‘Taco Tuesday’ fires up debate
Legal experts say that a trademark owned by MTY may not be enforceable as Calgary chain stops use
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, as well as Manchu Wok, Van Houtte and the Works, 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 nonlicensed users.”
A trademark has to be “distinctive” of a single brand to be enforced, Simpson explained.
If MTY tried to sue someone, such as Blanco Cantina, for using Taco Tuesday, the restaurant could file a counterclaim saying it’s invalid and unenforceable, Simpson said.
“Taco Tuesday is for the people. It’s a celebration of tacos . . . a corporation shouldn’t own Taco Tuesday. It’s wrong.” KATE MITCHELL BLANCO CANTINA SPOKESPERSON
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, trademark agent at 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.
A quick glance at the #TacoTuesday tag on Twitter or Instagram shows it’s become a meme, divorced from any one company’s tacos, Kulish added. 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.
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 such as MTY.
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.”