericide.”

Defining a Trademark

            Trademarks are recognizable words, designs, or expressions that identify and distinguish products or services to be from a particular source.[2]  Trademarks are regulated at the federal level by the Lanham Act.[3]  To increase a mark’s protection, an individual or entity can register that mark with the United States Patent and Trademark Office (“USPTO”).[4]  Filing requires filling out an application and then waiting between six months to a year to receive your trademark.[5]  If an outside party believes that they will be damaged by the registration of the trademark, they have thirty days from the mark’s publication to file an opposition to the mark.[6]  Once the trademark is valid, it remains valid so long as the mark is used in commerce, the required fees are paid, and the required affidavits are filed.[7]

If an individual or entity does not register a mark with the USPTO, they may still have common law rights to protect it.  At common law, individuals or entities who use the mark in commerce—but who have not registered the mark with the USPTO—may have rights to challenge a registration of their mark.[8]  Some Circuits have created tests to determine whether a mark to receive protections under the common law.[9]  For example, in Lucent Information Management v. Lucent Technologies, the Third Circuit balanced the following factors: (1) sales volume of the trademarked product; (2) growth trends in the geographic area; (3) the ratio of actual purchasers of the product as compared to the number of potential customers; and (4) the amount of product advertising in the area.[10]

Trademark Causes of Action

            There are three distinct causes of action for protecting trademarks: (1) dilution claims, (2) trademark infringement claims, and (3) cease and desist letters.[11]  Dilution occurs where others use the mark in a manner that takes away from the distinctive quality of the mark or causes injury to the business.[12] And trademark infringement occurs when a non-registered individual uses the trademark in commerce which is likely to cause confusion[13]

In order to state a claim under the Lanham Act for trademark infringement, a plaintiff must plead and prove, “(1) ownership of a distinctive mark or name, and (2) defendant’s use of a similar mark or name is likely to cause confusion to the source of products [or services] sold [or offered] by defendant.”[14] In analyzing infringement claim, courts consider whether the trademark is a “household name” and whether the mark is no longer descriptive of the business that received the trademark. [15]

            In addition to filing a dilution or an infringement claim, trademark owners may also use cease and desist letters to protect their rights.[16] A cease and desist letter is traditionally a tool that allows trademark owners to keep their trademark unique while bartering with others to receive compensation for its use.[17]  A cease and desist letter allows the trademark holder to demand payment, enter into an agreement for licensing rights, or pursue the sale of intellectual property rights against the infringer.[18] This is the remedy that Taco Johns decided to pursue when they sent letters to several bars in an attempt protect their “Taco Tuesday” trademark. And as Taco Johns illustrated, cease and desist letters permit a more friendly, less offensive approach to resolving the issue.  Taco Johns’ cease and desist letter stated, “we certainly appreciate our fellow community member’s enthusiasm for tacos on Tuesdays, and the term is often used inadvertently… however, it is still extremely important to us to protect our rights in this mark.”[19]

Another One Might Bite the Dust

            Experts have coined the term, “genericide,” which describes when a trademark has become so generic that it is no longer unique.[20]  Taco Johns is not the first company to fight against the doom of genericide.[21] Another victim of genericide is Escalator, which—take a guess—was the brand name of a specific manufacturer of moving staircases.[22]  Other examples include Hoover, Jacuzzi, Frisbee, Tiffany, Aspirin, and Xerox.[23]

            The damage done to Taco Johns’ Taco Tuesday trademark appears to be fatal.  Despite Taco Johns’ efforts to ensure that “Taco Tuesday” remains linked to their business, the term is not normally associated with the food chain. The phrase has become so detached from Taco Johns that LeBron James even attempted to trademark “Taco Tuesday” as his own.[24]  The USPTO denied James’s application stating, “’Taco Tuesday’ is used widely ‘to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.’”[25] This signals that the USPTO no longer identifies the phrase as a protected, enforceable mark.[26]  As such, Taco Johns most likely does not have the right to enforce this trademark and is probably limited to using cease and desist letters to protect the Taco Tuesday mark.[27]

Footnotes

[1] Bill Bostock, ‘Taco Tuesday’ is Actually Trademarked and Harshly Policed with Legal Threats from a Taco Chain Based in Wyoming, Business insider (Sept. 22, 2019; 4:00 PM), https://www.businessinsider.com/taco-tuesday-trademark-taco-johns-legal-woes-2019-8.

[2] 15 U.S.C. § 1127 (2006).

[3] Id.

[4] 15 U.S.C. §1051 (2002).

[5] Id.

[6] 15 U.S.C. §1063 (2006).

[7] 15 U.S.C. §1058 (2010).

[8] Irene Kosturkasi, Intellectual Property 101, 46-FALL Tex. J. Bus. 37,  52 (2014).

[9] Id.

[10] Lucent Info. Mgmt, Inc. v. Lucent Techs., Inc., 186 F.3d 311, 317 (3d Cir. 1999).

[11] Aris D. Suarez, Wine Not? Putting a Cork in the Semi-Generic Category of Wine, 68 DePaul L. Rev. 753, 766 (2019).

[12] Id.

[13] 15 U.S.C. §1114 (2005).

[14] Drey Cooley, Becoming a Trademark Bully: The Art of Writing Cease and Desist Letters, 72 J. Mo. B. 136 (2016).

[15] Neal A. Hoopes, Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide, 54 Tulsa L. Rev. 407, 415 (2019).

[16] Cooley, supra note 19, at 137.

[17] Id.

[18] Jill N. Johnston, Lethal Weapon: The Cease and Desist Letter in Trademark Enforcement, 14 No. 6 ACCA Docket 46, 50 (1996).

[19] Mead Gruver, A Taco Chain Trademarked ‘Taco Tuesday’ 30 years ago: Should they Still Be Able to Use It?, USA Today (Sept. 22, 2019, 4:03 PM), https://www.usatoday.com/story/money/2019/08/13/taco-tuesday-taco-johns-trademarking-tiff-wyoming-brewery/2001466001/.

[20] Hoopes, supra note 20.

[21] Rita-Marie Reid, Trademark Law and the National Organic Program, 59 IDEAIP 541, 558 (2019).

[22] Dominic A. Assopardi, Disarray Among the Circuits: When are Consumer Surveys Persuasive? 104 Iowa L. Rev. 829, 834 (2019).

[23] Id.

[24] Mihir Zaveri, LeBron James Tried to Trademark ‘Taco Tuesday,’ but Got Swatted Away, N.Y. Times, Sept. 11, 2019, https://www.nytimes.com/2019/09/11/style/lebron-taco-tuesday-trademark.html.

[25] Id.

[26] Id.

[27] See Johnston, supra note 22; Cooley, supra note 19.