Taco Tuesday
Click here to read an important update this article - Taco John's dropped their trademark!
By Ed Avis
Is Taco Tuesday a thing at your restaurant? Thousands of Mexican restaurants promote Taco Tuesday as a day that customers can grab a cheap lunch or dinner.
But many restaurants that use the phrase “Taco Tuesday” have received cease-and-desist letters from Taco John’s, the chain that has held a trademark on the phrase since 1989. The letters are cordial: “…I respectfully request that you stop using the phrase ‘Taco Tuesday’ on all advertising….” read one such letter, in part. Nevertheless, restaurant owners receiving the letter are naturally concerned.
“Taco John’s is the 800-pound gorilla here, and when they’re sending you a letter on their letterhead saying to stop using ‘Taco Tuesday,’ some small guy in a taqueria is probably just going to change the name of their Tuesday special,” says Kevin Grierson, a partner and intellectual property co-chair at law firm Culhane Meadows.
Will You Be Sued?
If a taqueria owner gets the letter and ignores it, will he or she be sued by Taco John’s?
Probably not. A search of the Public Access to Court Electronic Records (PACER) system, which provides data about lawsuits filed across the country, reveals that Taco John’s has filed only three trademark infringement cases since 1989, the latest in 2006.
That 2006 case, which involved the use of “Taco Tuesday” by Taco del Mar restaurant, was “voluntarily dismissed,” which means it was settled. It’s not clear if the two previous cases, in 1989 and 1997, were about “Taco Tuesday,” because the court documents are unavailable online.
We asked Taco John’s public relations representative Marilyn Perkins several questions about this situation, including how many restaurants they have sued for infringing on their Taco Tuesday trademark, but her reply was: “Unfortunately, Taco John’s does not have a statement they’d like to release at this time.”
Probably Unenforceable
Taco John’s ownership of the trademark is undeniable. However, not all trademarks are equally enforceable, notes Jeremy Peter Green, a trademark attorney who regularly represents restaurants in trademark issues.
“As long as you’re using the phrase ‘Taco Tuesday’ to describe the literal day, and not using it as a brand name, it’s pretty safe that you’re not going to lose a court case,” Green says.
Grierson concurs: “Infringement of a trademark normally means you are creating a likelihood of confusion of between our trademark and your use of it. But that’s nonsense in this case. No one thinks the taqueria down the street is part of Taco John’s just because they advertise ‘Taco Tuesday.’”
Curiously, basketball superstar LeBron James tried to trademark the phrase “Taco Tuesday” this past summer, but his request was denied. The reasons the trademark examiner gave for rejecting his claim are pertinent to the Taco John’s situation, Green says.
“The trademark examiner cited a lot of restaurant uses of ‘Taco Tuesday,’ so he inadvertently made the case that it’s not really a protectable trademark,” Green says. “LeBron James gave everybody a very convenient source to cite if they’re defending themselves against Taco John’s.”
Furthermore, Green notes, the examiner did not even mention Taco John’s trademark of the phrase in his rejection of James’ claim.
So, even though Taco John’s holds a legitimate trademark, it wouldn’t necessarily win an infringement case against a restaurant just promoting Taco Tuesday. And were they to file such a suit and lose, the defendant could ask the court to cancel the registration, Grierson says.
There also is a process in the U.S. Patent and Trademarks Office to ask that a trademark be canceled, Grierson says.
“One reason for a mark being canceled is that it has become generic,” he says. “That would probably be a viable argument in this case. But you would need somebody with the resources to challenge the mark.”
Avoiding the Hassle
Despite the fact that Taco John’s is evidently not suing restaurants that promote Taco Tuesday, just the fear of a lawsuit is probably keeping many other restaurants from using the phrase.
“From a strictly legal standpoint, I don’t think Taco John’s would be able to enforce a claim for Taco Tuesday,” Grierson says. “On the flip side, when you get a cease-and-desist letter from a national chain, the question is, ‘How much money do you want to spend to prove you’re right?’ Most folks getting these letters will figure out a new name for their Tuesday special, because they’re worried about being sued and don’t want to spend the money defending themselves.”
Click here to read an important update this article - Taco John's dropped their trademark!
Ed Avis is the publisher of el Restaurante. Contact him at edavis@restmex.com