That’s Nacho Trademark!

For the last three years, the Calgary-based Blanco Cantina restaurant has been using “Taco Tuesday” in its advertising for half price taco specials on Tuesday. Blanco Cantina recently received a cease and desist letter from Taco Time franchisor MTY Tiki Ming Enterprises Inc. (“MTY”) demanding that Blanco Cantina cease using the phrase “Taco Tuesday”. Unbeknownst to Blanco Cantina, the phrase “Taco Tuesday” is a registered trademark owned by MTY.

Despite being registered, MTY’s trademark may be all shell and no meat. Trademarks are as valid and enforceable as they are distinctive – less distinctive trademarks are more difficult to enforce and run the risk of being invalidated if challenged. “Taco” in MTY’s “Taco Time” is already disclaimed on the Canadian trademark register as being descriptive, meaning MTY cannot stop other businesses from using the word “taco” in their advertisements. Additionally, “Taco Tuesday” is commonly used by many non-licensed users, putting the mark at risk of having become generic. When trademarks become generic, they lose their distinctiveness, and their owners lose the ability to stop third parties from using the trademark. Yo-Yo, Thermos, Escalator, and Chicken Fingers are examples of generic trademarks.

It appears that Blanco Cantina will be complying with the cease and desist. However, the cease and desist letter may have created more problems than it solved. Customers have reacted negatively to the letter and a boycott against Taco Time has gained momentum on social media. This Mexican stand-off illustrates several important take-aways for any trademark owner, particularly those with weak or generic trademarks.