Overview of Trademarks
To obtain a trademark, the mark must distinguish the source of the goods or services. Stronger trademarks are inherently distinctive. They are typically suggestive, fanciful, or arbitrary. On the other side, weak marks tend to be descriptive or generic.
According to the USPTO, the strongest marks are fanciful marks which are invented words. These would be marks such as Clorox and Verizon. When someone reads Clorox on a bottle of cleaning solution, they know the brand and the quality to expect when using it.
In contrast, arbitrary marks are words that have nothing to do with the product or services. A basic example is “Apple,” which is registered for computers and phones. Apples and computers were not related prior to registration. An orchard would not be able to register the word “apple” as it is typical for an orchard to grow apples. In comparison, it is not typical to consider apples with computers; therefore, “Apple” can be registered with computers and phones. Since “Apple” has been registered with computers and phones, people now have a connection with Apple and computers that was not previously there.
Additional characteristics of marks are suggestive, descriptive, and generic. Suggestive marks require imagination, thought, and perception. For example, “Android” is a suggestive mark as it suggests artificial intelligence or computer control. Marks that are descriptive cannot be registered, such as using “creamy” for yogurt. Lastly, generic marks cannot be registered either. Places where one can get a haircut cannot register “barbershop” or “salon” as they simply are the everyday words where you can get haircut services performed.
What is required to have a mark canceled for genericness?
According to the United States Code, a petition to cancel a registration of a mark may be submitted “[a]t any time if the registered mark becomes the generic name for the goods or services… The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services or in connection with which it has been used.”[1]
Moreover, the Federal Circuit Court of Appeals has held that “[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question. Determining whether a mark is generic therefore involves a two-step inquiry: First, what is the genus of the goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services.”[2]
As Judge Learned Handheld with respect to the now generic term “Aspirin,” “[t]he single question, as I view it, in all these cases, is merely one of fact: what do buyers understand by the word for whose use the parties are contending?”[3]
In short, if a trademark has become generic, anyone can file a petition to have the term canceled. The question that comes into play is what the public understands when hearing “Taco Tuesday?” Does the public think of Taco John’s? Or does the public think of having tacos at their favorite taco joint on Tuesday? It’s this author’s opinion that it is the latter.
What is happening with the “Taco Tuesday” mark?
Taco Bell has petitioned to cancel the “Taco Tuesday” mark claiming that, although the mark may have once been protected and registerable, the mark is now generic, and Taco Bell may have some credence with this argument.
In 2019, NBA star Lebron James tried to register “Taco Tuesday.” This application was denied as the USPTO said the mark was a “commonplace” term. This provides evidence that “Taco Tuesday” is becoming a generic mark and is, therefore, not registerable.
In 2022, the Trademark Trial and Appeal Board specifically said that “’Taco Tuesday’ is a very commonplace term that refers to having tacos and drinks on that particular day of the week.”[4] This ruling prevented Monday Night Ventures LLC from registering “Taco Tuesday” on the principal register for “beer”.
Based on precedent and recent decisions, if the USPTO is consistent, Taco Bell’s case is compelling.
Other marks that have been canceled or avoided being canceled.
If Taco Bell is successful, it would not be the first mark to be canceled. Other marks such as “Linoleum,” “Monopoly,” and “Aspirin” have been canceled. Although “Linoleum” never actually had trademark protection, it is thought to be the first term to become generic. The court opined that “Linoleum” was so widely used that if it had been registered it had become generic. In 1982, the Ninth Circuit of Appeals found that “Monopoly” had become generic and was applied to a board game. As mentioned above, Judge Learned Hand questioned what the public believed that “Aspirin” was a generic term and Bayer lost its trademark protection in the United States.
Additional terms, such as “Kerosene,” “Escalator” and “Flip phone” were all registered marks. However, the USPTO canceled all their marks because they became widely adopted as generic terms for particular products or services.
Keeping a mark strong is important to avoid becoming a generic term. Xerox and Velcro have pushed hard to ensure their mark stays strong, although it may be argued that they are commonplace terms too. Xerox ran campaigns requesting that the public assist with keeping their trademark strong.[5] Velcro has even made a music video to assist with trying to keep the trademark strong.[6]
Conclusion
Has Taco John done enough to demonstrate that “Taco Tuesday” is not a commonplace term? Does Taco John come to mind when someone mentions “Taco Tuesday” to you? Or has the James family’s tradition of shouting “Taco Tuesday” on Lebron’s social media outlets every Tuesday made the mark commonplace? Moreover, has the new commercial put out by Taco Bell featuring Lebron James demonstrated that everyone needs to be able to “Live Más” and embrace “Taco Tuesday?”[7]
In the end, is “Taco Tuesday” a mark that could be and should be registered today? It is tough to believe that the USPTO would rule against their previous precedent.
[1] 15 U.S.C. §1064(3).
[2] H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986).
[3] Id. at 989 (quoting Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921).
[4] In re Monday Night Ventures LLC, 2022 TTAB LEXIS 441, *15.
[5] https://www.theatlantic.com/business/archive/2014/09/kleenex-is-a-registered-trademark-and-other-appeals-to-journalists/380733/
