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Torchy’s “Damn Good” Trademark Bullying…Or Not?

Posted in Branding, Infringement, Marketing, Mixed Bag of Nuts, Social Media, Social Networking, Trademark Bullying, Trademarks

A few weeks ago, a Mexican restaurant in Fort Collins, Colorado, named “Dam Good Tacos,” agreed to change its name based on a settlement in a trademark dispute with another Mexican restaurant, Torchy’s Tacos.

Torchy’s Tacos owns a federal trademark registration for the mark “DAMN GOOD TACOS” (Reg. No. 4835497) for restaurant services. After learning of the Dam Good Tacos restaurant, Torchy’s filed a complaint in federal court, asserting trademark infringement based on the nearly identical use of its mark, for related restaurant services.

The re-branded name of Dam Good Tacos is now DGT, an acronym for its previous name. Some Coloradans are unhappy with the name change, and Torchy’s is facing some significant backlash on social media for initiating this trademark dispute.

For example, one social media user states that she “kinda hates” Torchy’s for suing DGT, and another stated “shame on Tochy’s” regarding its “frivolous lawsuit,” which makes them “look foolish.”

However, the lawsuit is hardly frivolous. The parties’ marks and restaurant services are nearly identical, and Tochy’s appears to have priority, in addition to all the legal presumptions that come with its federal registration. Also, the parties’ businesses are in the same market, with a Tochy’s Tacos location just a couple miles away from DGT. And before suing, Tochy’s offered DGT financial assistance with a name change, but DGT refused.

Nevertheless, the social media backlash is a reminder that, no matter how strong the case for infringement, trademark “bullying” is a prevalent topic, and it’s important to be cognizant of the potential for negative PR in any enforcement efforts, particularly when there is a significant disparity in the size and resources of the parties, and/or when either party is popular or well-known in a particular market.

There have been several recent examples in this context, where large well-known companies initiated enforcement efforts against smaller parties, but have done so in creative, friendly, and humorous ways, which not only avoided criticism, but also benefited all parties involved, with a supportive public reaction and widespread media coverage.

Two of my favorite, recent examples of this, are the Netflix “Stranger Things” demand letter (we blogged about it here), and Bud Light’s Dilly Dilly demand scroll — which was read aloud by a medieval character at the alleged infringer’s brewery (see our blog post here). Rather than face any backlash or claims of bullying, the reactions to these enforcement efforts were positive, with both companies receiving significant praise, such as “funny,” “cool,” and “super classy.”  That’s quite a feat, as those words are quite rarely applicable to legal demand letters.

What do you think about Torchy’s approach here? Do you have any favorite examples of successful enforcement efforts from a public-relations perspective?