By Mead Gruver
Declaring a mission to liberate “Taco Tuesday” for all, Taco Bell is asking U.S. regulators to force Wyoming-based Taco John’s to abandon its longstanding claim to the trademark.
Too many businesses and others refer to “Taco Tuesday” for Taco John’s to be able to have exclusive rights to the phrase, Taco Bell asserts in a U.S. Patent and Trademark Office filing that is, of course, dated Tuesday.
It's the latest development in a long-running beef over “Taco Tuesday” that even included NBA star LeBron James making an unsuccessful attempt to claim the trademark in 2019.
“Taco Bell believes ‘Taco Tuesday’ is critical to everyone’s Tuesday. To deprive anyone of saying 'Taco Tuesday' — be it Taco Bell or anyone who provides tacos to the world — is like depriving the world of sunshine itself," the Taco Bell filing reads.
A key question is whether “Taco Tuesday” over the years has succumbed to “genericide,” New York trademark law attorney Emily Poler said. That's the term for when a word or phrase become so widely used for similar products — or in this case, sales promotions — they're no longer associated with the trademark holder.
Well-known examples of genericide victims include “cellophane," “escalator” and “trampoline.”
“Basically what this is about is you cannot trademark something that is ‘generic,’” Poler said. “That means it doesn’t have any association with that particular source or product.”
James — a well-known taco lover — encountered this problem when he tried to trademark “Taco Tuesday" in 2019. The Patent and Trademark Office, in a ruling that didn't refer to Taco John's, deemed “Taco Tuesday” too much of a “commonplace term” to qualify as a trademark.
With more than 7,200 locations in the U.S. and internationally, Taco Bell — a Yum! Brands chain along with Pizza Hut, KFC and The Habit Burger Grill — is vastly bigger than Cheyenne-based Taco John's. Begun as a food truck more than 50 years ago, Taco John's now has about 370 locations in 23 mainly Midwestern and Western states.
The chain's relatively small size hasn't discouraged big-time enforcement of “Taco Tuesday” as trademark, which dates to the 1980s. In 2019, the company sent a letter to a brewery just five blocks from its corporate headquarters, warning it to stop using “Taco Tuesday” to promote a taco truck parked outside on Tuesdays.
Actively defending a trademark is required to maintain claim to it, and the letter was just one example of Taco John's telling restaurants far and wide to stop having “Taco Tuesdays.”
Taco John's responded to Taco Bell's filing by announcing a new two-week Taco Tuesday promotion, with a large side of riposte.
“I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s,” CEO Jim Creel said in an emailed statement. “We love celebrating Taco Tuesday with taco lovers everywhere, and we even want to offer a special invitation to fans of Taco Bell to liberate themselves by coming by to see how flavorful and bold tacos can be at Taco John’s all month long.”
The filing is one of two from Taco Bell involving “Taco Tuesday." One contests Taco John's claim to “Taco Tuesday” in 49 states, while a similar filing contests a New Jersey restaurant and bar's claim to “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 40 years.
A Taco John's franchisee in Minnesota came up with “Taco Twosday” to promote two tacos for 99 cents on a slow day of the week, Creel told The Associated Press in an interview Tuesday.
The Patent and Trademark Office approved the Taco John's “Taco Tuesday” trademark in 1989. Even with its many letters, Creel said, the company has never had to go to court over the phrase.
He's not feeling too picked on, either, by the much bigger Taco Bell.
"It's OK. It's kind of nice that they've noticed," Creel said.