Taco Tuesday and the Shelf Life of a Trademark

by | Aug 31, 2023 | Trademark

The term “Taco Tuesday” has been getting tremendous attention lately. Including a globally recognized basketball icon and an internationally franchised restaurant chain. What has all the fuss been about? Intellectual property and trademark laws surrounding a once-protected but commonly used phrase.

Taco John’s v. Taco…James?

In 2019, LeBron James attempted to obtain a Taco Tuesday trademark. James was denied because the phrase was owned in 49 states by a restaurant called Taco John’s. The restaurant satisfied some aspects of the United States Patent and Trademark Office’s (USPTO) requirements for trademark ownership, such as use in commerce. Taco John’s had successfully fended off Taco Tuesday challengers for over 30 years.

Taco John’s had been defending their catchy phrase since 1989. They sent cease-and-desist letters and fought competing applications like James’ throughout the decades. In May 2023, Taco Bell filed a petition with the USPTO to cancel the trademark. In the petition claimed the term was too generic and commonly used to be protected. A mark must distinguish one company or product from the next; it must not be confusing for customers. The popularity of the phrase “Taco Tuesday,” combined with the public’s unfamiliarity with where the term originated, was creating a difficult battle for ownership rights. Facing mounting legal fees and growing disfavor in the court of public opinion, Taco John’s decided to abandon the trademark two months later.

The Expiration Date of a Trademark

The USPTO requires trademark owners to maintain their registrations in several ways. This includes continuing to use the mark in commerce and filing forms like an Application for Renewal. Failure to meet these requirements will cause the trademark to expire. But missing a filing deadline isn’t the only way for a trademark to end.

When you think about brand longevity and notoriety, becoming a household name or having your slogan enter the public’s vernacular may sound like an ideal scenario for a business. However, as Taco John’s found out, there is a fine line between a famous slogan and a generic phrase, and that line is trademark rights.

Taco Tuesday is one of many trademarks that was lost to genericization. Zipper, laundromat, and escalator are among the many proprietary terms that became so popular and synonymous with their namesakes that they were no longer qualified for trademark protection.

So, how can companies prevent their recognizable catchphrases, slogans, and other intellectual property from becoming so well-known that they fall into this generic trap? Other qualifying factors are to be considered. This is one of the reasons why hiring skilled trademark counsel is vital.

If you want clarification of the USPTO’s qualifications or any other issue involving your trademark, contact the trademark attorneys at EmergeCounsel for a free consultation today!


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