Wrapping up the “Taco Tuesday” Trademark Dispute

This week, Taco Bell announced that a dispute between the fast food behemoth and two local restaurants has come to an end. What was the dispute? Back in May, the owner of Taco Bell, Yum Brands Inc., announced that it petitioned the U.S. Trademark Office (USTO) to cancel trademarks of two restaurants that have had exclusive rights to the phrase “Taco Tuesday.” Taco Bell’s stated mission was to liberate the phrase for all restaurants nationwide.

Gregory’s Restaurant & Bar in New Jersey, and Taco John’s in Wyoming have had trademarks for the phrase “Taco Tuesday” since 1995 and 1989 respectively. Co-owner of the New Jersey establishment claimed that Gregory’s Restaurant & Bar came up with the phrase “Taco Tuesday” in 1979, and has used it to sell thousands of tacos ever since. In response to the petition, owner of Taco John’s stated that “a big bad bully” (i.e. Taco Bell) threatened to take away something that had originated from their “forefather’s decades ago.”

Let’s taco ’bout it

In the petition, Taco Bell argued that both trademarks should be cancelled because the phrase “Taco Tuesday” is too generic and these two restaurants should not have a monopoly over the slogan. After some preliminary litigation, owners of Taco John’s decided to give up their trademark rather than pursue a lengthy and costly legal battle against Taco Bell in the courts. Taco John’s trademark covered 49 of the states, so once it conceded, Gregory’s Restaurant & Bar remained the sole trademark owner of the phrase –only applicable in New Jersey.

Taco Bell announced on Tuesday that both restaurants have agreed to end their trademarks over the phrase. However, no further details were provided as to how the the decision was reached, or whether a financial settlement was involved. When Taco Bell initially petitioned the USTO, it stated it was never interested in its own “Taco Tuesday” trademark, and it was not requesting money damages. The company “simply [sought] common sense for usage of a common term.”

Common words or phrases can be trademarked. One of the most famous being “Apple Inc.” In order to succeed, the entity seeking the trademark has to demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning, such as representing a service or product.

Trademarking Tacos

This is not the first time the phrase “Taco Tuesday” has come into dispute at the U.S. Trademark Office. In 2019, LeBron James applied for, and was denied a trademark for “Taco Tuesday.” He wanted a trademark that would cover podcasting, social media, and advertising. Ultimately, the Trademark Office denied his request concluding it was a “commonplace term.”

Taco Bell has claimed victory over this trademark battle after Taco John’s relinquished its trademark rights in 49 states earlier this summer, and Gregory’s Restaurant and Bar relinquished its trademark rights in New Jersey on October 20th. Taco Bell now advertises on its website that “everyone in the US can finally celebrate Taco Tuesday freely.”

Though Taco Bell has maintained its intentions were innocent, simply wanting “all those who make, sell, eat and celebrate tacos” to have the freedom to do so without fear of legal repercussions, it raises the question: why did a conglomerate fast food chain go to war against two small local restaurants? Altruistic intentions? Financial motive?

Taco Bell argued that no one restaurant should have exclusive rights to “Taco Tuesday” because it is a common phrase that all businesses are entitled to use. However, restaurant owners of the trademark balked at this argument, suspecting that Taco Bell’s true motive was to promote its own tacos for profit.

Tacos for all…in New Jersey

Following Taco Bell’s “victory” its website now states that to celebrate the win, Taco Bell reward members in New Jersey can get a free Nacho Cheese Doritos Locos Taco until November 21st –if people order on the Taco Bell app. Coincidence that the last holdout in the trademark battle also happened to be a New Jersey restaurant? Perhaps.

Interested in trademark law? Care to read actual legal documents in cases similar to this one? Head on over to trellis.law where you can sift through hundreds of disputes involving similar legal issues.