Following Coverage Of Trademark Dispute, Lawyer Demands Image On News Story Be Taken Down As Infringing

from the no-it-isn't dept

There must be something in the air to do with tacos these days. On the heels of our post about the silly efforts chain Taco John's is undertaking to retain sole trademark ownership of the ubiquitous "Taco Tuesdays" phrase, we have another trademark dispute involving everyone's favorite hispanic delicacy. In this instance, however, the focus of this post won't be on the dispute between the two restaurants, but we can start there anyway.

A Vermont business that is only a few months old is changing its name following a cease and desist notice from another restaurant group clear across the country.

The owner of a 10-week-old taco business said he'll change its name after a California-based restaurant's lawyer claimed it infringes on theirs. Tito Garza, 29, of Brattleboro, received a cease-and-desist notice last week from a Los Angeles trademark lawyer demanding he stop using the name, Tito's Tacos of Vermont.

The lawyer, Greg Victoroff of Greg Victoroff & Associates, said "Tito's Tacos is the exclusive registered trademark of Tito's Tacos Mexican restaurant in Culver City, California."

Garza said he doesn't have the resources to tangle with a law firm in California, so he'll change the name of his venture, though he hasn't decided what yet.

So, yeah, that's annoying. A guy can't name his restaurant after himself because of a trademark owned by another company clear across the nation. We could spend some time discussing whether there is any actual customer confusion to be had here, or whether or not a trademark consisting of a common name and a common food was worthy of such protection. But, instead, let's focus on the other part of this trademark dispute.

It seems that the lawyers for the Tito's Tacos in California are a bit confused as to how trademark law works in conjunction with the basic federal laws governing how the press operates. The link above comes from the Brattleboro Reformer, a news group focusing on local news in Vermont. By reporting previously about a local food festival, and including images of Tito Garza selling his tacos at it, the lawyer for Tito's Tacos seems to think it too has violated his client's trademark rights.

Meanwhile, Victoroff also has requested that the Brattleboro Reformer remove from its website a picture of Garza selling tacos at the Brattleboro BaconFest because his Tito's Tacos banner hangs in the background. The photo, taken on Saturday, Sept. 17, also was the main image on the front page of the Monday, Sept. 19, Reformer.

"The news story and photograph appearing at [the Reformer's website] ... is infringing the Tito's Tacos trademark by displaying and distributing content referring to a food vendor named Tito Garza using the Tito's Tacos trademark in Brattleboro, Vermont, and elsewhere in violation of state and federal trademark law," Victoroff wrote in an email to the Reformer.

Nothing about that is remotely correct. To start with, the news group can simply shout "fair use!" and walk away from the threat, because news organizations have a longstanding right to include images of the subjects on which they report. Imagine if, in an age where media is dominated by the image, a company could demand takedown of any trademark-related images in this manner. Reporting would breakdown entirely, particularly on television. Add to that that the one allegedly violating the trademark in question is Tito Garza, not the news group, and one wonders how this threat could get any dumber.

Unsurprisingly, The Reformer has declined to remove the image.

"The photo in question depicts a local food vendor whose sign identifies his business as Tito's Tacos," wrote Rutberg. "While this use of the name Tito's Tacos may indeed infringe on your client's registered trademark, it is our opinion that the photo in question does not constitute an infringement of your client's trademark. At best it is a 'fair use' of trademarked material."

Rather than accept this lesson and lick his wounds, Victoroff actually responded by insisting the paper was wrong and again demanding the image be taken down. It hasn't been, of course.

One wonders if this ignorance of the law might give Tito Garza pause as to whether this is a fight he can win.

Filed Under: fair use, greg victoroff, reporting, tacos, trademark
Companies: tito's tacos

Taco John's Continues To Wage A Long-Lost Trademark War To Keep 'Taco Tuesday' From Becoming Generic

from the trademark-tuesday dept

Way back in 2010, Mike wrote about how the Taco John's restaurant chain had threatened a small restaurant in Oklahoma for daring to use the phrase "Taco Tuesday" in a promotion for cheap tacos on...you know...Tuesdays. Taco John's did indeed have a trademark on the term in 49 of our 50 states, with the exception being New Jersey, because life is strange. The question at the time, as tends to be the question in most trademark disputes, was whether or not there was any potential customer confusion to worry about. Given the somewhat descriptive nature of the phrase, not to mention its widespread use both commercially and in common parlance, the whole thing seemed rather silly.

Six years does little to change things, it seems. Taco John's recently fired off a cease and desist notice to the Old Fashioned Tavern and Restaurant in Wisconsin for using the phrase.

For almost a decade, the restaurant had sold $2 tacos on Tuesday night. Other restaurants and bars in the area had similar promotions, and in cities like San Francisco and Los Angeles, Taco Tuesday specials are as plentiful as yoga classes.

But the author of the letter claimed that “Taco Tuesday” was a federally registered trademark that belonged to Taco John’s, a chain of around 400 Mexican-style fast food restaurants. And as Old Fashioned manager Jennifer DeBolt told the local Cap Times, they quickly realized that “the law firm is completely legit.”

And, because this kind of trademark bullying totally works, the restaurant decided to change the name of Taco Tuesday and set up a poll on its Facebook page for fans of the business to suggest new names. Those suggestions are certainly creative.

• Cease-and-Desist Taco Special
• Trademark Tyrant Taco Day!
• Edible Taco Tuesday
• Tacos on the Square
• Taco-tastic Tuesday
• Dy-no-mite Taco-nite
• Ye Old Fashioned Taco Tyme
• Corporate-free Taco Night
• Totally Renamed Tuesday
• Wistaco Day
• The Tuesday Special That Shall Not Be Named

You get the idea. Taco John's trotted out the usual excuses about the need to protect this trademark, lest it devolve into generic status. Simultaneously, it also seems to fully understand exactly how generic the term has become.

“Over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies,” says Billie Jo Waara, the chief marketing officer at Taco John's. (Waara can’t reveal details, but we suspect the pharmaceutical company used “Taco Tuesday” in a drug ad.) “We also recognize that the unauthorized use [of Taco Tuesday] is prolific, and we do our best to communicate ownership. It’s a challenge for sure.”

So prolific, indeed, that it would be silly at this point to claim that there is any actual customer confusion for which to be concerned. Should the average person drive down the street in their hometown and see a tavern advertising "Taco Tuesdays!", that person is not going to think of Taco John's at all, let alone wonder whether there was some kind of affiliation. That's because there is nothing in the phrase that acts as a source identifier. It's mostly descriptive, involves mostly generic words, and the company's protectionism typically induces a sneer.

The biggest threat to Taco John’s ownership over Taco Tuesday, however, is not a populist backlash. It’s that so few people know about its claim. When the Los Angeles Times asked a waitress at a Mexican restaurant about the trademark issue, she responded, “Give me a break. Everybody has Taco Tuesdays.” And that was twenty years ago.

Taco Tuesday belongs to the people now. It'd probably be best for everyone if Taco John's just gave it up.

Filed Under: generic, taco tuesday, tacos, trademark
Companies: old fashioned tavern & restaurant, taco john's

DailyDirt: USA! U! S! A!

from the urls-we-dig-up dept

Who says America doesn't make anything anymore? The US has created some incredible food combinations. For instance, there's the classic Daily Show example of Jimmy Dean's Pancakes & Sausage on a stick. Here are just a few more examples of that kind of "awesomeness" for your entertainment.

• The Candwich, the sandwich in a can, can be ordered online and includes a nice little handi-wipe in case you're a messy eater. If only there was an Earl of Candwich behind this invention... [url]
• Taco shells made out of Doritos?!? Taco Bell really knows its audience. FYI, Arch West (RIP) created Doritos, inspired by a similar snack he found in San Diego. [url]
• Ben & Jerry's sells a flavor called Schweddy Balls. NPR staff members actually say it's delicious. [url]
• To discover more food-related links, check out what's floating around in StumbleUpon. [url]  

By the way, StumbleUpon can also recommend some good Techdirt articles, too.

Filed Under: candwich, schweddy balls, tacos
Companies: ben&jerry's, doritos, taco bell

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

from the tuesdays-with-tacos dept

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.

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