One of the hallmarks of a great brand is to become famous enough to be a household name. However, this can be a double-edged sword. Once your mark becomes famous enough, there is a real risk that the brand just becomes a generic term for any similar type of product. And this could soon be happening with the trademark TACO TUESDAY.
Taco Bell, through its intellectual property (IP) holding entity, has petitioned for the cancellation of the trademark TACO TUESDAY for restaurant services. The mark is concurrently owned by Taco John’s and Gregory Hotel, Inc., and has been used by Taco John’s since 1979. While Taco Bell’s complaint is playfully worded and a little over-the-top (“To deprive anyone of saying ‘Taco Tuesday’ – be it Taco Bell or anyone else who provides tacos to the world- is like depriving the world of sunshine itself”), the consequences for Taco John’s could be quite serious.
In order to function as source identifiers in the marketplace, trademarks must be capable of differentiating your product from your competitors’ products. However, once a mark has become generic in the minds of consumers, it ceases to uniquely identify your brand, and there is a real danger that you may lose your trademark rights altogether.
Once famous brands such as aspirin, cellophane, dry ice, hovercraft, kerosene, linoleum, and teleprompter have all suffered the fate of genericization. Others, such as Xerox, have come close to the edge of losing their marks and have had to resort to creative solutions such as advertising campaigns to prevent the brand from becoming genericized.
While that kind of action can be helpful once your mark is already becoming genericized, there are proactive actions a brand owner can take to prevent genericization of their trademark.
