Taco Bell Requests Cancellation of “Taco Tuesday” Trademarks

Taco Tuesday is such a ubiquitous concept in this country that we barely think anything of it. Just about every taco chain around seems to have some variant of it, from buy-one-get-one deals to picking up a twelve-pack of tacos for an amount of chump change you could easily find in your couch. What many people don’t know is that Taco Tuesday is an actual federal trademark–and Yum Brands, which owns Taco Bell, wants to see that change.

But why?

Let’s Taco Bout Trademark

In 1979, Gregory’s Restaurant and Bar in New Jersey allegedly coined the phrase, “Taco Tuesday.” The promotion was a huge success, and the owner filed for a trademark. However, some years later they failed to submit evidence that the trademark was being used. Just as the Patent and Trademark Office canceled the registration in 1989, the Wyoming-based Taco John’s, which had started using the phrase in the early 1980s, swooped in and was awarded the trademark.

The matter was litigated and Gregory’s won the right to use “Taco Tuesday” in New Jersey while Taco John’s has the rights for the rest of the United States.

Between these two local/regional taco stops, Taco Tuesday was all sewed up from an IP protection point of view.?

Taco Bell says that “Taco Tuesday” is too broad a term to be protectable under federal trademark and IP laws. While it could be protected as a specified mark with a precisely described typeface, colors, and other elements, the phrase itself is sufficiently vague, generic and unlimited in scope to warrant trademark coverage, in part because the phrase does not indicate a specified source of the tacos in question.?

Why Does Taco Bell Even Care About This?

According to the filings and two petitions the Mexican fast-food megalith has produced, Taco Bell wants to be able to use the phrase “Taco Tuesday” without fear of inviting legal action from either of the current trademark holders. The stated reason for this, the brand claims, is that no one should be prevented from “pursuing happiness on a Tuesday…This violates an American ideal: 'the pursuit of happiness.'"

Gregory’s Restaurant and Bar and Taco John’s beg to differ, of course.

The owner of Gregory’s stating that the move by Taco Bell was a blatant attempt by a larger company to “steamroll” competition who dared to have a good idea that the larger company couldn’t make a buck from. The CEO of Taco John’s, Jim Creel, took a more humorous and laconic approach, quipping, " I'd like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John's." Taco John’s also rolled a two-week-long Taco Tuesday event to reiterate this point in the eyes and minds of the public.

Can’t They Just “Burrito” The Hatchet?

The thing about trademark law is that, in order for trademark protections to remain valid, entities and private citizens holding trademarks must be willing, able, and ready to defend them against encroachment or appropriation by others. Taco John’s in particular is known to be quite diligent about this, sending cease-and-desist letters and even taking legal action against those who even give the appearance of infringing the mark.?

However, Taco Bell may have an unexpected and unusually strong hand to play in this case. In 2019, LeBron James was denied a trademark for the phrase which would have covered sports entertainment, commentary, and news in the form of podcasts and social media advertising. Then, in 2022, a brewery’s application for a mark covering a specific beer brand was shot down by USTO. The reason given for both denials by the USTO was that the phrase was too broad to be effective IP protection.

This means Taco Bell has a better than average shot at getting the mark reversed. Adding to the strength of their argument is the fact they’re not seeking damages or other injunctive relief, nor to deny the use of the phrase by any specific entity, according to the documents Taco Bell filed. They just want to be able to offer their own version of Taco Tuesday unencumbered by that pesky risk of being sued for trademark infringement.

The Bottom Line

The USTO has up to two years from the petition date to render a decision, although petitions like this are frequently turned around much more quickly than that. Until the USTO renders a decision, however, Taco John’s and Gregory’s remain the sole and only legal owners of the Taco Tuesday mark. In this situation, I would be deeply surprised if Taco Bell’s petition didn’t succeed, simply because of the broadness of the phrase.

No matter how this case goes down, however and wherever you celebrate Taco Tuesday if and when you do, I think it’s safe to say that the cultural phenomenon that is Taco Tuesday is unlikely to retire any time soon–even if the trademarks on it do!?

About John Rizvi, Esq.

John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).

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