Pirkey Barber Leads Taco Bell to Triumph in TTAB Cancellation Proceedings for “TACO TUESDAY”

The crux of the legal challenge was proving that “TACO TUESDAY” is a generic term for restaurant services and thus fails to function as a trademark. Additionally, Taco Bell argued that the trademark had been abandoned due to a lack of policing by the registrants.

Legal Strategy: Pirkey Barber filed petitions to cancel the registrations, contending that the phrase “TACO TUESDAY” had become generic and was no longer enforceable as a trademark. The firm’s approach highlighted the common use of the phrase by third parties, which diluted its association with any single entity.

Litigation as Branding Opportunity: In a clever twist, Taco Bell turned the litigation into a marketing opportunity, with publicity highlighting the effort to “liberate Taco Tuesday.” The legal filings were crafted to not only present a strong legal argument but also to resonate with the public and media, reinforcing Taco Bell’s image as a fun, consumer-friendly brand.

Successful Resolution: Both cases concluded successfully for Taco Bell, with each registrant surrendering their registration for cancellation. This outcome effectively freed the phrase “TACO TUESDAY” for generic use in the restaurant industry.

Wider Implications: Beyond the legal victory, this case exemplified the strategic use of litigation as a tool for branding and public relations. Taco Bell emerged not only as a winner in the legal arena but also as a champion of common sense and consumer interests in the court of public opinion. Pirkey Barber’s role in guiding this dual victory highlights the firm’s expertise in navigating complex legal challenges while understanding and leveraging the broader business and brand implications for their clients.