Taco Bell’s recent efforts to liberate the phrase “Taco Tuesday” presents an opportunity to review the distinctions between marks that are generic and those that fail to function as a trademark.

This May, Taco Bell filed petitions with the Trademark Trial and Appeal Board (TTAB) to cancel two trademark registrations for the mark TACO TUESDAY. The first petition was filed against Spicy Seasonings, LLC dba Taco Johns’ 1989 registration for TACO TUESDAY covering restaurant services. The second petition was filed against Gregory Hotel, Inc.’s 2009 registration for TACO TUESDAY, also covering restaurant services. Due to the limited claims available to challenge trademark registrations that have been registered for five years, Taco Bell was only able to allege that the TACO TUESDAY mark is generic and that the registrants have abandoned the marks by allowing it to become generic.

Generic Term

A mark is generic if its primary significance or meaning to consumers is the relevant goods and services covered by the mark. The TTAB will conduct a two-part test to determine whether a mark is generic. First, it will determine the goods and services at issue, and second, whether the relevant public understands the proposed mark to refer to those goods and services. Accordingly, Taco Bell will need to demonstrate that the consuming public primarily thinks of restaurant services when they encounter the mark TACO TUESDAY.

Failure to Function as a Trademark

Taco Bell may have been encouraged to file its petitions to cancel the TACO TUESDAY registrations because the TTAB recently affirmed the USPTO’s refusal to register Monday Night Ventures, LLC’s application for the mark TACO TUESDAY covering “beer.”

However, this case did not rely on a determination that the mark TACO TUESDAY is generic. Rather, the TTAB considered whether TACO TUESDAY failed to function as a mark. A proposed mark fails to function as a mark when the consuming public does not perceive the mark as a source identifier. When a proposed mark or phrase is commonly used in everyday speech, it is less likely that the mark will serve as an indication of the source of goods or services. Here, the TTAB found that “Taco Tuesday” failed to function as a mark and the ordinary consumer would not associate the phrase “Taco Tuesday” with the applicant’s beer, but rather with the general consumption of tacos and beer on Tuesdays. In reaching this determination, the TTAB cited evidence of the widespread use by breweries and restaurants to promote the sale of tacos and beer on Tuesdays.

Given the different tests applied in determining whether a proposed mark is a generic term or fails to function as a mark, it remains unclear whether Taco Bell will succeed in its liberation efforts. We will continue to monitor these proceedings, as they may further inform on the differences between generic terms and marks that fail to function as a trademark.

This article appeared in the May 2023 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.

© 2023 Sterne, Kessler, Goldstein & Fox PLLC