Take Home Points
- A distinctive registered trademark can become generic over time meaning it is no longer protectable as a registered mark. Such a mark can also be subject to cancellation.
- Ceasing the opportunity to overcome negative press can alleviate bad press in the court of public opinion.
In 1978, the trademark TACO JOHN’S was registered with the USPTO. In 1989, the owner of the TACO JOHN’S mark received a registered mark for Taco Tuesday (Reg. No. 1572589). In 2019, the current owner of both marks, Spicy Seasons, LLC, sent a cease-and-desist letter to Freedom Edge’s Brewery Co. for using the term “Taco Tuesdays” to advertise a taco truck that parks outside the brewery once a week. Spicy Seasons had every right to do so as the owner of the registered mark, but Freedom Edge did not keep the matter private. Soon Facebook became the forum for litigating the matter in the court of public opinion via social media.
Then in March 2023, Taco Bell IP Holder, LLC, the owner of the TACO BELL mark and a competitor of Taco John’s restaurants, filed a petition with the Trademark Trial & Appeal Board (TTAB ) to cancel the Taco Tuesday mark on the grounds that the mark had become generic. The cancellation petition is tongue-in-cheek and quite humorous. For example, paragraph C under the Preface states: “The Registration potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say “Taco Tuesday” with express permission from the Registrant – simply for pursuing happiness on a Tuesday. This violates an American idea: “the pursuit of happiness.”
Rather than participate in the cancellation proceeding, this month Spicy Seasons filed a Notice of Abandonment of the TACO TUESDAY mark with the TTAB, effectively ending the cancellation proceeding. This business decision makes good sense for two reasons. First, there was considerable negative press about Taco John’s “beating” up on small proprietors. In doing so, Spicy Seasons seized on the opportunity to make amends in the arena of public opinion by announcing it was abandoning the mark and giving a substantial donation to Children of Restaurant Employees. It also challenged Taco Bell to do likewise since they will not have to spend further legal fees on the cancellation proceeding.
Second and from a legal perspective, “TACO TUESDAY” has suffered from genericide because it has become too well known to still be identified with Taco John’s. It is not unusual for an initial distinctive registered mark to become generic and lose its registered trademark status over time. Two examples are: DRY ICE (Originally a trademark of Dry Ice Corporation of America) and ESCALATOR (Originally a trademark of Otis Elevator Company). Once a mark becomes generic, it risks losing its ability to enforce its mark. Not only has the term “Taco Tuesday” been used frequently across the country but the mark was also featured in the 2014 “The Lego Movie.”
Also note that the USPTO will not register a generic mark. For example, a local store just calling itself “Boutique” for clothes would have no trademark rights to that identifier. The rationale for refusing the registration of generic marks is: since they describe common terminology for specific industries, generic terms are free to use by any brand owner in its development, marketing, promotion activities, etc.
In conclusion, Spicy Seasons chose to officially abandon its now-generic TACO TUESDAY mark. Had Spicy Seasons filed trademark infringement lawsuits, defendants could have sought cancellation of the mark by the court on generic grounds.
Waffle Wednesday anyone?
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