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Make Me Smart with Kai and Molly

Episode 136: VC hype vs. Wall Street

Oct 22, 2019

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Marketplace Tech

The tortured Taco Tuesday trademark travails

Ben Bradford Sep 17, 2019
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masassassin/Flickr (CC BY-NC-ND 2.0)

It’s a common scene on a Tuesday in Los Angeles: A crowd lines up at the counter of a small Mexican restaurant — this one Casa La Doña in downtown — as the smell of onions, poblano peppers and grilling meats waft through the air. A sign on the door advertises “Every Tuesday is … Taco Tuesday” and, as part of the promotion, every taco is $1.

“It’s like 80% busier than regular days,” says the shop’s owner, Iliana Salmeron. “Taco Tuesdays are just like crazy.”

A poster on the window of Casa La Doña advertises one of the many Taco Tuesday deals in Los Angeles.

But although Taco Tuesdays are a common promotion at restaurants around the world, ranked by media outlets and online fans, the term is also the subject of trademarks, cease-and-desist letters and legal disputes.

For the past 30 years, Taco John’s, a Wyoming-based fast-food chain, has held the trademark for usage of the term “Taco Tuesday” for restaurant purposes. Starting in the late 1980s, Taco John’s has promoted a deal of two hard shell tacos for $1.

The company did not respond to a media request, but the chain regularly threatens litigation when others use the term in a territory where it has restaurants.

“There’s a ton of assertions against Taco Tuesday, and we defend each and every one of them,” former chief marketing officer Billie Jo Waara told a TEDx conference in Cheyenne, Wyoming, in 2016. “This idea of Taco Tuesday was an integral part of our advertising and marketing efforts and also really core to our brand.”

Last month, Taco John’s filed to renew the trademark for another 10 years, while also generating social media derision for sending a cease-and-desist letter to a Wyoming brewery over a weekly Taco Tuesday food truck event.

But intellectual property experts question whether Taco John’s claim to the term would hold up if challenged.

“It’s kind of a glitch in our system that if nobody comes in and files a petition to cancel the registration of the trademark, it’s just going to sit there,” said Sandra Rierson, an intellectual property law professor at Thomas Jefferson School of Law in San Diego.

Companies regularly lose trademarks once terms are no longer popularly associated with their brands, sometimes termed “genericide.”

“Escalator, elevator, brazier — they all used to be trademarks, but now people don’t associate them with one particular company,” Rierson said.

Rierson said most people likely do not think of Taco John’s when they think of Taco Tuesdays.

The company also did not come up with the term. Gustavo Arellano, a writer at the Los Angeles Times and author of “Taco USA: How Mexican Food Conquered America,” has looked into the history of Taco Tuesday.

“Taco John’s despite all of its claims to the contrary did not invent Taco Tuesday — nowhere even close to inventing Taco Tuesday,” Arellano said.

Arellano found that promotions on tacos on Tuesdays in the U.S. extend back to at least the 1930s, with the phrase “Taco Tuesday” appearing in the early 1970s. A New Jersey restaurant was the first to trademark it, but only in that state, while Taco John’s would go on to apply to the U.S. Patent and Trademark Office for all other areas of the U.S.

Last month, basketball superstar LeBron James filed for his own trademark, seeking to reserve the term for uses in podcasting, videos and online media. James has been regularly posting Instagram videos of family taco nights, in which he shouts, “It’s Taco Tuesday!” in a faux-Mexican accent and imitates a Mariachi yell.

“I don’t know what he’s trying to do,” Arellano said. “It does engage in some stereotypes and accents and fake Mariachi screams, but a lot of people in LA have given him the benefit of the doubt … but there’s got to be a payoff.”

That “payoff” could come from the U.S. Patent and Trademark Office’s response to James’ filing last week. The PTO denied the trademark application, in part because it said the term Taco Tuesday is “commonplace.”

While James could challenge that decision, Rierson said the rejection further threatens Taco John’s hold on the trademark.

The rejection “signals that the PTO would be willing to cancel [Taco John’s] registration of that mark if anyone bothered to ask for it,” Rierson said in an email after the decision. “Pretty much any restaurant could file a petition to cancel the registration of the mark.”

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