Short version - Taco John’s, a Mid-West chain, has trademarked the term “Taco Tuesday.” They periodically send out C&D letters to other restaurants using the phrase. But there is plenty of evidence that the phrase was in general use long before Taco John’s was even founded. If TJ’s sent a letter to Baker’s, for example, could Baker’s just respond with “FOAD?”
Can any law types knowledgeable in trademark law bring me up to speed?
heh everyone in so cal knows taco Tuesday from the fact for the last decade or so a regional chain named del taco has 3 tacos for 1.29 on Tuesday originally .99 but inflation over the years ……
I can’t find a registration for “Taco Tuesday”.
Even if they had one, the “Taco” part would be disclaimed and uninforceable since it is descriptive of the product.
Tacos? No. Everybody from the Bay Area knows Tuesday was Red’s Tamales Day.
The lil’wrekker said taco Tuesday leads to fat Tuesday. Just saying.
“Tuesday” had me scratching my head. Theoretically there is no reason why “Tuesday” can’t be trademarked, but when you put it together with Taco to form Taco Tuesday it describes an event which, in context, probably would be refused registration. I would hate to have to try and enforce such a trademark. You’d get a lot of FOADS, to answer the OP. Only the lawyers would win. Yay?!
unenforceable I can’t spell
I know that Taco John’s was promoting Taco Tuesday at least as far back as '83; that’s when I went to college at UW-Madison, and they ran ads on all of the local radio station every Tuesday with the promotion. (Actually, to be accurate, they ran the exact same ad, over and over, every Tuesday: “Taco Tuuuuuesday! Taco Tuuuuuuesday! Two hardshell tacos, just 99 cents!”)
That said, if the Thrillist article is right, the fact that the company has been all over the board on their stories as to their history of using the phrase doesn’t look terribly good.
Alliteration.
Onomantopia.
Please educate me, because it seems to me that exactly the opposite would be true. I can’t imagine how “Tuesday” could be trademarked; it’s a day of the week. But “Taco Tuesday” could, in theory at least, work, in the same manner as “Super Bowl” (though it would almost certainly be unenforceable, and would probably be refused on that ground).
Do I have a fundamental misunderstanding of trademark law?
You saying exactly what I thought, so I’d like to see a lawyer come in with an answer.
The way I understand it is that Taco John’s has basically said they’re on the top of “Taco Tuesday” hill, and daring anyone to knock them off.
It doesn’t mean that the trademark is enforceable, it just means that someone has to have the motivation and wherewithal to sue them to get them to quit saying that. And the longer it goes on unchallenged, the stronger their position becomes.
It seems you have a fundamental misunderstanding of trademark law. But that’s OK.
It is a bit tricky. It’s bedtime now, so will reply tomorrow.
I eagerly await your response and am wondering how someone who lives in Osaka is an expert at U.S. trademark law…
Well, son of a gun, I found it!
Taco John’s does indeed hold a trademark on the two-word phrase “Taco Tuesday” in 49 states (a restaurant in New Jersey has a claim in that state.) And the trademark goes back to 1989.
Now I recall “taco Tuesday” referring to high school and college cafeterias foisting bad ground beef, vaguely Mexican seasoning, and stale shells on students each week, but I guess no restaurant chain had the balls to trademark it as a slogan before Taco Johns (and Gregory’s Restaurant and Bar in Somers Point, NJ)
Also, note that the trademark does not cover “taco” or “Tuesday” separately, and that it only covers food services. There are separate trademarks for “Taco Tuesday” fanny packs, t-shirts, gaming machines, plates and other assorted stuff.
I suppose I could use the phrase “Taco Wednesday” at my joint and not worry about Big Taco coming to get me.
We always preferred “Softshell Saturday”. Often shaid with a lishp. It never caught on, despite softshells being better tasting. We had to drive all the way to Dubuque for our college TJ fix. Now they have one within walking distance of the school. It ain’t fair.
Ah, TJ. Loves me them Potato Oles. I just got back from five days in Wisconsin, and I went to TJ three times.
Some points:
Any word or phrase can theoretically be a trademark for something, even “Taco,” or “Tuesday,” or “Taco Tuesday.”
A word or phrase must be distinctive with respect to the goods and services for which it is a purported trademark in order to be a trademark.
A generic term can never be distinctive for the goods or services for which the term names. Thus, “taco” can never be distinctive for a taco. “Tuesday” can never be distinctive for Tuesday.
A term that is not distinctive, but is merely descriptive, can acquire distinctiveness over time. So if “Taco Tuesday” is a descriptive term for a service that offers tacos on a Tuesday, if it is used for extensive period of time, and the purported trademark owner can establish that the consuming public has learned to associate the term “Taco Tuesday” for its specific goods and services, then it theoretically establish trademark rights.
A registration is not a trademark. A registration is a type of (pretty good) evidence of enforceable trademark rights. But if a term actually is generic, then a registration won’t save it.
The opposite can also happen: a term that was originally a specific product name can become so commonly used that courts find it to have become generic, and free for anyone to use. For example aspirin, kleenex, band-aid, etc. This allows their competitors to use that term in advertising their own similar product. To prevent this, companies will often send out letters to people or companies using the term as generic, either requesting they stop using the term (like in this case) or, for written material, requesting that the trademark symbol ™ alongside the term.
Yes, a trademark can become a generic term but some of your examples are not examples of genericization. Kleenex and Band-Aid are still enforceable trademarks.