It’s Not Too Early to Discuss Taco Tuesday
Several outlets reported last week that Taco Bell filed Petitions to Cancel with the Trademark Trial & Appeal Board (“TTAB”) regarding registrations owned by Taco John’s (more accurately, Spicy Seasonings, LLC) and Gregory Hotel, Inc. See, e.g., https://abovethelaw.com/2023/05/taco-bell-taco-tuesday-trademark/. Specifically, Taco Bell alleges that the two registrations for TACO TUESDAY are generic and/or the registrants’ abandoned any rights in those marks by allowing numerous third-parties to use the term TACO TUESDAY.
Per the Trademark Manual of Examining Procedure, “[g]eneric terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.” TMEP §1209.01(c). A generic term “does not meet the statutory definition of a mark because it is incapable of denoting a unique source.” Id. “Thus, generic terms are not registrable on the Principal Register under §2(f) or on the Supplemental Register.” Id.
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i). The TTAB considers two questions “to determine whether a designation is generic:
(1) What is the genus of goods or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods or services?”
Id.
As a brief aside, a few years ago, I published an article and spoke on several interesting trademarks. In relevant part, I discussed the USPTO’s rejection of an application for the mark TACO TUESDAY filed by LBJ Trademarks, LLC (think, the NBA’s all-time leading scorer). The application (U.S. Serial No. 88579771) identified the following goods and services:
Class 9: Downloadable audio/visual works
Class 35: Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels
Class 38: Podcasting services
Class 41: Online entertainment services, namely, providing a website featuring non-downloadable videos, and social media posts in the field of sports, entertainment, current events and popular culture
The mark was used in connection with a series of YouTube videos with LeBron James and his friends/family. See https://www.youtube.com/watch?v=9YRDVaW1qA4. The application was rejected on the ground that the mark TACO TUESDAY failed to function as a trademark. The USPTO alleged that “‘Taco Tuesday’ is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment. . . . Terms and expressions that merely convey an informational message are not registrable. . . . The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” The USPTO attached evidence from several websites to show the prevalent usage of the term among restaurants.
To this day, I disagree with that rejection. I am sure the USPTO would have no challenge finding ample evidence of prevalent usage of the term “apple” among farmers and members of the public when describing produce. That evidence would not prevent the public from identifying a company from Cupertino, California that sells computers and other technology products.
I digress. It will be interesting to see how the cases between Taco Bell and the two registrants unfold. Does the term “Taco Tuesday” meet the definition of generic? I’m not sure. However, my gut reaction is that “Taco Tuesday” likely fails to function as a trademark and there is likely ample evidence of restaurants and other businesses using that term in a way that does not identify the registrants.
When adopting a name or other brand element, consider its distinctiveness (e.g., generic, descriptive, suggestive, arbitrary, fanciful). Remember, distinctive marks (e.g., suggestive, arbitrary, fanciful) are easier to protect and easier to enforce than generic terms and descriptive marks.
