Trademark question - "Taco Tuesday"

[Acsenray]

@Tim_T-Bonham.net

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 Aspirin is an enforceable trademark in several countries outside the U.S.

As to the failure to enforcement issue, companies are responsible for objecting to infringing uses.

The bit about the TM symbol is meaningless. The TM symbol as well as the Circle R symbol, is only significant if it is used by the trademark owner. It has no legal significance if used by someone else. So demanding that other people mark the trademark that way has no legal significance.

[snfaulkner]

@kunilou

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.

Taco Wednesday is being used by Springfield Elementary.

[Kent_Clark]

@snfaulkner

Taco Wednesday is being used by Springfield Elementary.

But they don’t use actual meat in their tacos.

[Chronos]

One point to keep in mind is that sending out cease and desist letters is cheap, but lawsuits are expensive. If Taco John’s catches someone else using “Taco Tuesday”, why not send them a letter? What do they have to lose? But if someone gets that letter and keeps on using the term (with or without an explicit FOAD response), what then? The next step would be a lawsuit, but that carries real costs and real risks, so it’s unlikely that Taco John’s would take the chance.

[Isamu]

@kunilou

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.

You do know that TESS searches don’t link like that, right? Can you provide the trademark registration number please?

[Acsenray]

Another thing about cease and desist letters is that it only matters if you are sending them to competitors and the use in question is potentially infringing.

[Kent_Clark]

@Isamu

You do know that TESS searches don’t link like that, right? Can you provide the trademark registration number please?

Serial no. 73788518

Reg. number 1572589

[Acsenray]

@Isamu

You do know that TESS searches don’t link like that, right? Can you provide the trademark registration number please?

TACO TUESDAY
Registration No. 1213696 DEAD
— Issued Oct. 19, 1982
— For restaurant services
— First used in commerce Feb. 6, 1979
— To Gregory Hotel, Somers Point, N.J.
— Cancelled April 21, 1989, for failing to file declaration that the trademark has been in continuous use for five years

TACO TUESDAY
Registration No. 1899301 DEAD
— Issued Oct. 19, 1982
— For restaurant services
— First used in commerce Feb. 6, 1979
— To Gregory Hotel, Somers Point, N.J.
—Cancelled April 21, 1989, for failing to file declaration that the trademark has been in continuous use for five years

TACO TUESDAY
Registration No. 1572589
— Issued Dec. 19, 1989
— For restaurant services in entire U.S. except New Jersey
— First used in commerce 1979
— Taco John’s Seasonings L.P., Cheyenne, Wyo.

TACO TUESDAY
Registration No. 3621366 LIVE
— Issued May 19, 2009
— For restaurant services in New Jersey
— First used in commerce Feb. 6, 1979
— To Gregory Hotel, Somers Point, N.J.
— Concurrent with Registration No. 1572589

THE OFFICIAL PLATE OF TACO TUESDAY
Registration No. 5423868 LIVE
— Issued March 13, 2018
— For dinnerware
— First used in commerce Jan. 1, 2018
— To Jarratt Industries LLC, Fayetteville, Ark.

TECHNO TACO TUESDAY
Registration No. 5505122 LIVE
— Issued June 26, 2018
— For concert promotion and related services
— First used in commerce May 20, 2014
—To Mntra Entertainment LLC, Las Vegas, Nev.

[Acsenray]

@kunilou

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.

The registration goes back to 1989. The registration isn’t the trademark. There are plenty of enforceable trademarks that are not registered.

The trademark goes back to the first use in commerce, which is claimed as 1979. Trademark rights are created by use in commerce and they are created when the first use in commerce happens, not when a registration might be issued.

[Isamu]

@kunilou

Serial no. 73788518

Reg. number 1572589

Thanks! What did you search under? For others interested, here are the details:

==========================
Word Mark TACO TUESDAY
Goods and Services IC 042. US 100. G & S: RESTAURANT SERVICES. FIRST USE: 19790000. FIRST USE IN COMMERCE: 19790000
Mark Drawing Code (1) TYPED DRAWING
Serial Number 73788518
Filing Date March 23, 1989
Current Basis 1A
Original Filing Basis 1A
Published for Opposition September 26, 1989
Change In Registration CHANGE IN REGISTRATION HAS OCCURRED
Registration Number 1572589
Registration Date December 19, 1989
Owner (REGISTRANT) TACO JOHN’S SEASONINGS LIMITED PARTNERSHIP COMPOSED OF HAROLD W. HOLMES AND J.F. WOODSEN, BOTH ARE UNITED STATES CITIZENS LIMITED PARTNERSHIP WYOMING 808 WEST 20TH STREET P.O. Box 1589 CHEYENNE WYOMING 820031589
Attorney of Record Daniel J. Block
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “TACO” APART FROM THE MARK AS SHOWN
Type of Mark SERVICE MARK
Register PRINCIPAL
Affidavit Text SECT 8 (6-YR). SECTION 8(10-YR) 20090211.
Renewal 2ND RENEWAL 20090211
Other Data REGISTRATION IS RESTRICTED TO THE AREA COMPRISING THE ENTIRE UNITED STATES, EXCEPT FOR THE STATE OF NEW JERSEY. CONCURRENT USE PROCEEDING NO. 972 WITH SERIAL NO. 73/816,022.
Live/Dead Indicator LIVE

=============================

So yes, the right is restricted to the stylized design as shown and doesn’t extend to cover other useage of “Taco Tuesday”.

What might be confusing to some of you is that trademark is different than copyright in that trademark rights consist of two limiters - (1) the trademark itself and (2) the goods or services to which it is applied. That is why you can have two (or more) “Shell” trademarks - one for gasoline and one for handbags.
“Tuesday” can be a registered trademark for handbags. Can it also be a registered trademark for Tacos? Sure. But that won’t prevent people from using the word Tuesday, in a non-trademark sense, to advertise their bargains that are available on Tuesdays.

Me? I have a law degree and am a licensed lawyer and have over 20 years of IP law experience directing the filing and prosecution of trademarks and patents in every major economic zone in the world. I’ve filed more than 10,000 trademark applications in Japan alone and fought them into registration or watched them die.

IP laws are pretty similar for each country in the world that is a party to the Paris Convention and Madrid Protocol, so similar in fact that it is important to know where and how they are different, not where and how they are similar. Nintendo, Toyota and a few other household names trust me. I’ve been out of the game for a bit, but still know what I’m talking about.

[Acsenray]

@Isamu

So yes, the right is restricted to the stylized design as shown and doesn’t extend to cover other useage of “Taco Tuesday”.

Why do you say this? It is labeled a “typed drawing,” which to my understanding is the former term for “standard character mark,” which is a word mark that claims the term as a trademark regardless of any stylized representation.

There is no indication on that registration so far as I can tell that would limit the scope of the trademark to the “stylized design.” In fact, there is no stylized design. There is only a typed drawing, which, as I said, is just words.

The limitation “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “TACO” APART FROM THE MARK AS SHOWN” refers not to any stylized design (because it’s not a design mark) but rather it disclaims the word “taco” by itself. So, the trademark holder can’t object to a restaurant that uses the term “taco” for restaurant services apart from the entire phrase “Taco Tuesday.”

But that won’t prevent people from using the word Tuesday, in a non-trademark sense, to advertise their bargains that are available on Tuesdays.

I believe it would prevent anyone within the designated territory from using “Taco Tuesday” as a name for restaurant services, including when those services covered selling tacos on a Tuesday.

[Isamu]

@Acsenray

Why do you say this? It is labeled a “typed drawing,” which to my understanding is the former term for “standard character mark,” which is a word mark that claims the term as a trademark regardless of any stylized representation.
.

Fair enough, I just looked at the image and it seems stylized. Usually the USPTO would write “Typed Drawing” in the place where an image of a stylized mark would have been. Here there is an image of the mark. A bit confusing.

[Isamu]

@Acsenray

I believe it would prevent anyone within the designated territory from using “Taco Tuesday” as a name for restaurant services, including when those services covered selling tacos on a Tuesday.

I believe it might. But I know it won’t stop restaurants from using the word Tuesday or Taco in general advertising.

[Isamu]

@Acsenray

TACO TUESDAY
Registration No. 1213696 DEAD
— Issued Oct. 19, 1982
— For restaurant services
— First used in commerce Feb. 6, 1979
— To Gregory Hotel, Somers Point, N.J.
— Cancelled April 21, 1989, for failing to file declaration that the trademark has been in continuous use for five years
…

Got it

Word Mark LIVE EVERY DAY LIKE IT’S TACO TUESDAY.
Goods and Services (ABANDONED) IC 043. US 100 101. G & S: Restaurant services
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 88053398
Filing Date July 26, 2018
Current Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) gelette ivany, jayde INDIVIDUAL UNITED STATES 711 Cole Avenue, PH 11 Los Angeles CALIFORNIA 90038
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator DEAD
Abandonment Date August 29, 2018

[Acsenray]

@Isamu

Fair enough, I just looked at the image and it seems stylized. Usually the USPTO would write “Typed Drawing” in the place where an image of a stylized mark would have been. Here there is an image of the mark. A bit confusing.

The database reflects many changes in practice and technology over time, so you might see the phrase “Typed Drawing” or you might see a very low resolution image of what the applicant submitted. The key is where it says what kind of mark it is.

[silenus]

Does prior continuous usage have any effect? Because Baker’s has been using the phrase in advertising since 1976, and continues to to this day. TJ didn’t claim to use the phrase until 3 years after that.

[Isamu]

@Suburban_Plankton

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?

Well, to start with, “Tuesday” is trademarked, in the USA and in many other countries. So your understanding must be flawed if you think it can’t be trademarked.

It took me about three years of working full-time in trademark law before I felt confident that I understood it. There are many tricks and turns and what you are stuck on is the very first rung of the ladder. I’m not confident I can teach you it on this message board. Ascenray made a list of numbered sentences above that are all true, but not easy to fully understand.

[Isamu]

@silenus

Does prior continuous usage have any effect? Because Baker’s has been using the phrase in advertising since 1976, and continues to to this day. TJ didn’t claim to use the phrase until 3 years after that.

This is a very country-specific issue. You basically have two types of systems (a) first to file/register jurisdictions and first to use jurisdictions. US is called a first to use system so I imagine it has some bearing on the issue at hand, as you seem to be getting at. How much first use matters in the US I’ll leave to others to say.

But even in first to file/register countries, ‘first to use’ can still play an important role in fringe cases.

[wolfman]

@kunilou

I suppose I could use the phrase “Taco Wednesday” at my joint and not worry about Big Taco coming to get me.

You could go with Thaco Thursday, and double up on Mexican food enthusiasts with speech issues, and 80’s/90’s D&D fans at once.

[Acsenray]

@silenus

Does prior continuous usage have any effect? Because Baker’s has been using the phrase in advertising since 1976, and continues to to this day. TJ didn’t claim to use the phrase until 3 years after that.

If we are talking about a situation in which a trademark examiner is determining whether to issue a registration to Taco John, then he or she will look for evidence that Taco John’s use of the term would create a likelihood of confusion with a senior user’s enforceable trademark.

So the question will be is Baker using the term as a trademark and would the two trademarks clash.

The examiner will also look at Baker’s use to see if that is evidence that the term Taco Tuesday is understood as a generic term by the public for the services listed in Taco John’s application.

If the examiner allows publication of the application then Baker can try to make those same arguments (likelihood of confusion and genericness) in an opposition proceeding.

At this point, with registration already in hand, Baker has the option for seeking cancellation of the registration at the PTO or in court alleging likelihood of confusion or genericness.

If Taco John sues Baker for infringement, Baker can counterclaim using the same arguments.

In any of those proceedings, if Baker’s use doesn’t amount to a trademark use or the evidence doesn’t show that the term is generic, then Taco John will have an enforceable trademark.