Recently, Taco Bell filed a petition with the USPTO to cancel the trademark registration of Taco John's mark, "TACO TUESDAY." Taco John's has been the registered owner of the mark for more than 34 years, and there does not appear to be any indication that Taco John's has ever threatened to sue or take any action against Taco Bell for any improper use of the phrase, "Taco Tuesday." Yet, on May 16, Taco Bell issued a press release and corresponding webpage to announce it filed a petition to cancel the registered trademark for TACO TUESDAY because, "Taco Bell believes 'Taco Tuesday' should belong to all who make, sell, eat, and celebrate tacos."
The legal basis for Taco Bell's position is that the phrase "Taco Tuesday" has become generic because the "marketplace is awash with use of the term 'Taco Tuesday' for 'Taco Tuesday' events and specials.” Taco John's has not yet responded to the petition or put on evidence regarding whether the mark still serves as a source identifier for Taco John's. But Taco Bell's tongue-in-cheek petition should cause concern for anyone who has obtained a registered trademark in a common phrase and slogan -- including Taco Bell.
The concern with Taco Bell's petition is that it appears to forget the fundamental purpose of trademark protection, which is to prevent likelihood of confusion. Simply establishing that two marks are similar is usually not enough to establish liability; there still has to be evidence of a likelihood of confusion. Moreover, trademark law has long held that using a registered mark to describe -- as opposed to use as a source identifier -- is fair use and not subject to liability. Thus, the fact that others have used the phrase "Taco Tuesday" to promote the sale of tacos on a Tuesday does not mean the mark TACO TUESDAY is no longer serving as a source identifier for Taco John's. In other words, the trademark registration of Taco John's is not an outright prohibition on the public's use of the phrase. Just as Taco Bell's registered mark, LIVE MAS, does not mean Taco Bell can prohibit any other use of that phrase. Instead, there will only be trademark liability if the use of the phrase by others is likely to cause confusion.
Now, the evidence may ultimately show that TACO TUESDAY no longer serves as a source identifier for Taco John's, but filing a cancellation petition -- as part of a not-so-subtle marketing gimmick -- merely because a registered mark is a common descriptive phrase may just result in other trademark owners telling Taco Bell to stop trying to THINK OUTSIDE THE BUN[1] because you can still HAVE IT YOUR WAY[2] when promoting your FINGER LICKIN' GOOD[3] tacos and continue SLICING UP FRESHNESS[4] with your top quality ingredients leaving your customers saying, I'M LOVING IT[5] when grabbing some delicious tacos on Tuesday. Otherwise, Taco Bell may someday find itself in a position when it is not able to LIVE MAS[6] because it is having to spend time trying to protect its marks in a room full of lawyers, which everyone can probably agree is not THE HAPPIEST PLACE ON EARTH.[7]
[1] Taco Bell, Reg. No. 3,020,149; [2] Burger King, Reg. No. 3,206,302; [3] Kentucky Fried Chicken, Reg. No. 5,415,727; [4] Arby's, Reg. No. 4,373,632; [5] McDonalds, Reg. No. 3,104,640; [6] Taco Bell, Reg. No. 4,243,633; [7] Disney, Reg. No. 2,281,559
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