Taco Bell is embarking on a mission to reclaim “Taco Tuesday” for the masses, by requesting that U.S. regulators insist Wyoming-based Taco John’s relinquish its long-held trademark on the term. The company argues in a U.S. Patent and Trademark Office submission that the term “Taco Tuesday” is used so extensively by multiple businesses that Taco John’s should not have sole ownership rights.
This appeal represents the most recent twist in an ongoing dispute over the phrase “Taco Tuesday,” which even saw NBA star LeBron James fail to secure the trademark in 2019. Taco Bell’s submission asserts that depriving anyone – from Taco Bell itself to taco providers globally – of using “Taco Tuesday” is akin to denying the world of sunshine.
Trademark law attorney Emily Poler suggests that “Taco Tuesday” may have undergone “genericide,” a term describing a word or phrase becoming so prevalent for similar items or promotions that it no longer signifies the trademark holder. “Cellophane,” “escalator,” and “trampoline” are cited as examples of such terms. According to Poler, the crux of the issue is that a ‘generic’ term, lacking a specific association with a particular source or product, cannot be trademarked. LeBron James encountered this issue during his 2019 trademark attempt when “Taco Tuesday” was deemed too much of a “commonplace term” to qualify as a trademark.
Taco Bell, with over 7,200 locations worldwide and being part of the Yum! Brands family along with Pizza Hut, KFC, and The Habit Burger Grill, dwarfs Taco John’s, which operates about 370 locations in 23 predominantly Midwestern and Western states. Despite its smaller size, Taco John’s has been vigilant in defending its “Taco Tuesday” trademark, which it has held since the 1980s. This included sending a warning to a nearby brewery to cease using the term to advertise a taco truck on Tuesdays.
The obligation to actively defend a trademark is essential for retaining rights to it, and the warning letter was just one instance of Taco John’s admonishing restaurants to desist from promoting “Taco Tuesdays.
Responding to Taco Bell’s claim, Taco John’s launched a two-week Taco Tuesday promotion and delivered a cheeky retort. CEO Jim Creel thanked Taco Bell for reminding everyone that “Taco Tuesday is best celebrated at Taco John’s,” and extended an invitation to Taco Bell fans to experience “how flavorful and bold tacos can be at Taco John’s.”
Taco Bell’s dispute includes two filings related to “Taco Tuesday.” One challenges Taco John’s claim to the term in 49 states, while another disputes a New Jersey restaurant and bar’s rights to use “Taco Tuesday” in that state. Both Taco John’s and Gregory’s Restaurant and Bar in Somers Point, New Jersey, have been using “Taco Tuesday” for over four decades.