Tasty tacos. It is a meal people enjoy eating… and now it’s making trademark history. 

This story is an excellent lesson in why a business should choose a strong trademark and not a merely descriptive trademark.

In 1961, Richard and Antonia Mosqueda opened Tasty Tacos, Inc., a Mexican restaurant that became known for high-quality Mexican food in Des Moines, Iowa. They registered the trademark, TASTY TACOS, with the United States Patent and Trademark Office (USPTO) on June 1, 1993 for restaurant services. 

The Mosquedas eventually opened six restaurants in Iowa and started selling its sauces and seasonings online and in local grocery stores.

On November 17, 2017, they filed an intent-to-use trademark application for TASTY TACOS in Class 30 for spices. The USPTO refused registration since it was considered merely descriptive of the product or an element of the product.

The Mosquedas argued in their response to the refusal that the trademark had been used since 1961 and had achieved secondary meaning in commerce. And they filed an amendment to the trademark application to allege use in commerce on the same day they filed their response. 

The examining attorney accepted the Notice of Alleged Use in Commerce — but still denied the trademark application as merely descriptive. 

The owner of TASTY TACOS agreed to amend the application to the Supplemental Register, which is for merely descriptive trademarks that are used in commerce. But this application was then suspended, because there was a new hurdle.

Enter the Wicked Tasty Tacos…

The examining attorney suspended the trademark application to the Supplemental Register due to a pending trademark application for… WICKED TASTY TACO.

The WICKED TASTY TACO intent-to-use trademark application was filed on January 23, 2018 in Class 29 for food additives by More Than Gourmet Holdings, Inc. of Akron, Ohio.

But the owners of the original TASTY TACOS were not backing down. On January 18, 2019, they filed a third trademark application, this time for hot sauce. Unfortunately, the trademark examining attorney refused registration again on the ground that the mark is merely descriptive. 

And this has begun a series of legal actions. Here is a quick summary:

• The owner of TASTY TACOS filed a Notice of Opposition against the application for WICKED TASTY TACO on February 25, 2019 before the Trademark Trial and Appeal Board based on priority in commerce and likelihood of confusion. 
• On June 6, 2019, the owners of TASTY TACOS then filed a lawsuit in the Southern District of Iowa against More Than Gourmet for trademark infringement and petitioned the District Court to issue an injunction against More Than Gourmet. 
• On August 12, 2019, More Than Gourmet filed Counterclaims requesting the court issue a Declaratory Judgment to determine that the TASTY TACO trademarks for spices and hot sauces are invalid and unenforceable.

Avoid Legal Hassles by Choosing Strong Trademarks

All of this legal fighting over merely descriptive trademarks could have been avoided if the parties had developed a strong trademark for their business and products. 

The purpose of a trademark is to identify the source of goods and services. The strongest trademarks are arbitrary or fanciful. 

Arbitrary marks are made up words like STARBUCKS® and KODAK®. Fanciful marks are common words whose meaning has nothing to do with the product such as DOVE® for chocolate and APPLE® for computers and cell phones. 

Many business owners get stuck on selecting a name that simply describes their business. But if you want to distinguish your business from the pack, you should develop strong trademarks that will not be confused with other businesses.

It’s better to spend the time and money in the beginning on distinguishing your brand in commerce than years later on lawyers arguing over merely descriptive trademarks.

If you are struggling with a merely descriptive trademark, contact Marks Gray intellectual property lawyer Crystal Broughan to help you distinguish your business from all of the others.