Taco Bell made headlines in May when it let the world know it wasn't going to stand for Taco John's keeping ownership of the "Taco Tuesday" trademark.
The Mexican chain even filed a petition and enlisted the help of LeBron James, who once tried to trademark the phrase himself. In response, Taco John's doubled down on "Taco Tuesday," which it has owned since 1989 in all states except for New Jersey, where it's controlled by Gregory's Restaurant & Bar. Taco John's CEO Jim Creel said in a statement that "When a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested."
Both chains have seemingly benefited from the publicity. But what are the real legal ramifications? To learn more, QSR recently spoke with Elizabeth Baio, a partner at global law firm Nixon Peabody. She specializes in various aspects of patent and trademark counseling, prosecution, and enforcement.
What's your initial take on the situation between Taco Bell and Taco John's?
I think Taco John’s was put in a little bit of a catch-22 because as a trademark owner, it is incumbent on Taco John’s to enforce its trademark if it wants to maintain those rights. So to make sure that other parties aren't using the marks in an infringing type way. But on the flip side of that, I think how Taco Bell is trying to portray Taco John’s is to look basically like a greedy hoarder who doesn't want just your everyday person or consumer to be able to use this common phrase. So I think Taco John’s in response has taken this position that it’s being bullied by Taco Bell. There's two ways to look at both of the parties depending on where you think this matter should come out. Taco Bell obviously taking the position that it is fighting for all consumers, saying that the mark is just so commonly used. I think it's saying it wants to liberate the phrase and make it free for anyone to use Taco Tuesday in their taco celebration. I think it just depends on where you think this should come out. It's easy to make one party or the other the villain or the hero.
I read some of the petition that Taco Bell submitted for this case and it didn't really seem like your typical legalese kind of language. It was very tongue-in-cheek. Does that matter at all? Do you still feel like Taco Bell is taking this process seriously?
I think it was a smart approach. I think the legal elements were there, mainly the argument that because Taco Tuesday has become so widespread, no single party should be allowed to exclusively use it. However, I think they did foresee the way this would catch on in the media. And so they added some more colloquial language, more tongue-in-cheek type things that were funny or were catchy or were more likely to be caught on by media and found to be interesting by consumers. So they're playing that game, I think trying to get people to jump on board with their cause, which getting LeBron James on board was certainly helpful to do that. I don't know if you saw the commercial that LeBron ran during the [NBA Playoffs] where it was Taco Bleep, and just promoting getting this mark canceled and liberated. LeBron had filed for a trademark application for Taco Tuesday himself a couple of years ago and it was refused for being too much of a commonplace term. He's got a little bit of skin in the game, but he's no stranger to publicity either. So he probably welcomes this opportunity as well.
What are the next steps?
The parties are going to have to submit their evidence. Taco Bell will have to show evidence that the mark is actually just a commonplace expression. Probably they could hire an expert to testify on that. They can submit any evidence that they can find. Probably internet evidence of widespread usage of the mark not tying back to Taco John's. And then Taco John’s will want to refute that and say that it should have exclusive rights to use Taco Tuesday, and they will show probably efforts of their past enforcement of cease and desist letters that they have sent to other entities before and try to distinguish its use from the way the mark is being used at large. They might try and tie it into their specific offerings and differentiate it from some of the internet uses that Taco Bell will pull up. But ultimately, I think it's really not a question of whether Taco John’s has enforced its mark. The real ultimate question I think will be whether it's really been successful in doing that. That will be up for the trademark trial and appeal board to decide.
What's the timeline?
It's probably going to be a couple of years at the earliest. In addition to the written documents that can be submitted in this type of cancellation proceedings, there could be depositions. A cancellation proceeding is almost like a mini litigation at the trademark trial and appeal board. It’s only binding on the registration. It has nothing to do with who can use the mark or anything like that. But the way the process works is there's discovery, there's depositions, but there's no trial. An oral hearing can be requested, but ultimately, it's decided based on the pleadings based on the written documents that are submitted to the board. But probably that will take at least a couple more years.
Why would you file to have a trademark in one state and not everywhere else? Could you explain how that may have worked?
The company is called Gregory's Restaurant & Bar. They actually had the trademark registration for Taco Tuesday back in I believe it was the late seventies. They were the first ones to have Taco Tuesday registered, but they had failed to properly renew that trademark and so it became canceled. A trademark has to be renewed at least every 10 years. Gregory's did not do that and lapsed. And so shortly after that is when Taco John’s filed its application for Taco Tuesday. Gregory's got wind of it. I think there was some back and forth between the two parties, some litigation. And what I think happened is that Gregory’s was able to show earlier use, at least in New Jersey, for the Taco Tuesday mark. They got a carve-out registration that's only for New Jersey. Taco John's registration is valid for all of the other states. It's just basically a difference between first to file the trademark at that point versus the first to use the trademark. Gregory's was a senior user with respect to New Jersey, so they were still able to carve out priority for that state.
Anything else to add?
I would just maybe add that this is an example of, as a trademark owner, a trademark registrant, you can try to police what other companies and other entities are doing. If you're using your trademark for commercial purposes and things like that, you should stop those efforts so that you can maintain your strong trademark rights, but it's not always so easy to control what consumers at large are doing. It's not like you can go to someone on social media using the phrase in a catchy type way about what they're having for dinner on a Tuesday night. It becomes really difficult for trademark owners in situations like this I think to do what they need to do in order to maintain their rights. And Taco John’s seems to be taking all the right efforts, but I guess we'll just have to wait and see whether that's enough.