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Apparently, my Tuesday lunch routine full of beer and tacos, to unwind from a day filled with intellectual property is now linked to my work day; tacos and beer are in the news.

Recently, Budweiser the beer manufacturer and The Iguana Mexican Grill out of Oklahoma City, found out

that they had one thing in common; they both lost battles over Trademark recently.

A European high court ruled that Anheuser-Busch cannot trademark “Budweiser” in Europe, and similarly in

the US, it was found that “Taco Tuesday” was the sole property of Taco John’s.

Anheuser-Busch applied to use the Budweiser trademark in the EU back in 1996 and Anheuser-Busch’s

application was promptly rejected. The Czech Brewery Budejovicky Budvar instead had its rights upheld due

to a long history with the Budweiser mark in Germany and Austria.

This has created a disconcerting precedent for Budweiser in the EU.

Then, in an unrelated move, Taco John’s is ordering owners of Iguana Mexican Grill in Oklahoma City to quit

using the phrase “Taco Tuesday” to promote its weekly $1 dollar taco nights; “Taco Tuesday” was

introduced in 2009 for Iguana Mexican Grill’s first anniversary and has been a popular event ever since.

While the Taco Tuesday phrase can’t be used by Iguana Mexican Grill due to the challenge by Taco John’s

chain, the actual local event will go on.  Even with the “cease and desist” ordered by attorneys with Taco

John’s to quit using the phrase “Taco Tuesday” for the weekly $1 taco promotions, event will be renamed

and the price will remain along with Iguana’s other promotions.

Also ongoing, Anheuser-Busch is appealing to the Court of Justice of the European Union,  to argue

that Budvar, the Czech mark holder, should have submitted evidence of its renewal of the Budweiser mark

at an earlier stage in the case. Anheuser-Busch is not getting any traction with this tactic, as the

Luxembourg-based Court of Justice rejected this argument and dismissed the case as it stands today. The

court contends that adding that any new rules relating to production of evidence cannot be applied

retroactively.

This is not the news that Anheuser-Busch was hoping to hear.

So this brings us back to the taco world.

Taco John’s which is a Cheyenne, Wyoming based entity, has 425 locations; they stand by the fact that “Taco Tuesday” is an important mark for Taco Johns.

They further state that they have owned the trademark since 1989 and is as much an icon as “potato ole’s.”

An interesting fact to note is that “Taco Tuesday” was first used by the Taco John’s chain in February 1982.

However, that may not be the earliest recorded use of the term; a Laguna Beach, California restaurant named Tortilla Flats, owns www.tacotuesday.com and stands by its claims that Tortilla Flats started using the phrase way back in 1976!

So far, the USPTO records only confirm that Taco John’s registered the Taco Tuesday phrase in 1989 and as a

result, the Trademark still applies in all states except New Jersey.

At this time there does not appear to be a current battle between Tortilla Flats and Taco John’s, but that

does not mean there will not be a future challenge to the mark; “Taco Tuesday” is a more or less a coined

phrase now; could this open the door for a “fair use” suit? I doubt that challenge is far behind given the

recent litigation’s.

As for for Anheuser-Busch, they will keep up the fight against Budejovicky Budvar over the “Bud” mark and

the battle is still pending. The precedent set by the European ruling is a dangerous one. This is the kind of

“foothold” that trademark holders hate, as it unnecessarily complicates what should be a simple case of

protecting your business.

Since the European Court of Justice acts as the EU’s supreme legal venue, this likely signals an end to

Anheuser-Busch’s European battle for the Budweiser name for now.

Beer and Taco lunch specials on Tuesday everywhere seem to be weathering the storm fine, as my own

personal research has revealed, but I will stay on this issue every Tuesday to be sure.

This week Toyota lost an important intellectual property decision with regard to how trademarks are used, and in a way, we all lost some protection against the bad guys.

Recently, the U.S. Ninth Circuit Court of Appeals in San Francisco ruled in favor of an authorized Lexus dealer to use the word “Lexus” as part of its domain nameunder “fair use”.

Previously, this ability to use Lexus was prohibited in an earlier decision.

I have written previously about fair use, but mostly in favor of the trademark holder. This time the decision has benefitted the other side of the argument; not the TM holder, and not those of us in the enforcement industry.

In this case the judge upheld the idea that “Lexus” is being used to literally describe a product or service that is being sold or serviced at the location in question.

To the judge in this case, it was the very definition of fair use.

Lisa and Farzad Tabari, who own Fast Imports, initially lost their domain names; buy-a-lexus.com and buyorleaselexus.com in 2003 under the legal protection against customer confusion, on behalf of Toyota.

Companies have very strict usage policies with regard to how their trademark is used by entities other than the parent company; distributors, jobbers, affiliates and any other related entity must comply, and any variation is monitored and usually forbidden.

The rules must be handed down by the parent company and there needs to be no mistake where this policy is eminating from; the must be strict control of how the mark is used.

Toyota’s basic case centered around the idea that consumers could be confused by the use of the name “Lexus” in the domains in question.

They contend that the website(s) in question contained and used Lexus photos and the Lexus logo, which could only add to the confusion, not clarify.

As expected, Toyota was not sympathetic to the Fast Imports’ use of copyrighted Lexus photos and the Lexus logo, and to the use of Internet domain names buy-a-lexus.com and buyorleaselexus.com.

Initially, the federal court judge ruled in favor of Toyota and the term Lexus was ordered removed; this decision was recently appealed and the result was that domains like “we-are-definitely-not-lexus.com” and “independent-lexus-broker.com” would not confuse a reasonable person into thinking these are legitimate Toyota sites.

In fact, the idea that Lexus was used as a business descriptor was upheld by this judge.

The problem with this decision is that while the judge felt that the previous decision’s protections were too broad, the precedent that was set here could allow for too much protection for cybersquatter technicalities.

We have encountered the situation many times where a cyber-squatter is using a protected brand, and to add insult to injury, they will state “We are not affiliated with “protected brand” and we make no claims of this nature. However they are selling the “protected brand” and many times at a reduced price.

Sometimes, even gray market, stolen, or knock off items are being sold.

In light of this new decision, ridiculous attempts to use a technicality to avoid enforcement, might actually have a chance with another judge using this decision as a precedent.

Personally I disagree with the judgement, because in my mind a trademark requires great responsibility and vigilant effort to keep safe.

Fair use should be reserved for parody and non-money making ventures.

If you want to use a trademark, you should secure permission in advance to do so and pay a fair price for the additional credibility and business you will gain from this recognition.

Essentially, in my opinion, this decision has weakened our protection against cybersquatters, and has empowered both the cheap, and the lazy to forego the correct way to secure business and customers, and instead just encourages infringers to seek out profitable entities and leech off of their success, without paying for it.