Naperville Business Lawyer on Dispute of Taco Tuesday Trademark

trademark, Naperville Business Law AttorneyI realize that it seems like I have been discussing quite a few trademark disputes over the last few months, and to be fair, I have done just that. First, it was the Tom Brady filing, then I mentioned trademarks when talking about choosing a good name for your business, and finally, I covered the lawsuit filed against Netflix by the company behind the Choose Your Own Adventure books. However, as a business law attorney, it is hard to ignore important items such as these when they come up, even if they seem to arise in quick succession.

If you own a business, you must be careful to avoid using another company’s trademarked logos, phrases, or other property. As time goes by, however, the protection offered by registering a trademark may start to weaken depending on how the trademark is used by businesses and consumers alike.

Taco Chain Claims “Taco Tuesday”

Last month, a brewery in Cheyenne, Wyoming received a cease and desist letter from one its neighbors—the national headquarters of Taco John’s located mere blocks away from the brewery. In the letter, the taco chain politely but firmly called out the brewery for using the phrase “Taco Tuesday” to advertise a taco truck that visits the brewery every week.

Taco John’s first obtained trademark protection for “Taco Tuesday” in 1989. The trademark covers 49 states, as a different restaurant already got the rights in New Jersey.

When the brewery recounted the situation on social media, supporters of the taco chain responded by pointing out that Taco John’s began as a small food trailer a half-century ago and secured the trademark legitimately. Critics suggested that the brewery was not even using the phrase to sell tacos, so the trademark protections should not apply.

Genericized Trademarks

At least one trademark expert believes that after 30 years, the “Taco Tuesday” trademark may have run its course. Michael Atkins is a Seattle-based attorney who handles trademark cases. He told USA Today that he finds it “asinine” that a taco restaurant or maker could monopolize the rights to the combination of a food name and a day of the week.

Atkins also points out that colloquial use has caused the phrase to lose its connection to one specific brand. “It has become such a common phrase that it no longer points to Taco John’s, and therefore, Taco Johns doesn’t have the right to tell anybody to stop using that.”

The same thing has happened to many trademarks, as they slowly evolved into genericized household names. Nylon, for example, was a trademarked name for a fabric made of synthetic fibers, just as “Escalator” was once a trademark held by the Otis Elevator Company for a set of moving stairs. Examples such these, it could be argued, were even more directly linked to a specific product or brand. “Taco Tuesday,” on the other hand, may have been linked to Taco John’s but was never much more than a combination of two common words.

Call a DuPage County Intellectual Property Lawyer

If you have questions about trademark protection and how to get permission to use protected property for your business, contact an experienced Naperville business law attorney. Call The Gierach Law Firm at 630-756-1160 to discuss your situation with a skilled member of our team today.



USA Today

Consumer Reports