TORONTO — News that a large restaurant franchise conglomerate has threatened a small Tex-Mex cantina in Calgary with a lawsuit for illegally using the trademark “Taco Tuesday” has shone a rare light into the murky world of intellectual property law for foodies.
It is a brutal world, in which even the most basic culinary gimmick has probably already been claimed and protected by unforgiving law, from the “Ham N’ Egger” to “Eggs Benny.”
A restaurant offering the promotion “Pasta Tuesday,” for example, would be vulnerable to litigation from Boston Pizza. It could sue any restaurant that offered the same promotion, demanding repayment of both its lost profits and their unlawful gain.
The clothing chain Banana Republic owns the trademark “Sunday Brunch,” but only when applied to a brand of candles.
Second Cup owns “Steamy Monday,” and Donald Peters of Blumenort, Man., owned “Pancake Tuesday,” until it was expunged from the government trademark database for failure to renew in 2004.
In the latest case, Blanco Tex-Mex Cantina, on 17th Avenue in Calgary, got a cease and desist letter from MTY Tiki Ming Enterprises Inc., based in Quebec, which is the franchisor of Taco Time Canada and such other restaurant franchises as Mr. Sub and Country Style.
Blanco Cantina had been using this trademark to offer half-price tacos on Tuesdays. (The letter did not mention it, but MTY Tiki Ming Enterprises Inc. also has a trademark on “Burritoful Thursday,” and “Eggs Benny,” a common slang for Eggs Benedict, which it controversially describes as a “breakfast sandwich.”)
A spokesperson for the Calgary restaurant told reporters it was unaware of the conflict and that it would comply with the demand, but also that it would rename its promotional special in a humorous way.
It is not the first time this controversy has arisen.
In 2006, a Vancouver restaurant, Casa de Amigos, had to drop its version of Taco Tuesday — at a cost of $4,000 in signage — in response to a similar threat from Taco Time, but was able to hang on to its Chicken Mole Monday and Fajita Friday. (Curiously, Fajita Friday is not trademarked in Canada, but Fajita Fries are, by prepared-food conglomerate Conagra Brands.)
”A lot of people say, ‘Why not just call it Taco Wednesday’? But then that’s changing the whole format,” Casa de Amigos owner Larry Gorrill said at the time.
Christopher Heer, an intellectual property lawyer in Toronto, said MTY Tiki Ming Enterprises Inc. is in a stronger position because the trademark is registered, and Blanco Cantina was using it in basically the same way, offering restaurant services.
It may seem silly that such a common promotion would be illegal to copy, but there was likely a time when it was not so widespread. This is what trademark law seeks to recognize and protect.
“I guess at some point in time, when (Taco Time) adopted it, no one else was using it, because if someone else was using it, they would have had the right to oppose the application after it was approved and prevent it from registering,” Heer said.
He said the cease and desist letter is part of a sort of “chess match” in which each side sizes up the other.
“It actually is pretty close to litigation,” Heer said. “If people don’t comply with a cease and desist letter, the side that’s asserting their right, the next step for them is to file a claim in court.”
That lawsuit would be aimed at getting an injunction to force the offender to stop using the trademark, plus perhaps a claim for lost profits or the infringing party’s unlawful gains.
Sometimes this type of case fails because the products are so different.
Yum! brands, for example, which franchises places like KFC, Pizza Hut and Taco Bell, owns “Toonie Tuesday,” which can be used in plenty of non-restaurant contexts. Harkirat Grover, who owns a marijuana accessories shop in Calgary, owns “Tokin’ Tuesday.” Bell Media owns “Tampon Tuesday.”
Sometimes, if a small company owns a trademark, an infringing party will “wager” that the trademark owner will not risk the expense and bother of litigation, Heer said.
There is a flip side to that strategy, though, in which a large company owns a trademark, and ends up with a public relations disaster for picking on a plucky upstart.
That was the case in 2003, when the Starbucks coffee chain went after the HaidaBucks Cafe in Masset, a village in Haida Gwaii, B.C., with a population of just a few hundred people. The café won, partly by pointing out that “bucks” was an expression for young men, similar to “dudes.”
In the U.S., the trademark on the term Taco Tuesday is owned by Taco John’s in every state but New Jersey. It also claims an elaborate origin story of a franchise owner trying to drum up business on a slow Tuesday. It has similarly been vulnerable to social media backlashes, in which it is cast as a heartless corporate squatter trying to dampen everyone’s enjoyment of cheap tacos.
“Increasingly, with the internet and social media, you have to be aware when you’re sending these cease and desist letters that someone might just throw it up online and start ridiculing you,” Heer said.
Blanco Tex Mex Cantina said it will continue to offer discounted tacos on Tuesdays, and is canvassing suggestions for a new name for the promotion.