Losing a Trademark to Genericization: The Case of Taco Tuesday

To answer that question, we first look at what a trademark is and what it does. A trademark is a word, name, symbol, mark, color, pattern, sound, or combination thereof that indicates a source of goods or services. Some famous examples are the stylized Coca-Cola logo, WIKIPEDIA®, the Nike swoosh logo, Tiffany Blue® (the turquoise blue color for Tiffany & Co.), and the drums+trumpets+strings sound of the Twentieth Century Fox. Each identifies the source of the product or service with which the mark is used. Additionally, it indicates the product or service’s quality that the public has come to recognize and rely on. For instance, a box of Tiffany Blue® color brings to mind the high-end American retailer known for fine jewelry and other luxury goods. The name is immediately associated with a certain amount of cachet. Similarly, when a consumer sees a shoe with the “swoosh” symbol, he knows it is from Nike and not from another shoe manufacturer. Thus, a trademark distinguishes one source of goods or services from another. It also embodies the goodwill and reputation of a business and can represent an enormous value to the business that owns the mark.
 
Accordingly, many businesses invest a great deal of resources to promote the recognition of their trademarks. The more widely it is known, the better. Or is it? Could a trademark be too successful?
 
Occasionally, a trademark can become so successful and common that it loses its distinctiveness as a source indicator. In the mind of a typical consumer, such a mark becomes synonymous with the product or service the mark is used with rather than remembered as an identification of the source of those goods or services. This process is called genericization. This means the mark becomes a generic term describing the product rather than identifying the particular source of the product. After a trademark becomes genericized, the owner of the mark can no longer claim legal exclusivity to that name. The former trademark now refers to all products from any source similar to the original product that bore the mark. This has unfortunately happened to notable marks like Aspirin, Escalator, and Trampoline. A trampoline—once a registered trademark—now is a bouncy toy on which one can jump and can be produced by any company. 
 
When a trademark becomes so widely and well-known that consumers use it to refer to the product or service rather than the source of them, some owners abandon their exclusive claim to the mark rather than fight to retain it against the tsunami of the public use of it as a generic term. Others go to lengths to protect their ownership of the mark. Remember when people started to use “Google” as a verb, as in, “Can I google that for you?” to refer to searching for information on the internet using the Google search engine? The use of Google as a verb has only spread since then. Google is one of the most valuable brands in the world but may very well be rushing headlong toward genericization. Nonetheless, to prevent the genericization of its name, Google has taken steps to ensure that its name continues to be used as a brand name and does not enter the common lexicon as a verb or noun. It always capitalizes the initial G in “Google.” It asks consumers to use “Google” when referring to Google, Inc. and its services and not when doing any internet search.     
 
So, if you have a well-recognized, popular trademark and want to maintain its value and distinctiveness as your source indicator – to avoid genericide of your mark - you should keep vigilance over your mark to ensure that your rights are not infringed, diluted, or lost altogether. First, keep using the mark in your ordinary course of trade. Under the Lanham Act, nonuse for three consecutive years may be deemed an abandonment of the mark. Second, closely monitor how your mark is used and take necessary actions if you encounter generic-type uses of your mark (i.e., using your trademark to indicate the product or service itself and not the source of the product or service). The Lanham Act provides that a mark will also be deemed “abandoned” when “any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.” 
 
Here are some steps you can take to minimize the risk of your trademark becoming generic:

1. Never use your mark as a verb or a noun (e.g., googling a word), and always use the generic name of the goods or services along with the trademark, such as “Cook’s Pest Control” where “pest control” generically describes the services provided. This creates clear brand guidelines.
2. Take appropriate action against third parties' incorrect use of your trademark.
3. Deploy advertising that distinguishes your trademarked product(s) or service(s) from similar products or services, which can help keep your mark as a source indicator in the public consciousness.
    

Now, about that Taco Tuesday® trademark. On May 16, 2023 (a Tuesday), Taco Bell, a much larger chain than Taco John’s, filed a petition with the U.S. Patent and Trademark Office (USPTO) to cancel Taco John’s “Taco Tuesday” trademark. Taco Bell asserted that the mark is a commonly-used phrase that should no longer be owned by any particular entity whose permission must be obtained before someone else could use it. They claimed the phrase should be “freely available to all who make, sell, eat and celebrate tacos.” It alleged that the failure or inability on the part of Taco John’s to police the mark adequately had caused it “to become the generic name for the goods or services.” Taco Bell claimed that its aim was not to own the rights to Taco Tuesday but to “liberate” the term for everyone to use while pursuing “happiness on a Tuesday.” Taco Bell considered it “not cool” for this now-common phrase to be owned and not freely available to everyone. See the petition and the prosecution history to date.
 
Taco John’s has denied there is “anything ‘not cool’ about independently creating a trademark over 40 years ago and obtaining a registration for that trademark” with the USPTO. It promised to vigorously defend its right to enforce its trademark against infringers and those who want to infringe, including Taco Bell. The petition and answer are quite entertaining to read.
 
However, on Tuesday, July 18, 2023, Taco John’s, the owner of the Taco Tuesday trademark, announced that it was abandoning the trademark, citing the expected high cost of its defense. This means that the use of the phrase is now available to anyone in all states to use, except in New Jersey, where it is owned by Gregory’s Restaurant & Bar. Taco Bell continues its fight in New Jersey. Like Kleenex and Xerox, Taco John’s Taco Tuesday is another victim of genericide.
 
If you are concerned about one of your trademarks becoming genericized and need legal advice, contact Whitcomb Selinsky, PC. Our team of Intellectual Property attorneys will review how your trademark is being used. If it is becoming a generic term, we will help you take the necessary steps to protect your well-established trademark.