Earlier this year a cease and desist letter which was sent relating to the trademark TACO TUESDAY received a large amount of media coverage. MTY Group, a franchisor of numerous restaurants in Canada, including Taco Time, sent a cease and desist letter to the Calgary eatery Blanco Cantina. MTY Group has owned a trademark registration for TACO TUESDAY since 1997.
What happened next was not surprising. Even though TACO TUESDAY is likely not recognized as distinctive of MTY Group’s franchise Taco Time by Canadian consumers, Blanco Cantina was not willing to put up a fight. Blanco Cantina very quickly made the decision that trademark litigation against a much larger company was not a choice that it could make, and so it agreed to stop using the TACO TUESDAY trademark. It had a sense of humour about the issue, and has rebranded their Tuesday taco special as #TACOTUESDAZE.
Getting involved in lengthy and expensive trademark litigation is simply not possible for most small businesses. MTY Group, even though it was less likely to having the winning case should this case have gone to court, emerged victorious. What can be learned from this case is that a Canadian trademark registration is a powerful tool—even if it may not ultimately be enforceable in a court of law, it can still be very effective in protecting even minor brands.