The trademark to the term “Taco Tuesday” has officially been abandoned by Taco John after months of litigation with Taco Bell.
- In 1981, restaurant chain Taco John sought the trademark for the term “Taco Tuesday” and succeeded in obtaining it in every state except for New Jersey, using it for marketing purposes.
- In May, rival chain Taco Bell announced a lawsuit to “liberate” the phrase from its exclusive trademark, arguing that the term had fallen into common usage and ought to be available for any restaurant to use.
- As of Tuesday, Taco John has told the U.S. Patent and Trademark Office to abandon its trademark on “Taco Tuesday,” meaning that the term is now freely available for other companies to use.
- Gregory’s Restaurant & Bar in Somers Point, New Jersey, continues to own the “Taco Tuesday” trademark in that state. It tells Reuters that it is shocked how quickly Taco John gave up the trademark.
Why It’s Important
While Taco John has no intention of backing away from the catchphrase “Taco Tuesday,” it has found that attempting to hold onto its trademark litigiously is not worth the expensive legal battle with its larger rival. Historically, the company has been somewhat aggressive with cease-and-desist letters against companies using the “Taco Tuesday” motto, but it no longer intends to defend that legal claim. Taco Bell says that it intends to allow all restaurants to use the term.
Taco John CEO Jim Creel subsequently reaffirmed in a statement that “We’ve always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do.” He told the Wall Street Journal that the legal defense could have cost $1 million, drawing negative press in the process. He also announced that Taco John will be donating $40,000 to the non-profit organization Children of Restaurant Employees and encouraged Taco Bell also to donate.
“The phrase became ubiquitous in the marketplace, and any attempt to enforce the trademark registration would likely have failed in court. Therefore, the trademark registration had little, if any, value left at this point in time. If the case was litigated to the end, Taco John’s could have suffered a significant public-relations loss. By bowing out of the court fight at this point, given the low probability of winning, Taco John’s can work to control the court of public opinion around the issue,“ trademark attorney Josh Gerben tells CNN Business.