The “Taco Tuesday” trademark tiff between Taco John’s and Taco Bell has come to an end!
Since 1989, Taco John’s, a fast-food chain from Wyoming, has owned the federally registered trademark for “Taco Tuesday”. This past May, Taco Bell challenged Taco John’s trademark registration so that it would be “freely available to all who make, sell, eat and celebrate tacos.” In Taco Bell’s petition with the United States Patent and Trademark Office (USPTO) to have the registration cancelled, they argued that no one should have the rights to a common phrase. To gain public support, Taco Bell even went as far as creating a campaign around the movement which they referred to as “The Liberation of ‘Taco Tuesday’”. Soon after starting their journey, NBA all-star and Taco Tuesday enthusiast, LeBron James, joined their quest to liberate the saying.
If you didn’t know, during the summer of 2019, after the Lakers missed the playoffs, LeBron James began sharing his newly created household tradition with the internet. Each video consisted of James loudly exaggerating “Taco Tuesday” before showing off his tacos and attempts to embarrass his family in a dad-like way. He became so well-known for his “Taco Tuesday” videos that when fans met him, they often asked him to repeat the iconic way he says it. Taco Tuesday became such a big part of James’ brand, he even attempted to register a trademark for the term, but was denied. So, it was no surprise when Lebron James joined the Taco Tuesday trademark tiff and starred in Taco Bell’s 30-second commercial “Taco Bleep” which comically played on the phrase’s legal ramifications.
In response to Taco Bell’s journey to liberate “Taco Tuesday”, Taco John’s CEO Jim Creel said, “we’re lovers not fighters. . .but when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well that just rings hollow to us.” He then goes on to subtly criticize Taco Bell, “If ‘living mas’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”
Fittingly, on Tuesday, July 18th, Taco John’s released a statement conceding, vowing to abandon the registration. Creel made a statement saying “[they’ve] always prided [themselves] on being the home of Taco Tuesday but paying millions of dollars to defend [their] mark just doesn’t feel like the right thing to do.” Taco John’s is also asking Taco Bell to match its $100-per-restaurant donation to the nonprofit Children of Restaurant Employees (CORE). With Taco John’s having about 400 locations in the United States and Taco Bell having more than 7,200 locations in the United States and about 1,000 restaurants internationally, that’s over $860,000 in donations total. Taco John’s also urged James to donate the money he received from being a Taco Bell spokesperson to the same organization.
Although the battle with one “Taco Tuesday” trademark owner has come to an end, there is still a family-owned restaurant that owns the trademark rights in New Jersey, Gregory’s Restaurant and Bar.
Gregory Gregory, the fourth-generation owner of Gregory’s, introduced Taco Tuesday at his restaurant in 1978 because he knew tacos would be a popular food item, but his family rejected the idea to put them on the regular menu. They appeased him by starting Taco Tuesday where they sold 3 tacos for $1. Six months after Taco Tuesday became a hit, Gregory’s friend. Jack Spellman, suggested Gregory file a trademark application for the term. Gregory said he “procrastinated and didn’t do it, and then one day [Jack] came in with all the paperwork, asked for a check, brought it to the patent attorney himself, and I received the service mark in 1982.”
After receiving the trademark registration, the Gregory family enforced their trademark rights by sending letters and calling restaurants to let them know they “were due triple damages” if they brought them to court. Gregory went on to say, “nearly everyone would just back down” because “[they] weren’t the kind of people to take people to court.”
However, in 1989, the family missed the deadline to submit proof they were still using the trademark in commerce, which would allow them to maintain the trademark registration. By this time, Taco John’s, seized the opportunity and was granted the trademark registration.
In a settlement, Taco John’s and Gregory’s agreed that Gregory’s would own the rights to ‘Taco Tuesday’ in New Jersey and Taco John’s would own the right to the phrase in the rest of the country. Gregory claimed he was fine with this settlement because it “was always more about a social event at [their] bar.”
It will be interesting to see what happens between Taco Bell and Gregory’s now that Taco John’s has conceded. After their concession, Taco Bell took to Twitter to repost a tweet from the Los Angeles Times and commented, “Best taco Tuesday ever… for now”. Taco Bell spent a lot of time and effort to liberate “Taco Tuesday” and their tweet hints that something more is coming. I can’t wait to see what Taco Bell has instore for “Taco Tuesday” and how they’re going to handle using (or not using) it in New Jersey.