IP Law Daily, TRADEMARK NEWS—Taco Bell seeks cancellation of registrations for ‘Taco Tuesday’, (May 17, 2023)

By Ursula Furi-Perry, J.D., MBA

The fast-food company claimed that the term is commonplace, widespread, and used ubiquitously by restaurants in a generic and informational manner and does not meet the statutory definition of a trademark.

Taco Bell seeks to liberate Taco Tuesdays—at least the expression “Taco Tuesday,” that is. The company has filed two petitions with the Trademark Trial and Appeal Board, seeking to cancel two trademark registrations of the term. The two filings involve Registration No. 3621366, issued in 2009 and owned by Gregory Hotel, Inc. and Registration No. 1572589, issued in 1989 and owned by Spicy Seasonings, LLC, the predecessor of which was Taco John’s Seasoning (Taco Bell IP Holder, LLC v. Gregory Hotel, Inc., May 16, 2023; Taco Bell IP Holder, LLC v. Spicy Seasonings, LLC, May 16, 2023).

“Tacos have the unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week: Taco Tuesday. But since 1989, ‘Taco Tuesday’ has been registered as a trademark, creating potential legal consequences for those that want to use the phrase. And that’s just not right,” Taco Bell stated in a press release on its website.

Taco Bell notes in its press release that it requests no damages or trademark rights in the term “Taco Tuesday,” only “common sense for usage of a common term.” The fast food giant explained in its petitions that because of the registrations, only the two registrants have the presumptive right to use the phrase, subjecting Taco Bell and anyone else who wants to use it to the possibility of legal action “or angry letters” if they do so without the registrants’ express permission. “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,” the company noted in its filings.

In a November 2022 case, the TTAB refused an application for registration of TACO TUESDAY in connection with beer, holding that the applied-for matter did not function as a mark, and the relevant public would not perceive it as identifying the source or origin of the applicant’s beer. The proposed mark was a commonplace message widely used by a variety of sources, including in the context of beer in that case, the TTAB said.

Taco Bell’s allegations noted that the term is commonplace, widespread, and used ubiquitously by restaurants in a generic and informational manner to promote the sale and consumption of tacos, and that the registrations ostensibly preclude Taco Bell and others from using the generic, informational term “Taco Tuesday.” The registered marks do not meet the statutory definition of a trademark under 15 U.S.C. § 1127, Taco Bell argued, because they do not “identify and distinguish” the registrants’ services, nor “indicate the source” of such services and should be cancelled. The petitions included two claims: that the mark has become generic for the services described, and alternatively, that the marks have been abandoned by the registrants, causing them to have become generic.

Attorneys: Alexandra H. Bistline (Pirkey Barber PLLC) for Taco Bell IP Holder, LLC.

Companies: Taco Bell IP Holder, LLC; Spicy Seasonings, LLC

News: Trademark USPTO