Taco Time may be biting off more than it can chew in trademark spat: lawyers
Fast food chain might not be able to enforce its trademark on 'Taco Tuesday' now that it's a meme.
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A Calgary taco joint is wrapped up in a legal spat with fast-food giant MTY Group for calling its weekly half-price special “Taco Tuesday” – a phrase MTY trademarked in 1997.
MTY, which owns the chain Taco Time, sent a cease-and-desist letter to Blanco Cantina on Friday, demanding they stop using the slogan. The company plans to comply.
But now the debate may be about to get spicy – because according to three trademark experts, there's a good chance MTY's argument would fall apart like an overstuffed taco shell under a legal challenge.
“Taco Tuesday may well have been distinctive and register-able ... back in 1997,” said John Simpson, an intellectual property specialist at Shift Law. “But it appears to have become genericized over the years through widespread use by non-licensed users.”
A trademark has to be “distinctive” of a single brand to be enforced, Simpson explained.
If MTY tried to sue someone, like Blanco Cantina, for using Taco Tuesday, the restaurant could file a counterclaim saying it's invalid and unenforceable, Simpson said.
They'd "most likely" succeed and win back their legal costs, he added. And Taco Tuesday would belong to everyone.
Bill Northcote, head of business law at Shibley Righton LLP, pointed out that MTY actually doesn't own Taco Tuesday, exactly – just the Tuesday part.
“The word taco was disclaimed because it is descriptive of the services (selling tacos),” he explained.
Taras Kulish, senior trademark lawyer with Steinberg Title Hope & Israel LLP, said there's a legal argument that the slogan never should have been registered by the federal trademark office in the first place, because it means exactly what it says: Selling tacos on a Tuesday.
You can't trademark "gelato" "shish kabob" or anything else that's merely descriptive, he explained.
Trademarks become generic, and legally invalid, "all the time" he said – zipper, thermos, yo-yo and escalator among them.
Trying to enforce a trademark that is common parlance can turn the public against a company and lead to a “marketing fail,” Kulish said.
Taco John's has held the trademark for Taco Tuesday since the 1980s in most U.S. States, and has struggled similarly, and unsuccessfully, to keep others from using it.
MTY did not return Metro's request for comment.
Blanco Cantina has been trying to turn the controversy into a taco triumph. Spokesperson Kate Mitchell said the company's initial reaction was not to mount a fight against a billion-dollar behemoth like MTY.
“We're a small company,” she said, citing worries about legal costs.“Maybe if it could be a class action. The people versus Taco Time,” she joked.
The restaurant is holding a contest to rename their half-price special, with the winner getting three free tacos every Tuesday for a year. Mitchell's favourites among the 211 submissions so far are “Taco the Town” and “Tacopocalypse.”
“People are outraged, but not because we think we should have ownership,” Mitchell said. “Taco Tuesday is for the people. It's a celebration of tacos … a corporation shouldn't own Taco Tuesday. It's wrong.”