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"Taco Tuesday" Trademark Causes Stir Online

27/8/2019

 
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It turns out that “Taco Tuesday” is a trademark owned by a fast food chain from Wyoming, Taco John's. The mark, filed on March 23, 1989 and registered with the U.S. Patent and Trademarks Office (USPTO) under registration number 1,572,589, covers “restaurant services” in international class 42. The only exception in the country-wide registration is the state of New Jersey, where the same mark owned by a different restaurant preceded it.

​This registration has caused an online stir after 
Freedom’s Edge Brewing Co., located five blocks from the taco chain’s national headquarters, received a cease and desist letter. The warning was for a sign advertising an unaffiliated food truck that parks outside of the establishment weekly.

The Wyoming brewing company posted on their Facebook July 31, the day after receiving the letter, “Just to clear things up, we have nothing against Taco John's, but do find it comical that some person in their corporate office would choose to send a cease and desist to a brewery that doesn’t sell or profit from the sales of tacos.”

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The registration as it appears on the USPTO's Trademark Status & Document Retrieval page.
While the company says the term is part of the company’s “DNA,” others argue that the slogan is no longer distinctive of Taco John's due to its widespread usage. "Taco Tuesday" has its own Wikipedia entry mentioning its widespread usage in restaurants, LeBron James is in headlines celebrating it, not to mention references from pop culture such as the Simpsons.

In other words, the Taco Tuesday mark may have suffered "genericide". For more information on "genericide" and how to avoid it, please visit INTA's guide here.
Photo by Christine Siracusa on Unsplash

What "THE"? Ohio State University Applies to Trademark "THE"

23/8/2019

 
On August 8, 2019, Ohio State University filed application no. 88/571,984 with the USPTO for the trademark "THE". The application was brought to light by trademark attorney Josh Gerben on Twitter.
Filed in class 25, the application covers "Clothing, namely, t-shirts, baseball caps and hats." A specimen was submitted along with the application, showing a red Nike shirt brandishing the word "THE" in block text above the Ohio State University logo.
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The "THE" application, as it appears on the USPTO's Trademark Status & Document Retrieval page.
Other universities have responded with ribbing, such as the University of Michigan's tweet of the word "OF" behind its logo.

​The application is now awaiting examination, but it may face some difficulty progressing to registration. For example, is the word "THE" sufficiently distinctive to warrant protection as a brand? We will continue to monitor this application for updates.


For further information on what constitutes a distinctive brand, contact us.

The Ohio State University has filed a trademark application on the word "THE."

The filing, made on August 8th, indicates #OhioState is offering a brand of "THE" clothing.

Not sure how 'The U' will feel about this one.

My analysis □:#BuckeyeNation #MiamiHurricanes pic.twitter.com/1UvLOAOnIc

— Josh Gerben (@JoshGerben) August 13, 2019

™ pic.twitter.com/bx2vTBUtst

— University of Michigan (@UMich) August 14, 2019

Another Mark "McCancelled"

13/8/2019

 
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After cancelling the BIG MAC trademark in the EU, Irish fast food chain Supermac's has continued its offensive against McDonald's, this time petitioning to cancel its MC trademark in the EU. In another blow to the multinational fast-food giant, the EUIPO has partially cancelled the MC mark on the basis of a lack of use as a standalone mark as it is exclusively used as a prefix, only retaining chicken nuggets and some sandwiches.

While McDonald's will continue to maintain its registrations for products containing the "Mc" prefix, such as "McNuggets" and "McFlurry", the EUIPO determined that there is no use of the MC mark by itself. The question, then, is if the addition of these other elements altered the distinctiveness of the mark. The EUIPO Cancellation Division determined that, if paired with a descriptive element such as a "Muffin" (ie. as in "McMuffin"), the additional element does not add to the distinctiveness of the mark.

McDonald's will most certainly appeal the decision; however, the partial cancellation of the MC trademark is a reminder that giants aren't immune to challenges by the "little guy".

For further information on protecting your brand, please contact us.

Photo by Lidye on Unsplash

Paula Clancy Speaks On the Ottawa Entrepreneurs Podcast

8/8/2019

 
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Paula Clancy is honored to have been a guest on the Ottawa Entrepreneurs podcast with Patrick Whalen. Ottawa Entrepreneurs is a podcast for business owners in which entrepreneurs share valuable lessons learned and ‘tips from the trenches’.  Each episode is hosted by Patrick Whalen, founder of Extension Marketing. For more information visit www.extensionmarketing.com.

Thank you Pat for this opportunity and thank you to the listeners for tuning in!  If you need any assistance with IP protection in Canada or around the world, please contact us at hello@clancypc.com.

INTA's Unreal Challenge

8/8/2019

 
Paula Clancy, Marion Bailey (Gowlings LLP) and Shelley Jones (National Inventor’s Hall of Fame) took INTA’s Unreal Challenge and presented on behalf of INTA on the issues surrounding counterfeiting.  For more on the Unreal campaign please visit their website.
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