The Fast-Food Franchisor Files Petition to Remove Trademark Owned by Taco John’s
Since 1989, the term “Taco Tuesday” has been registered as a trademark, and Taco Bell wants to change that. The fast-food franchisor petitioned the U.S. Patent and Trademark Office to remove the trademark status of the familiar term, which currently belongs to the smaller Taco John’s franchise. Taco Bell, which is owned by the Yum! Brands umbrella franchise, doesn’t want to take over the trademark nor does it want damages. The brand just asks that it be made available for use “to all who make, sell, eat and celebrate tacos.”
“Nobody should have exclusive rights in a common phrase,” Reuters reported, quoting from the petition. “Can you imagine if we weren’t allowed to say ‘what’s up’ or ‘brunch’? Chaos.”
Business rival Taco John’s has aggressively defended the trademark in the past, sending cease-and-desist letters to small and large offenders alike.
Has Taco Tuesday Become Generic?
But Taco Bell makes the case that Taco Tuesday has evolved into generic use, partly because of the alliterative way it rolls off the tongue. (In my own home state of Texas, the 51-unit Rosa’s Café chain ran a taco special on a certain day of the week and diners called it Taco Tuesday anyhow. I’m guilty as charged of doing so, although I never received a cease-and-desist letter.)
Citing the filing, CNN reported that the term “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 [Taco John’s] — simply for pursuing happiness on a Tuesday.”
Strong Case for Taco Bell
Taco Bell could have a strong case, trademark lawyer Josh Gerben told CNN, because Taco Tuesday has become so widely used. He explained that U.S. trademark law “prevents the registration of common phrases or phrases that become commonplace after a registration is granted.” He said the slogan “has become a cultural phenomenon with a long history of being used by individuals and companies other than the current owner of the trademark.”
Although Taco John’s coined the term, Gerben said that particular defense could be inadequate because Taco Tuesday is “widely used by Americans in a way that has nothing to do with the defendant’s restaurant.”
Reuters backs up Gerben’s speculation in its article, pointing to a 2019 decision from the trademark office that could serve as a precedent. In that instance, it denied NBA star LeBron James’ application for a Taco Tuesday trademark for endeavors such as podcasting and social media advertising partly because it is a “commonplace term.”
“Taco Twosday” – a promotion that offered two tacos for 99 cents – was the early ’80s brainchild of a Taco John’s restaurant owner who hoped to boost sales on a traditionally slack business day, according to CNN. The taco special caught on, and its popularity spread throughout the franchise. The name was modified to “Taco Tuesday” and trademarked in 1989.
Taco John’s Responds
In a response statement, Taco John’s said it “would like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s, the trademark owner of Taco Tuesday.” Taco John’s CEO Jim Creel said in a statement that “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,” Reuters reported. And Taco John’s upped the ante by marketing a “Taco Tuesday” special, two tacos for $2, every day through May 31, CNN said.
Taco Bell’s petition goes to the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and Taco John’s has 40 days to file its official response. If the two chains can’t reach an agreement, the case will move forward with discovery and an eventual trial in front of the board’s judges. A decision may not be reached for two years.