Hungry for tacos?
Since 1989, "Taco Tuesday" had been a trademark owned by Taco John's, a fast-food chain headquartered in Wyoming. As time passed, this phrase gained widespread popularity and came to be commonly employed, especially by Mexican restaurants advertising their unique offers for Taco Tuesday. Recently, Taco Bell, a significant competitor of Taco John's, initiated legal proceedings to cancel the trademark for Taco Tuesday, aiming to eliminate Taco John's potentially exclusive rights to the term. The question arises: Should Taco Bell and the rest of the world have the liberty to declare their own Taco Tuesday festivities without concerns of potential adverse consequences?
In addressing this question, we begin by examining the nature and function of a trademark. A trademark is a name or word; symbol or mark; color or pattern; sound; or any combination of these that signifies the origin of products or services. Notable instances include the distinctive Coca-Cola logo, the Nike swoosh, Tiffany Blue® (representing Tiffany & Co.'s distinctive turquoise shade), and the unique blend of drums, trumpets, and strings associated with Twentieth Century Fox. Each of these examples establishes the origin of the associated product or service where the trademark is used. Furthermore, it signifies the caliber of the product or service that the public has grown accustomed to recognizing and trusting. For example, seeing a box adorned in Tiffany Blue® invokes thoughts of the upscale American retailer renowned for its exquisite jewelry and other opulent offerings. A certain level of prestige is attached to the name itself.
Similarly, when a consumer glimpses the iconic "swoosh" on a shoe, they readily identify it as a creation of Nike rather than a different footwear manufacturer. Hence, a trademark serves as a clear distinction between distinct sources of products or services. It also encapsulates a business's positive reputation and standing, often representing substantial value to the mark’s owner.
Consequently, numerous companies allocate significant resources toward enhancing the visibility of their trademarks. The greater its widespread familiarity, the better. However, is there a point where a trademark's success might be too much?
On occasion, a trademark can attain such remarkable success that it forfeits its unique character as a marker of origin. In the minds of everyday consumers, such a symbol becomes interchangeable with the product or service it represents rather than identifying the company offering that product or service.
This phenomenon is known as genericization. Essentially, the mark transforms into a common term describing the product rather than signifying the specific company supplying it. Once a trademark succumbs to genericization, its owner can no longer assert legal exclusivity over that name. The trademark morphs into a term encompassing all products resembling the initial item that bore the mark, irrespective of their source. Regrettably, this fate has befallen prominent marks like Xerox, Aspirin, and Trampoline. A trampoline, once a duly registered trademark, has now become a springy toy for jumping, available for production by any company.
When a trademark gains such widespread recognition that consumers begin employing it to denote the product or service itself rather than its source, some owners relinquish their exclusive rights to the mark instead of battling against the deluge of public usage that transforms it into a generic term. On the other hand, certain owners make significant efforts to safeguard their continued ownership of the mark.
Recall when individuals began using "Google" as a verb, such as in the phrase "I need to google directions." to describe searching for directions online using the Google search engine. This practice of verbing "Google" has only grown more prevalent over time. Despite being among the world's most valuable brands, Google is potentially heading toward genericization. To block the dilution of its name into a generic term, Google has implemented measures to ensure its name persists as a brand identifier and does not morph into everyday language as a verb or noun. Notably, the initial "G" in "Google" is always capitalized, and consumers are encouraged to use "Google" when referencing Google, Inc. and its services while refraining from using it as a term when performing internet searches.
Therefore, if you possess a widely recognized and popular trademark and aim to preserve its value and distinctive nature as a beacon of your origin – thus safeguarding against the dilution of your mark into a generic term – it is imperative to maintain vigilance over your trademark to prevent infringements, dilution, or potential loss.
To achieve this, firstly, ensure consistent utilization of the mark in your regular business activities. As per the Lanham Act, a failure to employ the mark as a source identifier for three consecutive years may result in its classification as “abandoned.”
Secondly, scrutinize how your mark is used and take immediate measures when confronted with generic-like applications of your mark – situations where your trademark is used to signify the product or service itself rather than its origin. The Lanham Act stipulates that a mark may also be deemed "abandoned" when “any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.”
Here are a few strategies you can implement to mitigate the risk of your trademark undergoing genericization:
- Refrain from utilizing your mark as a verb or noun (for example, using "googling" to refer to an online search), and consistently pair the generic name of the goods or services with your trademark. For example, consider "BuildIt Construction,” where "construction" broadly denotes the offered services. This practice establishes unambiguous brand guidelines.
- Promptly address instances of incorrect use of your trademark by third parties through appropriate measures.
- Incorporate advertising campaigns that emphasize the distinctiveness of your trademarked product(s) or service(s) compared to similar items. This proactive approach can assist in preserving your mark as a recognized source indicator within the public arena, including social media.
Now, let's delve into the matter of the Taco Tuesday® trademark. On May 16, 2023 (which happened to be a Tuesday), Taco Bell, a notably larger chain than Taco John’s, initiated a petition with the U.S. Patent and Trademark Office (USPTO) to invalidate Taco John’s exclusive ownership of the "Taco Tuesday" trademark. Taco Bell contended that this phrase had become a widely used expression and should no longer remain under the sole ownership of any specific entity, requiring permission for others to utilize it. They believed the term should be “freely available to all who make, sell, eat and celebrate tacos.”
Taco Bell contended that due to Taco John’s perceived failure or incapacity to oversee the mark's usage adequately, it had effectively transformed into a generic term representing the goods or services it encompasses. Taco Bell maintained that its objective was not to own the term Taco Tuesday but rather to "liberate" the now common phrase, enabling universal usage while fostering a sense of “happiness on a Tuesday.”
Taco Bell believed that it was inappropriate for this now-prevalent phrase to be restricted in ownership rather than being available to all without constraint. For further details, refer to the petition and the case's progression.
Taco John’s firmly refuted to the USPTO that there was “anything ‘not cool’ about independently creating a trademark over 40 years ago and obtaining a registration for that trademark.” The company was committed to robustly safeguarding its right to uphold the trademark against any potential violators, including Taco Bell. The petition and response offer an engaging read for those interested.
Nonetheless, on Tuesday, July 18, 2023, Taco John’s, the proprietor of the Taco Tuesday trademark, disclosed its decision to relinquish ownership of the trademark due to the anticipated substantial expenses involved in its legal defense. Consequently, the use of the phrase is now available to anyone across all states, except for New Jersey, where ownership remains with Gregory’s Restaurant & Bar. Taco Bell persists in this legal battle within New Jersey. Similar to the cases of Kleenex and Escalator, Taco John’s Taco Tuesday has become another casualty of genericide.
If you feel uneasy about the potential genericization of one of your trademarks and require legal advice, contact the Veterans Advocacy Law Group. Our Intellectual Property attorneys will carefully assess the use of your trademark. If there is evidence that it's evolving into a generic expression, we will guide you through the essential measures to safeguard the integrity of your well-established trademark.