Taco Bell is trying to cancel the “Taco Tuesday” trademark from its rival restaurant Taco John’s.
Why does Taco Bell want to free ‘Taco Tuesday’ from its trademark?
On Tuesday, May 16th, Taco Bell filed a petition with the Trademark Trial and Appeal Board, part of the U.S. Patent and Trademark Office, to cancel the “Taco Tuesday” trademark registration that Taco John’s has owned for 34 years.
“The Registration potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from Registrant (Taco John’s) – simply for pursuing happiness on a Tuesday,” Taco Bell said in the filing. “This violates an American ideal: ‘the pursuit of happiness.’”
Taco Bell added: “Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say ‘what’s up’ or ‘brunch?’ Chaos.”
In a statement, Taco Bell made it clear that it “seeks no damages or trademark rights in ‘Taco Tuesday’”, noting that it “simply seeks common sense for usage of a common term” as it “believes ‘Taco Tuesday’ should belong to all who make, sell, eat and celebrate tacos.”
Aside from its legal filing, Taco Bell also started a Change.org petition titled “Freeing Taco T***day”, in which it’s asking its fans to show support for its efforts by signing the online petition. As of May 18th, the petition has only earned less than 500 signatures.
Who owns the ‘Taco Tuesday’ trademark?
Taco John’s owns the trademark registration for “Taco Tuesday” in 49 states, while another business called Gregory Hotel Inc. owns it in New Jersey. Taco Bell is also petitioning to free “Taco Tuesday” from Gregory Hotel’s trademark in New Jersey.
According to CNN, the term “Taco Tuesday” originated from a campaign called “Taco Twosday.” Coined by a Taco John’s restaurant owner in the early 1980s, “Taco Twosday” was a 99-cent deal for two tacos offered during the slowest day of the week. The campaign was a success, so much so that the owner shared it with other franchisee owners.
Taco John’s eventually changed the name to “Taco Tuesday” and trademarked it in 1989, making it part of its marketing. Since then, the restaurant chain has defended its use of the phrase and sent cease-and-desist letters to others trying to use it. A 2017 Vice article with the headline “This Chain Owns the Taco Tuesday Trademark, and It’s Not Afraid to Sue You” talked about Taco John’s commitment to going after people and organizations who use the term without permission.
How did Taco John’s respond to Taco Bell’s move?
In response to Taco Bell’s petition to “liberate” “Taco Tuesday” from its trademark, Taco John’s launched a two-week-long Taco Tuesday deal offering two tacos for only $2.
Taco John’s CEO Jim Creel also released a statement that reads: “I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s. When it comes right down to it, we’re lovers, not fighters, at Taco John’s. But when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”
What will happen next?
According to CNN, the Trademark Trial and Appeal Board can take up to two years before a decision is issued. Taco John’s has 40 days to file a response to Taco Bell’s filing. If the two taco chains don’t reach an agreement, the case will move to a discovery period where each company can make document requests and present evidence stating their case. After that would be a series of trials and oral arguments to be presented in front of the board’s judges.
While it’s too early to predict the outcome, trademark attorney Josh Gerben told CNN that Taco Bell may have a strong case, especially because “Taco Tuesday” has become a commonly used phrase. Gerben pointed out that the U.S. trademark law “prevents the registration of common phrases or phrases that become commonplace after a registration is granted.”
Although Taco John’s was the one who coined the phrase, Gerben said that it might not be enough for the restaurant chain to keep the trademark for “Taco Tuesday”, especially now that it is “widely used by Americans in a way that has nothing to do with the defendant’s restaurant.”