Taco Tuesday & The Trademark Bully

Photo by ABDALLA M on Unsplash

The United States Patent and Trademark Office (USPTO) defines trademark bullying as “the act where the trademark owner uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”

The classic example of a trademark bully is Apple. Here is an example of their overreach. As detailed in this article, Apple is challenging farmers in Switzerland over their use of an apple in their logo as shown below. I don’t know about you, but this use of the apple image doesn’t seem like it is infringing on the Apple Inc. use of an apple.

This is not the first time Apple has pursued action against another company’s apple trademark. The most famous example is when Apple Inc. challenged Apple Corps (the record company owned by The Beatles). In 2007, Apple Inc. and Apple Corps reached a settlement of their trademark dispute under which Apple Inc. owns all the trademarks related to “Apple” and will license certain of those trademarks back to Apple Corps for their continued use.

I do understand the need to challenge other companies when a trademark application comes close to home. The law demands that a trademark owner defend its trademark against such incursions or else it can lose its trademark protection. However, I can also attest to the fact that these defensive actions are often perceived as “big company beating up the little guy” and can generate lots of negative PR.

The Taco Tuesday trademark fiasco is a different approach by a big company. “Taco Tuesday” has been trademarked for more than 40 years by Taco John’s, a fast-food chain from Wyoming. However, in May, Taco Bell filed a challenge with the U.S. Patent and Trademark Office, urging the agency to cancel the “Taco Tuesday” trademark so it would be “freely available to all who make, sell, eat and celebrate tacos.”

Let me repeat that. Taco Bell decided that a valuable trademark that is owned by a competitor should be invalidated, and started legal proceedings to challenge the trademark.

This is just another form of trademark bullying (or is it Trademark Blackmail?). In this case, Taco Bell, a large global company with deep pockets, has thrown down the gauntlet against a much smaller company, Taco John’s. Their actions indicated that they were coming after Taco John’s trademark and would be willing to sue to get it. I won’t try to predict who would win a lawsuit, but I tell you with certainty that Taco Bell would have a lot more funding and lawyers to persist in the lawsuit and appeals than Taco John’s would. Taco John’s CEO Jim Creel said in a statement that paying millions to defend the trademark didn’t “feel like the right thing to do.” “As we’ve said before, we’re lovers, not fighters, at Taco John’s,” Creel said.

Taco John’s gave up a valuable trademark rather than fight an expensive legal battle. They did so in noble fashion, by issuing a challenge to Taco Bell and other competitors. Instead of spending money on the trademark dispute, Taco John’s donated around $40,000 to the nonprofit Children of Restaurant Employees, which provides financial aid to restaurant workers when they, a spouse or their children face a life-altering crisis. “Let’s see if our friends at Taco Bell are willing to ‘liberate’ themselves from their army of lawyers by giving back to restaurant families instead,” Creel said.

But still…another big company gets away with “legal”  bullying…again.