As you may have read, Taco Bell has filed a petition to cancel the federal trademark registration of “Taco Tuesday,” sparking a widespread media frenzy and propelling the company into the limelight. Despite the light-hearted and quotable tone adopted in their filing, the case holds substantial legal merit. As Taco Bell’s filing argues, the phrase “Taco Tuesday” is commonly used and recognized across the country, making it difficult for any specific company, including Taco John’s, to claim exclusive rights to the term.
Taco Bell backed its argument with a study showing that 86% of consumers consider “Taco Tuesday” as a common phrase unrelated to any particular company. Aside from the legal merit of the case, Taco Bell is seeking to capitalize on the phrase’s universal appeal. The Trademark Trial and Appeal Board has previously ruled that “Taco Tuesday” is a commonplace term used for themed events and specials.
Taco John’s response to the filing, on the other hand, adopted a snarky tone, attempting to cast Taco Bell as a corporate bully. While this tactic is not a novel one, it could be one that backfires for Taco John, as it draws attention to Taco John’s previous cease-and-desist letters to small, local restaurants offering taco specials on Tuesdays.
This situation brings to light the difficulty that a company may find policing a trademark while at the same time maintaining a positive image. As this case proves, this can be a delicate task, and Taco Bell’s approach showcases they understand the issue and are reaping the benefits of a lighthearted and strategic legal filing.
Regardless of the outcome, Taco Bell has already arguably won the branding battle. The narrative has positioned Taco Bell as a “cool” company making a “common sense” request, while Taco John’s faces public relations challenges.
This case serves as a reminder that lawyers, beyond winning cases and issuing legal threats, can significantly impact a company’s broader strategy. By skillfully leveraging a relatively minor legal claim into a major branding opportunity, Taco Bell demonstrates the value of creative legal counsel in bolstering a company’s image and success. Savvy in-house counsel recognize that lawyers are not mere expenses but assets with untapped potential for a company’s growth and reputation.
