Firm for the Culture | The Fight for Taco Tuesday Gets Spicy...
The Taco Tuesday Saga Continues...Let's Dive Right In.
I love a good David & Goliath story…
Especially in the trademark and IP field.
After all, when we say “Intellectual Property is a Civil Right,” stories like Taco John’s are inspiring, to say the least.
Taco John’s is not giving up Taco Tuesday without a fight.
Here’s how it’s going down.
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The Taco Tuesday Saga | Lessons Learned
A few weeks ago, I wrote about Taco Bell’s attempts to force a “liberation” of Taco Tuesday by having the trademark owner, Taco John, relinquish their 30+ year old trademark rights in the phrase.
Taco Bell's bold move to liberate the phrase "Taco Tuesday" has been met with a counter-argument from current trademark holder, Taco John’s.
With both sides digging their heels in and the case moving into the discovery phase, it's safe to say that the resolution of this dispute won't be quick or easy.
But I’m Switzerland right now, so while I come bearing peace and neutrality, I also come with lessons every business owner may want to think about as they scale their impact.
A. The United States is a "first to file" jurisdiction
In the United States, priority is typically given to the first to file a trademark application.
This rule applies even if the applicant wasn't the first to use the term.
Taco John's can wield this principle to their advantage as they have claimed to create "Taco Tuesday" over forty years ago and filed a trademark in March of 1989.
Their early filing grants them priority over any subsequent applications.
In addition, it gives them the power to enforce their rights by issuing cease and desist notices to potential infringers.
B. Trademarks can become “incontestable,” which makes them hard to cancel with a “genericism” claim
Approximately five years after registration, trademark owners can apply for their trademarks to become "incontestable".
This status provides an extra layer of protection as it limits the grounds on which third parties can challenge the trademark’s validity.
Interestingly, while "Taco Tuesday" could have potentially qualified for incontestable status years ago, it seems Taco John's may not have taken advantage of this opportunity.
As a result, their trademark is exposed to claims of genericism and challenges to the overall validity of their mark.
C. The Battle to Cancel “Taco Tuesday” may take up to three years
Anybody craving a quick resolution to this dispute will be left hungry.
A cancellation proceeding, which is essentially a mini trial held before the USPTO Trademark Trial and Appeal Board, can take anywhere from 2-3 years.
It's a drawn-out, procedural marathon rather than a sprint.
As the two taco titans continue to square off, we are reminded that in the world of trademarks, patience is often the key ingredient.
Buckle up, folks - we're in for a long journey.
Conclusion:
The "Taco Tuesday" battle serves up an intriguing case study for businesses of all sizes.
It reminds us of the intricate and ever-evolving landscape of trademark law.
As Taco Bell enters the ring to contest the trademark, we're reminded that vigilance and informed decision-making are crucial to maintaining the integrity of our brands.
Yet, it's important to remember that this dispute is not about financial gain or wresting control over the "Taco Tuesday" trademark. Instead, Taco Bell's mission is to liberate a phrase they believe belongs to the public, not a single entity.
Their stance underscores a critical aspect of brand management - a trademark extends beyond being a simple logo or slogan.
It embodies the essence of a brand's narrative, its identity, and the bond it shares with its consumers.
As this saga continues to unfold, we are given an exciting glimpse into the often unseen world of trademark law, with every twist and turn serving as a valuable lesson in brand protection.
And when you’re ready to protect your unique contribution to the culture, including protecting the bold brand you’re building, reach out to us.
Can’t wait to help you protect your dynamic impact.
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