Did you know Taco Bell filed a petition to cancel the federal trademark registration of “Taco Tuesday”? Of course you did because every outlet from the Washington Post to the local news has covered this story. Before this week, you might not have even realized Taco Tuesday was a federally protected trademark. Now it’s all over the place in a thousand stories that all put Taco Bell front and center.
Litigation as free advertising.
It doesn’t hurt that Taco Bell’s petition embraces light-hearted fun. The first substantive paragraph ends with “Not cool.” Taco Bell’s attorneys from Pirkey Barber balanced a substantive legal filing with enough mainstream quotability that the client can use the documents to advance its messaging. In this case, “we’re the cool company that wants everyone to enjoy Taco Tuesday.”
Not that Taco Bell’s case is more fluff than merit. People constantly toss around the phrase Taco Tuesday without thinking about Taco John’s. Or, for people in New Jersey, without thinking about Gregory’s Restaurant and Bar, the company that owns the trademark there. If the mark isn’t remotely recognizable as Taco John’s (or Gregory’s… why does New Jersey have to be weird?) then it’s not much of a mark. Amidst airy remarks about tacos bringing joy, the petition delivers a simple, but powerful allegation:
D. “Taco Tuesday” is a common phrase. Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say “what’s up” or “brunch”? Chaos.
Which the filing backs up, citing a study finding that 86 percent of consumers across the country believe “Taco Tuesday” to be “a common name not associated with any particular company.” Perhaps more damning, the Trademark Trial and Appeal Board has already opined on this very question…
As this Board has found, “Taco Tuesday” is a “very commonplace term that refers to having tacos and drinks on that particular day of the week.” In re Monday Night Ventures LLC, Ser. No. 88817107 (TTAB, Nov. 28, 2022), at 21. The marketplace is awash with use of the term “Taco Tuesday” for “Taco Tuesday” events and specials. Id. Thus, the term “Taco Tuesday” fails to function as a mark for restaurant services and related events, specials, and products.
For its part, Taco John’s is trying its hand at snark, shrugging off the challenge and thanking Taco Bell for “reminding everyone that Taco Tuesday is best celebrated at Taco John’s.” Yeah… don’t quit your day job. Taco John’s attempts to cast Taco Bell as “a big, bad bully,” a message that all but begs the public to dig into the archives and find chafes against Taco John’s past efforts hurling cease- and-desist letters at small, local restaurants daring to have taco specials on Tuesdays. And not for nothing, but blasting restaurants with C&Ds for violating a mark in states where Taco John’s doesn’t even do business may not be relevant to this cancellation effort, but it does do some philosophical violence to the underlying purpose of trademark protection.
Policing a trademark without coming off as a corporate asshole is hard. Bud Light famously proved how having a little fun with it goes a long way toward maintaining goodwill. Defending the Taco Tuesday registration against claims that it’s become hopelessly generic will invite Taco John’s to publicly revisit all the times it played the big, bad bully itself — not exactly where a company wants to be from a public relations standpoint.
That’s why Taco Bell has already won the Taco Tuesday battle. Even if it loses the challenge — and it has a pretty strong case — the narrative is baked on like melty cheese: Taco Bell is “cool” for making a “common sense” request and Taco John’s is the company threatening lawsuits over a phrase that no one even realizes that they registered.
It all comes back to clients respecting the full panoply of benefits that lawyers provide. Winning cases and writing mean letters only scratches the surface of the role attorneys play in a company’s broader strategy. Taco Bell saw a relatively minor legal claim — the company isn’t seeking any damages — and a more significant branding opportunity vis a vis a competitor.
Savvy in-house counsel realize that lawyers aren’t just an inconvenient expense but a sleeping asset.
Joe Patrice is a senior editor at Above the Law and co-host of Thinking Like A Lawyer. Feel free to email any tips, questions, or comments. Follow him on Twitter if you’re interested in law, politics, and a healthy dose of college sports news. Joe also serves as a Managing Director at RPN Executive Search.