Photo by Los Muertos Crew
“People like tacos on Tuesdays. They just do. It’s even fun to say: ‘Taco Tuesday.’ Tacos have the unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week. But since 1989[1], Registrant has owned a federal trademark registration for ‘Taco Tuesday.’ Not cool.”
So said fast food giant Taco Bell in its petition to cancel a trademark “Taco Tuesday,” registered and owned for years by two much smaller companies.
Taco Bell argues that “Taco Tuesday,” assuming it was unique thirty years ago, has since died by “genericide.” Genericide happens when a trademark becomes so commonly used by people and businesses other than the registered owner that it no longer “functions as a trademark”. It comes to represent the thing itself, rather than the maker of the thing (or the brand under which the thing is sold). It becomes just another word, like car or apple or airplane. Or, perhaps more apt here, like “Have a nice day” or “YOLO” (cringe). Examples you might recognize are “escalator,” “dry ice,” “thermos,” “linoleum,” “videotape”, even “aspirin” – these were all trademarks until they died and went to the Merriam-Webster dictionary in the sky.
So the argument is fair, but Taco Bell still risks a David v. Goliath narrative in the press, like when Chick-fil-A sent a cease and desist letter to a guy in Vermont making T-shirts with the slogan “Eat More Kale”, or when Nintendo sent a cease and desist to stop a charity dedicated to raising suicide awareness from selling custom controllers bearing the label “JOYCON BOYZ”. Starbucks has had bad press a number of times for fighting small coffee shops for selling “Charbucks” or “Freddoccino” coffees or for calling itself “Sambucks.”
Even when the trademark holder is in the right, seeking to enforce it against an underdog can blow back with such damaging PR, the PR loss can sometimes outweigh the benefit of protecting their mark. What to do? Use humor.
“’Taco Tuesday’” is a common phrase,” said Taco Bell in its petition. “Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say ‘what’s up’ or ‘brunch’? Chaos.”
Ok, they’re being a bit liberal here. A trademark doesn’t stop you from saying a word. You can say “You’re fired!” all you want (but please don’t say it to me). You just can’t use it to sell a product or service if someone else has registered the phrase as a trademark for the same or a related product or service.
“Taco Bell believes ‘Taco Tuesday’ is critical to everyone’s Tuesday. To deprive anyone of saying ‘Taco Tuesday’ – be it Taco Bell or anyone else who provides tacos to the world – is like depriving the world of sunshine itself . . . (h)ow can we tell our fans to Live Más if their favorite taco joints aren’t even allowed to freely say ‘Taco Tuesday’?”
Even if they’re taking some liberties, it’s funny. It’s effective.
You can read the petitions here and here. And press related to the petition here, here and here.
What do you think? Will Taco Bell suffer or benefit from the PR here? How does Taco John’s hold up in the public eye?
It may be Wednesday, but I’m having tacos tonight. Because “when tacos win, we all win.”
Live Más®.[2]
[1] Or 1995, depending on the petition – there are two.
[2] Live Más is a registered trademark of Taco Bell IP Holder, LLC. Irony isn’t dead.
