You may be familiar with one of Mexico’s signature dishes, tacos. Tacos are traditional Mexican food in tortilla shells filled with vegetables, meat, and sauce. This dish is known worldwide thanks to Glen Bell’s Taco Bell fast food restaurant outlets.
The Taco Bell recently filed a trademark cancellation lawsuit against Taco John, which had registered a mark called “Taco Tuesday.” Taco Bell thinks that the word “Taco Tuesday” is a common term that anyone has the right to use, so Taco Bell sued Taco John to cancel its trademark registration of “Taco Tuesday.” Read the full article to find out how the dispute is progressing.
The Gist of the Dispute
Taco Bell filed a petition to the US Patent and Trademark Office in May to cancel the trademark owned by its rival, Taco John’s, for 34 years. In its lawsuit, Taco Bell has made the following statement: “Taco Bell believes that ‘Taco Tuesday’ should belong to everyone who makes, sells, eats, and celebrates tacos,” it said. “How can anyone Live Más if they are not allowed to say ‘Taco Tuesday freely’?” This is a real mess.”
In response to the lawsuit, Taco John CEO, Jim Creel, said on July 18 in a statement explaining the company’s decision. “We have always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our brand didn’t feel like the right thing to do.”
“As we’ve said before, we are lovers, not fighters, at Taco John’s. So in that spirit, we’ve decided to start sharing Taco Tuesday with a pledge to donate $100 per location in our system to a restaurant employee who has a child battling a health crisis, death or natural disaster,” Creel added. “And we’re challenging our reputable competitors and other brands that love tacos to join us in supporting the people who serve our guests our favorite food.
In announcing its decision to drop the lawsuit, Taco John’s also said it would donate $40,000 to the nonprofit Children of Restaurant Employees. This organization is “dedicated to serving food and beverage operations employees with children to provide financial assistance when employees, their spouses, or children experience a life-changing health crisis, injury, death, or natural disaster.”
On Taco John’s decision, Taco Bell later responded, “This is a shared victory with taco allies everywhere,” Taco Bell CEO Mark King said in a statement to TODAY.com. “Taco John’s decision to join the movement and free Taco Tuesday means many large and small businesses, restaurants, and taco vendors can now embrace, celebrate, and fight for ‘Taco Tuesday’ freely. This case comes down to the settled statement: “When tacos win, we all win.”
Is it right for Taco Bell to file a lawsuit in this case?
The legal action taken by Taco Bell is a correct legal action when viewed normatively through the rules of trademark law. Because the trademark law regulations have generally stated that the name used in the trademark should not be a common name often used in everyday life. In this case, people in Mexico, have often used the words “Taco Tuesday” as their culture to eat tacos on Tuesdays. Even some stores that sell tacos will make discount promotions to celebrate the day of eating tacos on Tuesday.
Is it appropriate for Taco John to surrender its mark?
In this case, Taco John argued that the company did not want to fight the legal dispute because it did not feel it was the right move to incur many dispute costs to defend the “Taco Tuesday” brand. He admitted that the phrase is indeed a common term that people in Mexico have widely used, so to spread the love in the celebration of eating tacos on this Tuesday, he chose to lose his brand.
Taco John also made a legal attempt to reconcile the lawsuit against him. By accepting the suit, the legal settlement finally becomes faster and not protracted.
Viewpoint of Indonesia Trademark Law
The relevant regulations regarding this case in trademark law in Indonesia are contained in Article 22 of Law No. 20 Year 2016 on Trademarks and Geographical Indications, which states that against a registered trademark that later becomes a generic name, any person may apply for a trademark using the generic name with the addition of other words as long as there is an element of distinction. It means that a general term should not name the trademark that the public has widely used in everyday life. It is intended to avoid unfair business competition and monopolies over a generic term.
Conclusion
From this case, we can learn how important it is to be careful when giving a name to a brand. The name used in a trademark must be a distinguishing name and not a common term used by the public to describe the product type.
However, a lot of subjectivity is involved in such matters, and a legal consultant is needed to assist you in realizing your trademark. Because of the difference in interpretation between legal terms and general terms, we strongly recommend that you use legal services to consult on this this matter.
We at Am Badar & Am Badar, one of the law firms specializing in intellectual property rights from Indonesia, can be one of your choices to help you handle legal issues regarding IP. We are very concerned with IP legal issues nationally and internationally, especially those concerning our clients. If you are confident to trust our legal services, don’t hesitate to get in touch with us to collaborate through ambadar@ambadar.co.id
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