Last week, Randy wrote about the “spectrum of trademark distinctiveness” and how generic terms cannot be protected as trademarks.
This week, Taco John made news when it agreed to abandon its trademark registration for TACO TUESDAY for restaurant services after a recent challenge by Taco Bell alleging that TACO TUESDAY was generic and not entitled to trademark protection.
Brand owners can learn a lot from how both Taco John and Taco Bell navigated the dispute to avoid an unsavory outcome.
Taco Bell brought a unique blend of humor and law to its Petition for Cancellation of the TACO TUESDAY registration with spicy allegations like these:
“Taco Tuesday” is a common phrase. Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say “what’s up” or “brunch”? Chaos.
If one of us is not free to celebrate “Taco Tuesday,” then none of us are free to celebrate “Taco Tuesday.” A win for Taco Bell here is a win for all. When tacos win, we all win.
The cooks in Taco Bell’s trademark kitchen seemed to uniquely understand the position of a large company taking on a competitor over a trademark. Rather than approaching with knives out, Taco Bell used some good-natured ribbing while reminding Taco John – and anyone from the public who might follow along – that it sought “no damages,” but “reason and common sense.”
Likewise, Taco John recognized that things could boil over quickly if it took a hard line with smaller businesses over use of the common phrase “Taco Tuesday.” Rather than engage in an expensive fight with Taco Bell over the viability of its TACO TUESDAY registration, Taco John seized the chance to avoid an expensive food fight and turn potential negative publicity over its effort to restrict use of the phrase into a positive.
Taco John announced that it was abandoning its registration and would be contributing money to the nonprofit Children of Restaurant Employees (CORE) that it otherwise would have spent trying to fend off Taco Bell’s challenge. In the announcement, Taco John’s CEO said, “As we’ve said before, we’re lovers, not fighters.” Taco John then issued its own challenge to Taco Bell (and other competitors) that may benefit from the unfettered use of “Taco Tuesday”:
Too often, competitors take a scorched-earth approach to trademark disputes. Taco John and Taco Bell provide a recipe for how brand owners can use a soft approach to achieve an outcome that shines a positive light on both parties. Now we can focus on more serious issues, like taco neck.