Taco Bell recently filed cancellation proceedings in the USPTO Trademark Trial and Appeal Board (TTAB) seeking cancellation of the mark “TACO TUESDAY”. See the full story Here.
This mark is owned by two different entities and subject to a co-existence agreement whereby one company owns the rights only in New Jersey, and the other company owns the rights in all other states.
The TACO TUESDAY mark has been registered since 1989. Since it has been registered for more than five years, the grounds to cancel it are more limited. In order to cancel a mark that has been registered for more than five years, you have to show: “the mark has been abandoned; the registration was obtained by fraud; the mark is generic; the mark is geographically deceptive, the mark falsely suggests a connection with a person’s name or identity, the mark comprises matter that, as a whole, is functional, or the mark comprises the flag of the United States, or the name of a living individual without the individual’s consent.” TTABMP 307.01.
In this case, Taco Bell is alleging that the phrase TACO TUESDAY is ubiquitous and a “very commonplace term that refers to having tacos and drinks on that particular day of the week.” In re Monday Night Ventures LLC, Ser. No. 88817107 (TTAB, Nov. 28, 2022), at 21. As such, Taco Bell argues that the TACO TUESDAY mark does not act as a source identifier. Pursuant to 15 USC 1127, a trademark is meant to “identify and distinguish” goods and “indicate the source of the goods[.]”
Taco Bell says they are fighting this fight for the public as this is such a common-place phrase, and everyone should have the rights to use this “generic, informational term”.
The Petition to Cancel is quite casual and almost comical in some regards, stating that owning the rights to TACO TUESDAY is “Not cool,” “That’s not right,” and “This violates an American idea: ‘the pursuit of happiness.'” They even go as far to state that “To deprive anyone of saying ‘Taco Tuesday’ – be it Taco Bell or anyone who provides tacos to the world – is like depriving the world of sunshine itself.”
This is obviously hyperbole, but this is a very interesting case with sound legal arguments. The TTAB will looking at whether the TACO TUESDAY mark is in fact generic, what efforts the owners of the mark have taken to police the mark, if any, and what is the public’s perception of the mark, meaning do people associate the mark with the owners?
A case such as this can have wide effects as we are looking at a case here where someone owns a mark that is very widely used, and should they be able to own that right? We will monitor this matter closely.