Perhaps Instead Of Taco Tuesday, They Should Call It Trademark Tuesday

from the tuesdays-with-tacos dept

Thu, Aug 5th 2010 3:29pm — Mike Masnick

Rose M. Welch points us to the news that Mexican food chain Taco John's has threatened a small Oklahoma Mexican restaurant, called the Iguana Mexican Grill, for daring to use the phrase "Taco Tuesday" to describe their $1 taco promotion on (you guessed it!) Tuesdays. It seems like "Taco Tuesday" is descriptive, meaning it shouldn't deserve a trademark, but you know how these things go. Taco John's claims that it's used the phrase "Taco Tuesday" since 1982 and held a registered trademark on it since 1989.

Amusingly, the article notes that a totally different restaurant, Tortilla Flats, based in California appears to hold the domain TacoTuesday.com, though it appears to be more of a banquet hall/weddings/receptions type of place. That place claims it's used the phrase since 1976 and insists that it holds the trademark on the term. A quick trip to the USPTO search suggests Tortilla Flats may think it holds the trademark, but it does not. A little investigating finds that the owner of Tortilla Flats did, in fact, apply for a trademark on Taco Tuesday (a few times), but it was not granted, and is considered abandoned.

It's also worth noting that, for whatever reason, Taco Johns seems to own "Taco Tuesday" as a trademark in 49 states. In New Jersey, the Taco Tuesday trademark is held by Gregory's Hotel in Somers Point, New Jersey. A few others have also tried to register the trademark and failed, though one (mostly) Florida-based chain, Tijuana Flats, was successful in getting a trademark on Taco Tuesdaze, instead. Now, that strikes me as being more trademarkable. Taco Tuesday, by itself, really does seem descriptive. At least with Tuesdaze, there's something distinctive about the mark.

The whole thing seems pretty pointless. Taco John's doesn't even have any locations in Oklahoma and the likelihood of confusion seems incredibly low. Even if they were in direct competition, it's hard to believe anyone would accidentally go to one of these places for Taco Tuesday, believing they were really going to the other.

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Filed Under: taco tuesday, tacos, trademark
Companies: iguana mexican grill, taco john's, tortilla flats

20 Comments

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johnjac (profile), 5 Aug 2010 @ 3:49pm

Save #TacoTuesday
http://twitpic.com/2b5npe
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Colin Samuels (profile), 5 Aug 2010 @ 3:54pm

Tweets May Have Jeopardized Some of Taco John's Trademark Protection
As Brett Trout pointed out earlier today (see http://blawgit.com/2010/08/05/is-taco-johns-twittering-its-way-into-trademark-trouble/), a tweet from Taco John's account referencing a date of first use different (by several years) from the company's trademark registration may have jeopardized their trademark to some degree. That in addition to the issues you raise seem to make this a difficult fight if Taco John's really wants to pursue it. Perhaps they could bully the Oklahoma restaurant, but considering the negative attention this has bought thus far, why would they? Hopefully, cooler heads will prevail.
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Jeremy7600 (profile), 5 Aug 2010 @ 3:58pm

Where I live, across the street, is a little Tex Mex joint that USED TO BE called Taco John's. That was until this chain made him change the name. So sad. Now its just called John's Tex Mex Eatery. I liked the name Taco Johns better (and most people who know still call it Taco Johns). There aren't any Taco Johns in this state, either.
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Anonymous Coward, 5 Aug 2010 @ 4:00pm

Up next... Wing Wednesday and Sundae Sunday
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Rose M. Welch (profile), 5 Aug 2010 @ 4:11pm

Required defense of trademark?
I loved Taco John's tweet about their copyright on the phrase Taco Tuesday.

Taco John’s holds the copyright to Taco Tuesday giving us the exclusive right to use and protect it.

Bad manners, punctuation and law, all in one tweet.

You know, it seems like most companies that defend their trademark (not copyright) do so with the intention of keeping their trademark from becoming generic, which would invalidate their claim.

A random Yahoo! search brings up over 16 million results, very few of which have anything to do with Taco John's. It seems as though this phrase has become fairly generic.

I think that the Iguana Grill would have a good case to press, if they wanted to spend the money. The sad thing is that they probably don't have the budget to fight this bullying by Taco John's.
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James Carmichael (profile), 5 Aug 2010 @ 4:47pm

I just find it weird that some people actually waste their time on that sort of issue (nothing against reporting it of course). You'd think humanity has run out of problems to solve and has nothing better to do than arguing about trademark semantics.
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The Topical Taco Troll, 5 Aug 2010 @ 5:12pm

Another food story from Mike. Any guesses what he had for lunch?
You get three guesses, and the first two don't count.

I think he had Outback Steakhouse® Aussie Cheese Fries with Ranch Dressing.
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Anonymous Coward, 5 Aug 2010 @ 5:57pm

This topic....
Makes me hungry!
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Anonymous Coward, 5 Aug 2010 @ 6:14pm

A few points:

A descriptive mark can still be protected (as long as it's not generic)

Trademark rights are acquired through use, not registration, so whether or not someone has a registration, they may still have a trademark and related rights.

The conceptually weakest trademarks are the ones that require the most enforcement to avoid losing completely.
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Anonymous Coward, 5 Aug 2010 @ 6:37pm

Is this a Friday article?
I know of a bar that has a "Taco Night" with $1.00 Tacos and $1.00 Margaritas. But in this situation, Taco John's, the company, may have abandonded the trademark. "TacoTuesday.com" was first registered 08-Aug-1997. That is significant. I would not be surprised if the trademark/IP attorneys for Tortilla Flats raced to re-file for the "Taco Tuesday" name if they caught wind that Taco John's was suing a third party for the trademark.

The reason: the attorneys would be smart enough to know that they could make a huge amount of money by contesting Taco John's filing, and forcing Taco John's to settle out of court in order to secure the name, assuming it's for somthing more than what the Taco John's Marketing Department wants. It's a bit of blackmail to be sure, but all very legal.
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Tom The Toe, 5 Aug 2010 @ 7:02pm

Taco Johns Not in Ok
I love eating at Iguana Grill. It is just up the street from me on Western Ave in OKC. Great place for many years. Taco John's is wasting time and money going after the Iguana no one here knows or cares about Taco John's or their bullying tactics.
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Anonymous Coward, 6 Aug 2010 @ 12:19am

Re: Save #TacoTuesday
So badly photoshopped it isn't even worth a giggle.
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Any Mouse, 6 Aug 2010 @ 12:27am

Re: Required defense of trademark?
I think Google could be just as telling.

'"taco tuesday"' = 118,000 results. The first two referencing Del Taco.

'"taco Tuesday" "taco johns"' = 2,520 results. Third result being this article.
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Michael, 6 Aug 2010 @ 5:57am

Descriptive...
Is it no longer descriptive if Taco Tuesday is on Wednesday? What if they do not serve tacos during Taco Tuesday?

I can see the ad now:

Taco Tuesday!
Every Thursday night from 6:30 to 6:45
25 cent wings and dollar drafts!
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Danny, 6 Aug 2010 @ 6:06am

You know what this means....
The whole thing seems pretty pointless. Taco John's doesn't even have any locations in Oklahoma and the likelihood of confusion seems incredibly low.

Chances are they are about to try to setup shop in OK and they are doing this to "clear the way" for their name.
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Rose M. Welch (profile), 6 Aug 2010 @ 6:10am

Re: You know what this means....
Then it'll be their fourth attempt, and it'll fail just like the first three times. :P
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johnjac (profile), 6 Aug 2010 @ 6:45am

Re: Re: Save #TacoTuesday
Not even a, "this poor poor soul thinks he can 'shop" giggle?
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Xan, 6 Aug 2010 @ 7:59am

Used everywhere
There are a lot of Mexican restaurants where I live in California and it seems every one of them has Taco Tuesday. I can't believe anyone would be allowed to have the trademark to that phrase.
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johnjac (profile), 6 Aug 2010 @ 11:03am

Re: Re: Save #TacoTuesday
Well the only person who matters liked enough to put it on his blog.

http://chefrp.wordpress.com/2010/08/06/tacos-not-just-for-tuesday-anymore/
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Overcast (profile), 6 Aug 2010 @ 12:40pm

Re: You know what this means....
John can shove his Tacos and his Tuesdays. I hate these corporations going after local business like that.

It's pointless. There really needs to be some law stating that any 'normal' word - like Tuesday CAN'T be a part of any trademark, etc..

It's not as catchy as they might think it is, lol.
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