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Taco Tuesday' trademark may not be distinctive enough to enforce

Originally published in

A trademark has to be “distinctive” of a single brand to be valid and enforceable, Toronto intellectual property lawyer John Simpson tells MetroNews.

A small Calgary taco restaurant is involved in a dispute with a Canadian fast-food giant over the term “Taco Tuesday” — a phrase that the corporation trademarked in 1997.

The fast-food chain sent the local restaurant a cease-and-desist letter, asking it to stop using the slogan to promote its half-price taco special. The company tells Metro it plans to comply.

Simpson, principal of IP and new media law boutique Shift Law, says “Taco Tuesday may well have been distinctive and registerable ... back in 1997. But it appears to have become genericized over the years through widespread use by non-licensed users.”

Because a trademark has to be “distinctive” of a single brand, Simpson says that if the corporation tried to sue the small business for using the term, the restaurant could file a counterclaim saying it's invalid and unenforceable.

Simpson tells the newspaper the taco restaurant would "most likely" succeed, receive legal costs and Taco Tuesday would belong to everyone.

In the meantime, the article says the Calgary restaurant is holding a contest to rename their special, with the winner receiving three free tacos every Tuesday for a year.

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