"Taco Tuesday" Trademark

[Skippy918]

Lots of local Mexican restaurants around here use the taco Tuesday phrase. I never heard of taco John’s either.

 

[Imzadi]

Anyone can say it, but other companies shouldn’t use the phrase in their marketing.

It appears the trademark owner hasn’t been very protective of its property.

Unfortunately, it takes money to constantly take other entities to court to protect a trademark or copyright.

We see and discuss this all the time in the various craft and art groups I am a part of. Someone can create something new and really original. They can go to the process and get it legally copyrighted or trademarked. (There is even something called a "poor man's copyright, where you snail mail a copy of the written documents or photos in a sealed envelope to yourself. Never open it unless you need to present it in court. The postmark will prove the original date of the item and that it pre-dates the other person's claims.) The problem is, later, trying to protect and enforce their rights costs too much to take others to court.

Same for people who send us letters saying they have copyrighted something we use a lot. Just because they send a cease & desist letter doesn't mean they have the financial means to take us to court to make people stop using or doing it.

Turns out, this is exactly what happened to Taco Johns. Yesterday, they gave up fighting Taco Bell as they said they just don't have the finances to keep fighting to keep "Taco Tuesday" exclusively theirs. So you will probably start seeing Taco Bell using it even more now.


Snipped from https://abc7ny.com/taco-bell-tuesday-john-trademarked/13519696/

"Taco John's, the regional chain that has "Taco Tuesday" trademarked, announced Tuesday that it's ending its fight in defending the phrase and will "abandon" it because it doesn't want to pay the legal fees that come with a fight against Taco Bell.

"We've always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn't feel like the right thing to do," Taco John's CEO Jim Creel said in a statement."​

 

[bcla]

Unfortunately, it takes money to constantly take other entities to court to protect a trademark or copyright.

We see and discuss this all the time in the various craft and art groups I am a part of. Someone can create something new and really original. They can go to the process and get it legally copyrighted or trademarked. (There is even something called a "poor man's copyright, where you snail mail a copy of the written documents or photos in a sealed envelope to yourself. Never open it unless you need to present it in court. The postmark will prove the original date of the item and that it pre-dates the other person's claims.) The problem is, later, trying to protect and enforce their rights costs too much to take others to court.

Same for people who send us letters saying they have copyrighted something we use a lot. Just because they send a cease & desist letter doesn't mean they have the financial means to take us to court to make people stop using or doing it.

Turns out, this is exactly what happened to Taco Johns. Yesterday, they gave up fighting Taco Bell as they said they just don't have the finances to keep fighting to keep "Taco Tuesday" exclusively theirs. So you will probably start seeing Taco Bell using it even more now.


Snipped from https://abc7ny.com/taco-bell-tuesday-john-trademarked/13519696/

"Taco John's, the regional chain that has "Taco Tuesday" trademarked, announced Tuesday that it's ending its fight in defending the phrase and will "abandon" it because it doesn't want to pay the legal fees that come with a fight against Taco Bell.​

​

"We've always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn't feel like the right thing to do," Taco John's CEO Jim Creel said in a statement."​

Even if Taco John's had unlimited funds to spend on attorneys and trademark advisors, they would have lost in front of the USPTO and in federal court. This was not something winnable - especially not against a deep pockets company whose only intent was to officially put "Taco Tuesday" in the public domain where it clearly should have been. That they were able to register it as their trademark in 1989 is only a matter of the limitations of the trademark system.

There are verifiable instances of "Taco Tuesday" being used to advertise well before Taco John's claim of doing so. There are also decades of the phrase being used in commerce where Taco John's either had minimal attempts to claim a trademark violation or never did anything. They would have just been wasting money trying to fight this.

 

[RedAngie]

There is a report right now on the early TV news saying a restaurant in New Jersey is also claiming they trademarked “Taco Tuesday” back in the 1970s. The owner is claiming he still intends to fight for his rights.

He doesn’t care if Taco Bell uses it in 49 states, but he wants the exclusive right to use it in NJ.

 

[bcla]

There is a report right now on the early TV news saying a restaurant in New Jersey is also claiming they trademarked “Taco Tuesday” back in the 1970s. The owner is claiming he still intends to fight for his rights.

He doesn’t care if Taco Bell uses it in 49 states, but he wants the exclusive right to use it in NJ.

That one is going to be abandoned one way or another. I also looked up the file, where the registration application was in 2007, although the claim was of it being first used by them in 1979.

 

[Imzadi]

There is a report right now on the early TV news saying a restaurant in New Jersey is also claiming they trademarked “Taco Tuesday” back in the 1970s. The owner is claiming he still intends to fight for his rights.

He doesn’t care if Taco Bell uses it in 49 states, but he wants the exclusive right to use it in NJ.

That's a Joiseyian for ya. Ya fight to the bitter end because it's for the principle of it all. He owns the trade maark. He's got a right to fight for it (so he claims.)

Unfortunately, Taco Bell probably has bigger deep pockets.

 

[_19disnA]

Seems they didn't do enough research before issuing the original trademark. Commonly used phrases that someone didn't invent makes no sense to be able to trademark. Various restaurants can say whatever they want on social media. A lot of that sounds like posturing and bluffing. What actually is defendable in a court of law may be something different.

 

[Cannot_Wait_4Disney]

1. Taco Johns had a loser of a case on their hands and they knew it. We don't have the money to fight big bad Taco Bell is just playing the martyr. If they had a even a good chance of a win, attorneys would have been glad to take the case on contingency even if they had no money.
2. Poor man's trademarking doesn't work. It's a myth. Trademarks rights don't begin until you actually start using it in public. And mailing yourself a copy and keeping it private does nothing to establish when you started using it in public. You should go through the legal process of registering one if you want to genuinely protect your trademark rights.
3. Taco Tuesday is a generic phrase. As such, it's public domain. Big Bad Taco Bell was 100% in the right on this one.

 

[Imzadi]

2. Poor man's trademarking doesn't work. It's a myth. Trademarks rights don't begin until you actually start using it in public. And mailing yourself a copy and keeping it private does nothing to establish when you started using it in public. You should go through the legal process of registering one if you want to genuinely protect your trademark rights.

I didn't say Poor man's trademark. One had to officially register to get a trademark. I said copyright. In the U.S. for written passages, i.e. books, poems, what we post online, and some works of art, like photos & images we make, copyright is automatic to the author or maker. This is WHY you want to establish when something was written or made. One still has to present the evidence in court, but it's better to have it than not.

 

[bcla]

That's a Joiseyian for ya. Ya fight to the bitter end because it's for the principle of it all. He owns the trade maark. He's got a right to fight for it (so he claims.)

Unfortunately, Taco Bell probably has bigger deep pockets.

Taco Bell clearly has the law on their side. They also claim that they're doing it for anyone who might want to use the phrase to advertise taco specials.

 

[bcla]

1. Taco Johns had a loser of a case on their hands and they knew it. We don't have the money to fight big bad Taco Bell is just playing the martyr. If they had a even a good chance of a win, attorneys would have been glad to take the case on contingency even if they had no money.

This isn't a tort per se where there would be potential monetary damages. No monetary damages - no possible contingency fees. And Taco John's would be the defendant merely trying to maintain the status quo. I suppose if it ever went to court they could request attorney's fees if they prevailed.

Also - this was initially an administrative request to cancel the trademark. I guess attorneys are still involved.

 

[Cannot_Wait_4Disney]

I didn't say Poor man's trademark. One had to officially register to get a trademark. I said copyright. In the U.S. for written passages, i.e. books, poems, what we post online, and some works of art, like photos & images we make, copyright is automatic to the author or maker. This is WHY you want to establish when something was written or made. One still has to present the evidence in court, but it's better to have it than not.

I never said you did. But while you're on the subject, Poor Man's copyright doesn't work in the U.S. either.

All a postmark proves is that the post office processed an envelope on date X. It doesn't prove what was or not in it when said envelope when it was processed. It does not prove when you actually created the work or even that you created the work because you can just as easily send an empty unsealed envelope through the mail with the flap tucked in rather than sealed, to yourself, and then stuff it and seal it later. And it is not all that difficult to open and reseal a sealed envelope either. So poor man's copyright doesn't do a thing for you over what you already have in the way of copyright. If you truly want to protect a copyright, It's not expensive to register something. And when you do you then can collect statutory damages and attorneys fees if someone violates it rather than only proven damages. There are so many far easier and far more effective ways to establish evidence of the date you created something and that it is you that created it than mailing it to yourself, which doesn't work. Truly, if something is at all going to be worth protecting a copyright on, it's worth getting the full protection of registering it.

From the U.S. copyright website.
“The practice of sending a copy of your own work to yourself is sometimes called a ‘poor man’s copyright.’ There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration.”

 

[bcla]

There is a report right now on the early TV news saying a restaurant in New Jersey is also claiming they trademarked “Taco Tuesday” back in the 1970s. The owner is claiming he still intends to fight for his rights.

He doesn’t care if Taco Bell uses it in 49 states, but he wants the exclusive right to use it in NJ.

Just thinking about this, and the USPTO cancelled that registration too.

https://www.tacobell.com/newsroom/e...ew-jersey-trademark-registration-relinquished​

Irvine, Calif. (October 24, 2023) – Earlier this year, Taco Bell set out on a bold journey to give Taco Tuesday back to all by filing legal petitions to cancel the two standing trademark registrations. Today, that ambitious goal has been met, as Gregory’s Restaurant and Bar has parted ways with the Taco Tuesday trademark registration covering the 50th state, allowing New Jersey businesses and residents to fully celebrate the best day of the week. This epic milestone comes shortly after Taco John’s relinquished their trademark registration for the phrase covering 49 states earlier this summer.​

The history seems to be that the cancellation process started May 2023:

https://tsdr.uspto.gov/#caseNumber=...TION&caseType=DEFAULT&searchType=statusSearch​

Mark:​

TACO TUESDAY​

US Serial Number:​

77124322​

Application Filing Date:​

Mar. 07, 2007​

US Registration Number:​

3621366​

Registration Date:​

May 19, 2009​

​

TM5 Common Status Descriptor:​

​

DEAD/REGISTRATION/Cancelled/Invalidated​

The trademark application was registered, but subsequently it was cancelled or invalidated and removed from the registry.​

​

Status Date:​

Oct. 25, 2023​

Publication Date:​

May 27, 2008​

Date Cancelled:​

Oct. 25, 2023​

​

Oct. 25, 2023​	CANCELLATION TERMINATED NO. 999999​
Oct. 25, 2023​	CANCELLED SECTION 18-TOTAL​
Oct. 24, 2023​	CANCELLATION GRANTED NO. 999999​
May 16, 2023​	CANCELLATION INSTITUTED NO. 999999​

 

[_19disnA]

Sounds like rather than spend millions on legal expenses with an uncertain outcome, they both decided to give up and can each claim 'victory'....................LOL.