Over the summer, there was a very public battle over the phrase “Taco Tuesday.” Lebron James wanted the phrase. Taco Bell wanted the phrase. Restaurants around the country wanted the phrase.
Of course, the owners of the trademarked phrase “Taco Tuesday” didn’t want to give it up and had fought allowing others to use it for years.
Eventually, Taco John’s, which had a trademark on the phrase for decades, decided to release the trademark without a fight and now Lebron James, Taco Bell and your neighborhood food truck can use it legally in most places.
While it is highly unlikely your company will develop a tagline or marketing phrase that becomes as common of a term as Taco Tuesday, it does serve as an important lesson for any business: protect your marketing just like you would a trade secret, an invention or a unique differentiator.
Not doing so can cause a business significant issues in the future, ones that could be easily avoided.
The attorneys at The Orlando Law Group can help you. Our firm specializes in trademarks and copyrights and a host of other business issues.
Why couldn’t we have Taco Tuesday a year ago?
Taco Tuesday seems like it has been part of our vernacular for as long as we can remember. It just makes sense and sounds like the perfect phrase that just rolls off the tongue.
That’s exactly what Taco John’s thought too when they first used it in a marketing campaign in the early 1980s, first calling it Taco Twosday and then using Taco Tuesday. The goal was obvious, by offering two tacos for 99 cents, the company figured it could increase business on a slow day.
It worked and in 1989, the company filed and received a trademark for the phrase Taco Tuesday.
Taco John’s, based in Wyoming, continued to grow over the years and currently has around 400 locations. But the phrase Taco Tuesday grew even faster. The company did as it should, which was to fight the use of the phrase vigorously, but in 2019, Lebron James tried to file a trademark for Taco Tuesday, but was rejected as the term was described as commonplace by the federal government.
That opened the door for Taco Bell to file a lawsuit to cancel the trademark earlier this year. Taco John’s chose not to fight and gave up the trademark.
Of course, Taco Bell used the fight for marketing too, saying they were just getting the term freed for everyone, even creating a FAQ for their actions.
It is not just about generic terms
Companies losing a trademark are well known. After all, we all take aspirin, use an escalator and we all rented a videotape at one point. Each of those terms was once trademarked but became generic terms eventually.
Honestly, the odds of anyone creating a marketing term that turns into a generic term are very low. It rarely happens.
One of the interesting things about Taco Tuesday is a group of Mexican restaurants found multiple uses of Taco Tuesday before Taco John’s 1989 trademark applications. Several companies, including Taco Bell, used the phrase as early as 1966 but did not trademark the phrase.
But Taco John was not the first to get a trademark for Taco Tuesday. That went to a small restaurant in New Jersey, which started Taco Tuesday in 1979 and received the trademark in 1981. They have kept the trademark in New Jersey ever since and have fought to keep it.
They have sold more than two million tacos over the years and market itself as having the “original Taco Tuesday” which is one of the reasons they remain in business today.
Over the years, they fought their competition in New Jersey successfully. After all, when someone sees a business with lines out the door, there will be an attempt to replicate it.
Today, that restaurant is still fighting Taco Bell and still owns the rights to use Taco Tuesday in New Jersey.
It is about your competition.
Both Taco John’s and the New Jersey restaurant show why any business should trademark the terms and slogans they use.
If a business does not protect itself and has a successful promotion, it will be copied to some extent by its competitors. Without a trademark, a business will have no recourse. With a trademark, a business can force the competitor to stop the infringement quickly.
And if the competitor does not stop using it, the courts can order significant damages.
How to trademark your marketing slogan
Even though there are thousands of trademark applications filed every year, it is stunning that more businesses do not file for trademark protections on their marketing slogans.
Start early as it may take a year or more for final approval. Most of the time is used so that anyone can have a chance to say why a trademark should not be used or to claim the trademark themselves.
The U.S. Patent and Trademark Office has a great summary of the process, but, as you will see, it can be extensive.
The only reason the New Jersey restaurant received the trademark was because an attorney worked with them on the process. They admit they did not have the time to handle the trademark process.
If you think you need trademark assistance, please reach out to the attorneys of The Orlando Law Group as quickly as possible.
The attorneys at The Orlando Law Group help business owners in Orlando, Waterford Lakes, Altamonte Springs, Winter Garden, Lake Nona, St. Cloud, Kissimmee, and throughout Central Florida.
If you have questions about anything discussed in this article or other legal matters, give our office a call at 407-512-4394 or fill out our online contact form to schedule a consultation to discuss your case. We have an office conveniently located at 12301 Lake Underhill Rd, Suite 213, Orlando, FL 32828, as well as offices in Seminole, Osceola and West Orange counties to assist you.
The articles on this blog are for informative purposes only and are no substitute for legal advice or an attorney-client relationship. If you are seeking legal advice, please contact our law firm directly.
Last Updated on November 13, 2023 by The Orlando Law Group