Apparently, my Tuesday lunch routine full of beer and tacos, to unwind from a day filled with intellectual property is now linked to my work day; tacos and beer are in the news.
Recently, Budweiser the beer manufacturer and The Iguana Mexican Grill out of Oklahoma City, found out
that they had one thing in common; they both lost battles over Trademark recently.
A European high court ruled that Anheuser-Busch cannot trademark “Budweiser” in Europe, and similarly in
the US, it was found that “Taco Tuesday” was the sole property of Taco John’s.
Anheuser-Busch applied to use the Budweiser trademark in the EU back in 1996 and Anheuser-Busch’s
application was promptly rejected. The Czech Brewery Budejovicky Budvar instead had its rights upheld due
to a long history with the Budweiser mark in Germany and Austria.
This has created a disconcerting precedent for Budweiser in the EU.
Then, in an unrelated move, Taco John’s is ordering owners of Iguana Mexican Grill in Oklahoma City to quit
using the phrase “Taco Tuesday” to promote its weekly $1 dollar taco nights; “Taco Tuesday” was
introduced in 2009 for Iguana Mexican Grill’s first anniversary and has been a popular event ever since.
While the Taco Tuesday phrase can’t be used by Iguana Mexican Grill due to the challenge by Taco John’s
chain, the actual local event will go on. Even with the “cease and desist” ordered by attorneys with Taco
John’s to quit using the phrase “Taco Tuesday” for the weekly $1 taco promotions, event will be renamed
and the price will remain along with Iguana’s other promotions.
Also ongoing, Anheuser-Busch is appealing to the Court of Justice of the European Union, to argue
that Budvar, the Czech mark holder, should have submitted evidence of its renewal of the Budweiser mark
at an earlier stage in the case. Anheuser-Busch is not getting any traction with this tactic, as the
Luxembourg-based Court of Justice rejected this argument and dismissed the case as it stands today. The
court contends that adding that any new rules relating to production of evidence cannot be applied
retroactively.
This is not the news that Anheuser-Busch was hoping to hear.
So this brings us back to the taco world.
Taco John’s which is a Cheyenne, Wyoming based entity, has 425 locations; they stand by the fact that “Taco Tuesday” is an important mark for Taco Johns.
They further state that they have owned the trademark since 1989 and is as much an icon as “potato ole’s.”
An interesting fact to note is that “Taco Tuesday” was first used by the Taco John’s chain in February 1982.
However, that may not be the earliest recorded use of the term; a Laguna Beach, California restaurant named Tortilla Flats, owns www.tacotuesday.com and stands by its claims that Tortilla Flats started using the phrase way back in 1976!
So far, the USPTO records only confirm that Taco John’s registered the Taco Tuesday phrase in 1989 and as a
result, the Trademark still applies in all states except New Jersey.
At this time there does not appear to be a current battle between Tortilla Flats and Taco John’s, but that
does not mean there will not be a future challenge to the mark; “Taco Tuesday” is a more or less a coined
phrase now; could this open the door for a “fair use” suit? I doubt that challenge is far behind given the
recent litigation’s.
As for for Anheuser-Busch, they will keep up the fight against Budejovicky Budvar over the “Bud” mark and
the battle is still pending. The precedent set by the European ruling is a dangerous one. This is the kind of
“foothold” that trademark holders hate, as it unnecessarily complicates what should be a simple case of
protecting your business.
Since the European Court of Justice acts as the EU’s supreme legal venue, this likely signals an end to
Anheuser-Busch’s European battle for the Budweiser name for now.
Beer and Taco lunch specials on Tuesday everywhere seem to be weathering the storm fine, as my own
personal research has revealed, but I will stay on this issue every Tuesday to be sure.
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