Taco Tuesday Illustrates Need to Enforce Trademark Rights
August 19, 2019
Michael Atkins in Generic Trademarks, Genericide, Trademark Enforcement

Taco John’s registered TACO TUESDAY as a trademark in 1989. At the time, that phrase presumably identified Taco John’s as the sole provider of restaurant services in connection with that brand. That’s what a trademark does — it earmarks a particular source as the provider of the branded good or service.

Flash forward 30 years. Now everyone has a “Taco Tuesday” promotion — bars, restaurants, university dining halls, mom’s kitchen. The phrase no longer points to a particular seller; it just means an event: taco night, discounted tacos, taco party.

So what happened? As more providers used the phrase, it stopped uniquely identifying Taco John’s. The mark fell into the public domain and became open for anyone to use. And use, they did.

Undeterred, Taco John’s still tries to claim the phrase for its own. It recently sent a cease-and-desist letter over a “Taco Tuesday” promotion a brewery ran in connection with a nearby taco truck. The press picked up on it, which rightly meant bad press for Taco John’s. I got a few quotes in one article here.

For Taco John’s, it’s too little, too late. Once a mark is generic, it’s always generic. No amount of letter writing or threats of suit (or even actual suits) can breathe life back into a trademark that has become a common word or phrase.

At some point, Taco John’s could have stopped that from happening. If a third-party restaurant used “Taco Tuesday” to promote its taco nights in 1990, 1995, or even 2000, it probably would have been an infringer. That means Taco John’s could have (and, given its current position, should have) gone to court to stop it. Yet, Taco John’s apparently allowed such use to continue. Understandably, when one or two unauthorized uses becomes one or two dozen, enforcement becomes a challenge. However, that’s no excuse. When a trademark no longer identifies the owner, it’s no longer a trademark.

Fortunately, most trademark owners don’t become a victim of their mark’s success. For this reason, Taco John’s is an extreme example. It nonetheless shows what can happen when trademark infringement gets out of control. When a brand no longer functions as a brand, the battle is lost. It’s up to the trademark owner to stop infringement before that happens.

Article originally appeared on Michael Atkins (http://seattletrademarklawyer.com/).
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