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Taco Tuesday for Everyone, Except in New Jersey

on Wednesday, 23 August 2023 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

The longstanding feud between Taco John’s and Taco Bell came to a head May 16, 2023, when Taco Bell filed a Petition for Cancellation of the TACO TUESDAY trademark. TACO TUESDAY was registered in 1989 by Spicy Seasonings, LLC, Taco John’s parent company. Taco John’s registration covered almost the entire US, with the exception of New Jersey where Gregory Hotel Inc. holds the trademark. As of July 18, 2023, however, Taco John’s conceded the Petition for Cancellation and TACO TUESDAY was formally cancelled on August 1, 2023. Taco John’s CEO stated that they are, “lovers, not fighters” and that “[p]aying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do.”

The Trademark Trial and Appeal Board wasn’t given the opportunity to determine whether TACO TUESDAY deserved cancellation, but Taco John’s seemingly saw the “generic” writing on the wall.  Trademarks operate as a source-identifier for whatever goods or services the owner of a mark intends to provide. Generic terms cannot be trademarked, they are merely common, everyday names for goods and services and as such, do not indicate a source and cannot function as trademarks. Generic marks are, thus, not federally registrable.

Marks may be deemed generic during the trademark examination process or after registration wherein a mark becomes generic despite its original success in registration. Some examples of marks that would be refused registration on the grounds that they are generic include:

  • “Bicycle” for bicycles
  • “Bagel shop” for a bagel shop
  • “E-ticket” for computerized reservation and ticketing of transportation services[1]

The above examples of genericness appear straightforward, but there are several examples of marks which gained generic status after years of being federally registered which are more surprising given where they started. Some marks that earned generic status leading to the cancellation of their respective federal trademarks include:

  • Thermos: The product now commonly known as the thermos was previously coined a “vacuum flask,” invented in 1892. The Thermos brand later entered the market, named after the Greek Therme meaning “heat.” The Thermos trademark was genericized in the U.S. in 1963.
  • Dry Ice: Trademarked in 1925 by the DryIce Corporation, dry ice is simply solid CO2. The Dry Ice trademark was lost in 1932.
  • Escalator: First coined by Charles Seeberger of Otis Elevator Co. in 1900, the word comes from the roof the word scala for “steps” in Latin, with “E” as the prefix, and a suffix of “Tor.” Roughly, that means “traversing from.” The trademark was lost when the U.S. Patent Office ruled that even Otis had used escalator as a generic descriptive term in its own patents.[2]

As the above demonstrates, it is possible even for a unique trademark that began as a strong mark, to become generic if the owner fails to police use of its mark properly and take appropriate action. TACO TUESDAY was a source identifier for Taco John’s for over 30 years, but due to its common use outside of its association with Taco John’s it was likely one step away from genericness. Regardless, TACO TUESDAY is now in the public domain everywhere except New Jersey. The next question becomes, how long will New Jersey’s Taco Tuesday hold out?

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