Some fast food trademarks make me hungry. Taco Bell’s recent fight with Taco John’s over Taco Tuesday® did so. But trademark battles between two fast food chains aside, I thought more interesting was how Taco Bell turned the dispute into entertaining advertising that promoted its brand more than its product. More on this shortly.

Is Taco Tuesday a proprietary trademark, a designator of a single source of a product? Is it a generic term, available for use by all sellers of tacos to describe in terms generally known to the public that tacos are eaten or a good deal on Tuesdays? The question to chew on is what has the public come to understand Taco Tuesday to represent? A designator of source, or is it merely a declaration used by many that Tuesday is a day to eat tacos? Even if it began life as a designator of source, it can become generic through use. Think shredded wheat, or aspirin.

A trademark’s primary significance to the relevant public is whether the mark is a designator of a single source of goods; if it is, it is a trademark and can be protected against uses that are likely to cause confusion. If it is generic, meaning the public understands it as referring to a genus of which the particular product is a species, it is not protected.

A protectable mark can go generic and lose its protection. A generic mark answers the question, “What is it?” Once it does, no amount of association with a single vender will make it protectable; it is available for all sellers to use.

All of this is illustrated by the Taco Tuesday war waged by Taco Bell against Taco John’s 1980’s federal registration. Taco Bell claimed the term is generic and “anyone should be able to use it.” Taco John’s tossed in the towel, not wanting to spend the estimated $1 million it would cost to fight cancellation of its mark.

The best part of this story is how Taco Bell turned the dispute into commercial promotion, engaging NBA star LeBron James to publicly call for the liberation of the phrase Taco Tuesday. LeBron repeated the phrase Taco Tuesday a dozen times in the ad, and to show the restriction imposed by Taco John’s registration, Tuesday was bleeped out each time. Very, very creative, and entertaining.

Advertising has traditionally provided to consumers useful product information; ads once explained that the advertiser’s product was better than the competitor’s, e.g., “Our meat comes from Angus steers; it tastes better.”

This approach changed in the 21st century as consumers can quickly command access to online product reviews and manufacturers’ specifications, and they don’t want to hear it from paid ads. Amazon, for most of the goods it sells, provides product specs and lots of reviews from users. Likely, user reviews are more relied on than manufacturers’ claims.

Today, advertisers are selling experience, memories, and associating their products with entertainment and other human emotions. This new way to receive information has left magazines and newspapers without their traditional sources of advertising revenue.

Still, advertisers have not slowed their spending, but they spend differently, often to manipulate the consumer’s preference from one product to another by providing the consumer with information not related to the product or its qualities, but information nevertheless intended to influence their buying decisions, often for the wrong reasons. That is not to say the repetitive advertising, reach and frequency, will not create consumer preferences. Throw enough money at advertising and the product should become top-of-mind.

Boring advertising won’t be viewed. Entertainment and the use of celebrities as attractors still help draw consumers’ eyes, ears, and create memories. It is an expensive error to buy national TV to describe the quality of meat in tacos, or the MPG of a car unless the advertiser can do it by entertaining the audience.

The more successful ads create a message through entertainment and emotion; e.g., the Subaru ad featuring a dog not the car. Enter LeBron James in an entertaining campaign created around the Taco Bell-Taco John’s trademark dispute. LeBron nailed it for Taco Bell without saying a word about its product.

A well-known marketing expert said, “the best marketing doesn’t feel like marketing.” That’s called entertainment marketing; it’s what LeBron James did for Taco Bell, using the platform taken from Taco John’s. The ad was easy to watch and engaging. It made you want to cheer; it made you laugh. Use of LeBron created attention; the celebrity validated the consumers’ brand choice.

Yes, there was a trademark dispute here, but it seems this fight may have been picked by Taco Bell for reasons other than the ability to use Taco Tuesday as a mark. But until Taco Bell’s marketing director writes their book, we won’t know the back story.

James B. Astrachan is a partner at Goodell, DeVries, Leech & Dann, LLP and teaches trademark and unfair competition law at the University of Baltimore School of Law.    

If you have questions about trademarks – or other intellectual property matters – contact Jim at jastrachan@gdldlaw.com.

This article was originally published in The Daily Record.