The long-running dispute over who owns the rights to “Taco Tuesday” dates back to the 1980s.
CHEYENNE, WYO.—Declaring a mission to free “Taco Tuesday” for all, Taco Bell is asking U.S. regulators to force Taco John’s of Wyoming to drop its long-standing claim to the trademark.
Too many businesses and other individuals refer to “Taco Tuesday” for Taco John’s to have exclusive rights to the phrase, Taco Bell argued in a filing with the US Patent and Trademark Office, which of course was dated Tuesday.
It’s the latest development in the long-running “Taco Tuesday” controversy, which even saw NBA star LeBron James unsuccessfully attempt to trademark it in 2019.
“Taco Bell believes that ‘Taco Tuesday’ is critical to every Tuesday. To deprive anyone of the opportunity to say ‘Taco Tuesday’ — whether it’s Taco Bell or anyone who brings tacos to the world — is like depriving the world of sunlight itself,” Taco Bell said in a statement.
The key question is whether Taco Tuesday has succumbed to “genocide” over the years, said New York trademark attorney Emily Poehler. It’s a term when a word or phrase has become so widely used for similar products – or in this case, sales promotion – that it’s no longer associated with the trademark owner.
Commonly known examples of genericide victims include “cellophane,” “escalator,” and “trampoline.”
“The bottom line is that you can’t use a trademark for something that is ‘generic,'” Poehler said. “That means it has no connection to that particular source or product.”
James — a known taco lover — ran into this problem when he tried to trademark Taco Tuesday in 2019. The Patent and Trademark Office, in a ruling that did not apply to Taco John’s, deemed “Taco Tuesday” too much of a “generic term” to qualify as a trademark.
Taco Bell is Yum! Brands chain, along with Pizza Hut, KFC and The Habit Burger Grill, is much larger than Cheyenne’s Taco John’s. Founded more than 50 years ago as a food truck, Taco John’s has about 370 locations in 23 states, mostly in the Midwest and West.
The chain’s relatively small size hasn’t prevented the widespread adoption of “Taco Tuesday” as a trademark dating back to the 1980s. In 2019, the company sent a letter to a brewery just five blocks from its headquarters, warning to stop using “Taco Tuesday” to promote a taco truck parked outside on Tuesdays.
Active trademark protection is required to maintain a trademark claim, and this letter was just one example of Taco John’s telling restaurants to drop Taco Tuesdays.
Taco John’s has responded to Taco Bell’s bid by announcing a new bi-weekly Taco Tuesday promotion, with a big response.
“I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s,” CEO Jim Creel said in an emailed statement. “We love celebrating Taco Tuesday with taco lovers everywhere, and we even want to extend a special invitation to Taco Bell fans to let loose by coming to see how flavorful and bold tacos can be at Taco John’s all month long.”
The filing is one of two from Taco Bell tied to “Taco Tuesday.” One challenges Taco John’s “Taco Tuesday” claims in 49 states, while a similar filing challenges a New Jersey restaurant and bar’s “Taco Tuesday” claims in that state. Taco John’s and Gregory’s Restaurants and Bars in Somers Point, NJ have been celebrating Taco Tuesday for over 40 years.
A Taco John’s franchisee in Minnesota came up with “Taco Twosday” to promote two tacos for 99 cents on a slow day of the week, Creel told The Associated Press on Tuesday.
The Patent and Trademark Office approved Taco John’s trademark “Taco Tuesday” in 1989. Despite the large number of letters, according to Kryll, the company has never had to go to court over the phrase.
The much larger Taco Bell doesn’t feel too edgy either.
“That’s OK. It’s nice that they noticed,” Creel said.