"TACO TUESDAY" Fails to Function as a Trademark for Beer, Says TTAB
The Board upheld a refusal to register the proposed mark TACO TUESDAY for beer, finding that the term fails to function as a source indicator under Sections 1, 2 and 45 of the Trademark Act. Applicant Monday Night Ventures unsuccessfully argued that the refusal was "illogical and incongruous" because TACO TUESDAY "is not informational at all as it relates to the goods in the application" and the use of the term by restaurants in connection with the sale of tacos on Tuesday is irrelevant. In re Monday Night Ventures LLC, Serial No. 88817107, [not precedential] (Opinion by Judge Cynthia C. Lynch).
Examining Attorney Ashley Albano's supporting evidence was "voluminous" and fell into two general categories: first, evidence reflecting general use of the phrase "Taco Tuesday to refer to a regular Tuesday evening event incorporating tacos and drinks; and second, use of "Taco Tuesday" on or in connection with beer: for example, North Country Brewing Company's "Taco Tuesday" Brown Ale, and Shades Brewing's "Taco Tuesday" Sour "American-Style Ale."
The evidence makes clear that “Taco Tuesday” is a very commonplace term that refers to having tacos and drinks on that particular day of the week. See Texas With Love, 2020 USPQ2d 11290, at *3 (“It is clear from how the term is used by multiple third parties that [the term] merely conveys a well-recognized concept or sentiment.”). The record also shows that “Taco Tuesdays” commonly involve beer consumed along with tacos, and “Taco Tuesday” events often feature beer specials. “[T]he marketplace is awash” in use of the term for events and specials including beer. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d at 1716.
Noting that applicant's own website promotes its beer as "the ultimate pairing for tacos," the Board found that consumers would perceive TACO TUESDAY "as an informational indication that the beer is suitable or intended for drinking at such 'Taco Tuesday' events."
Although Applicant provided a menu specimen and evidence of TACO TUESDAY on its cans of beer, showing use in a non-informational manner, we remain unconvinced that the term actually functions as a mark because of the environment in which it is perceived by consumers.
And so, the Board affirmed the refusal.
Read comments and post your comment here.
TTABlogger comment: I'm going to have to disagree with the Board on this one.
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 12/01/2022
8 comments
8 Comments:
Also disagree. Seems a stretch.
Responding to Mr. Bolmarich (not on the keyboard issue), I’d opine that genericness is a subset of failure to function. Failure to function means the term won’t be perceived as identifying source because it will be perceived as something else. Where a generic term is concerned, the “something else” it is perceived as is the name for the type of product. In the example, an apple seller couldn’t register APPLE, but because “Apple” had no other common meaning and no one else was using it for computers, Apple Inc. could register it. But the name of the type of product is not the only “something else” a term could be primarily perceived as. Where a term, through wide use by many, is perceived primarily as a name for a food-and-drink related event (that’s the “something else” here), it won’t be perceived as identifying source in one company for food or drink, even though it’s not the name of the type of product. More generally still, some terms are commonly used as political or social slogans (or in other generally understood ways) in a variety of ways (including on t-shirts and other goods). In all these examples, consumers will perceive these terms as something other than a term that identifies and distinguishes source. Section 45 defines what’s a trademark, and a trademark is what’s required in section 1 for an application. “Failure to function” simply means the thing applied for does not meet the threshold definition of a trademark. Maybe simply a change in nomenclature to “failure to meet the threshold definition of a trademark” or something like that would facilitate better understanding of this concept.
Bad rejection, the appropriate rejection would have been merely descriptive. I think the fairly constant flow of poor rejections making it before the TTAB is reflective of an examining corp that is overworked (leading to poor quality control).
Unfortunately the TTAB is rubberstamping too many of these rejections, probably doing so on the assumption/bet that the applicant will not appeal the decision.
I’m with you on this one.
I feel like some anonymous commenter here said something a little while ago about these "failure to function in lieu of genericness" cases getting out of hand.
With all due respect to the Board, they were wrong about this one. It reads as if they learned about tacos and Taco Tuesday from reading about them in books.
The Board got this wrong and should be appealed. "Taco tuesday" is arbitrary for use in connection with beer (just like apple is arbitrary when used in connection with computers).
I will join the chorus of disagreement here. While I agree that "Taco Tuesday" is widely used in connection with restaurant and bar services and thus could never indicate source in a particular restaurant (in that sense, begin generic for a key aspect of the services), taking that and extrapolating it out to beer is a bridge too far. To me, even using the Board's reasoning, it appears if anything that TACO TUESDAY, when used in connection with beer, to be suggestive of going out and drinking on Taco Tuesdays.
As for the first commenter (and anyone else having difficulty grasping the "failure to function" refusals), "Anonymous at 10:19AM" does a great job of explaining the rationale for this refusal. It does seem like the PTO is issuing more of these refusals recently, but that may be simply that the PTO is finally doing what it should have been doing all along - refusing matter that cannot function as a mark. The PTO probably felt hamstrung to try and justify the refusal using the "four categories" the first commenter mentioned, and when it couldn't, it let these designations proceed to registration. As we get more decisions from the Board and Fed. Circuit on this issue, maybe the pendulum will swing back a bit, but we have to hope the Board does a better job at analyzing this refusal than what was done in this case.
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