Taco John's Claims Rights in Taco Tuesday

The “Taco Tuesday” battle exploded on Twitter, blogs, NewsOK, Fox 25 News, and even Facebook.  Taco John’s owns U.S. Trademark Registration No. 1,572,589 for the mark TACO TUESDAY (seen below).  It appears that Taco John’s attorneys sent the Oklahoma City based Iguana Mexican Grill a letter notifying Iguana of Taco John’s alleged rights and registration.  Taco John’s also ordered Iguana to cease and desist usage of the hashtag #tacotuesday.

TACO TUESDAY Trademark

What started as an attempt by Taco John’s to assert its trademark rights, resulted in some fantastic PR for Iguana Grill.  For those of you that are not from Oklahoma, you should know that as Oklahomans, we stick together.  Iguana Grill has generously invested time and money into the community through volunteerism and food donations.  The Oklahoma City community is extremely loyal to Iguana and when everyone caught wind of Taco John’s requests, a frenzy of tweets ensued.  The community rallied around Iguana by voicing their support for the usage of “Taco Tuesday” on Twitter and Facebook.  Fans also showed their support by gathering at Iguana.  Iguana sold a record number of tacos on Tuesday – approximately 2,000 tacos. Tuesday’s tweets included things like:

  • “petition @tacojohns to stop copyright enforcement of #tacotuesday hashtag”
  • “#tacotuesday is used all over CA! But qdoba uses #tacomonday. Who want #tacowednesday...Patent pending”
  • “Potential new @iguanaokc promotion: @TacoJohns Sucks Tuesday #tacotuesday (They don't have a patent on that one.)”
  • “So does anyone know if ThirstyThursday has a copyright? If so, Who will hold a big party to celebrate the end? #tacotuesday”
  • “Their trademark can't keep the customers from calling it #TacoTuesday”

@TacoJohns even tweeted:

“Taco John’s holds the copyright to Taco Tuesday giving us the exclusive right to use and protect it.”

(Emphasis Added.)

So which one is it?  What exactly is Taco John’s trying to assert?  A patent?  A copyright?  A trademark?  It seems that even @TacoJohns needs some guidance as to the differences between copyrights and trademarks.  Taco John’s claim is centered around its alleged trademark, not copyright, for the phrase “Taco Tuesday.”

Generally speaking, patents protect inventions, copyrights protect creative works of authorship like music, photos, videos, and literary works, and trademarks protect brands.  Taco John’s is alleging that Taco Tuesday is their brand name, that they have trademark rights in it, and that Iguana cannot use it without their permission.  Are there legal arguments that could be made in response to Taco John’s?    Sure.  Does it matter that several other companies use the phrase “Taco Tuesday?”  Possibly.  But that is another post for another day.

For more information on the difference between patents, trademarks, and copyrights check out this PHOSITA blog post posted earlier last year.

Comments

Comments

People in various industries and walks of life still resort to the most criminal forms of plagiarism and trademark theft that could really harm your claim of benefits.

So if a competitor of ours uses our brand as a hashtag to draw attention to their tweets (which happened twice this morning) and drive traffic to their site, could that constitute infringement?

Obviously, the potential PR fallout from this is what makes it prohibitive, but I'm just curious if it constitutes infringement.

Hi Jory!

I think there are definitely some arguments that the mark TACO TUESDAY is unenforceable. The mark is arguably generic.

When you think of a trademark, you think of things like the golden arches, the Nike swoosh, the words Coca Cola and McDonald's are all trademarks. These trademarks are all associated with one source or one company. This is the essence of a strong brand/trademark.

The mark TACO TUESDAY is arguably a generic term and not a trademark. It appears that TACO TUESDAY does not identify a single source, like Taco John's. The mark TACO TUESDAY is used by several different people and by several different companies. Urban Dictionary even associates TACO TUESDAY with Del Taco! (Note to Taco John's: You might want to get on that.) I believe Iguana could argue that the term is free term for everyone to use because the term TACO TUESDAY is generic and refers to a Tuesday evening when people gather to eat discounted tacos, whether that be at Taco John's, Iguana Grill, Del Taco, or at your neighbor's house.

With regards to the hashtag, it all depends on how you are using the hashtag. If you use a hashtag for a commercial purpose, you could put yourself at risk for trademark infringement.

Here, it's not the OKC public that Taco John's is taking issue with, it's Iguana Grill. Taco John's is trying to argue that the mark TACO TUESDAY points back to them as the single source. Taco John's is trying to argue that when people hear TACO TUESDAY they think of Taco John's. They are trying to protect their trademark rights (assuming they have any) by stopping Iguana Grill from creating an association between TACO TUESDAY and Iguana Grill.

Hope that helps Jory! Thanks for reading!

Emily

[...] Taco Tuesday Trademark This week, Taco Johns took on a lot of heat in response to its attempts to stop Oklahoma-based restaurant Iguana Mexican Grill from using the [...]

[...] This post was mentioned on Twitter by VBalasubramani, Douglas Sorocco. Douglas Sorocco said: Tacos, Tuesdays and C&Ds - oh my! Don't screw with OKC's tacos... or else! http://bit.ly/bbzkc6 #tacotuesday #trademark #iguanagrill [...]

I was hoping to hear your take on this debacle, Emily! Would you classify this as an unenforceable trademark? Also, have there been other lawsuits to stop the use of a twitter hashtag? That seems ridiculous to me... how can you stop hundreds of people from using a hashtag in reference to Iguana Grill?

Post new comment

The content of this field is kept private and will not be shown publicly.
  • Web page addresses and e-mail addresses turn into links automatically.
  • Allowed HTML tags: <a> <em> <strong> <cite> <code> <ul> <ol> <li> <dl> <dt> <dd>
  • Lines and paragraphs break automatically.