Taco Tuesday Trade Mark Battle

Author: Jasmine Burrows, Progressive Legal

Introduction

You’ve probably heard of the phrase, ‘Taco Tuesday’, or maybe even participated in the phenomenon yourself. Whether that be heading down to your local Mexican joint to enjoy 50% off your dinner or gathering at home as a family to create your own feast, Taco Tuesday has become a beloved tradition for many.  

There’s something about the alliterative allure of the phrase that has captured the heart and taste buds of people worldwide.  So then why has this culinary tradition recently become the source of such controversy?   

The controversy is centred on the argument that the phrase, ‘Taco Tuesday’, has become so commonly used and associated with taco-related activities that it should be considered a generic term and not subject to exclusive trademark protection. 

Background

It all began on 16 May 2023 when the global Mexican restaurant chain, Taco Bell, announced that it would fight for its rights to use the household phrase ‘Taco Tuesday’. At the time, the trademark rights to the phrase belonged to the fast-food chain, Taco John’s, in every state in the United States except New Jersey, where it is still owned by Gregory’s Restaurant & Bar in Somers Point. This meant that other restaurants were prohibited from using ‘Taco Tuesday’ in their branding or advertising without express permission from Taco John’s (I.e., a licence to use the mark). 

Taco Bell filed a petition for cancellation with the US Patent and Trade mark office for the ‘Taco Tuesday’ trade mark to be cancelled because the phrase should ‘belong to all who make, eat and celebrate tacos.’ They did not seek rights to the mark or damages, but simply the liberation of the beloved phrase. Given the popularity of the saying, Taco Bell claimed that Taco John’s trade mark rights had disproportionately monopolised the food and hospitality industry. Under its petition, Taco Bell cited the grounds for cancellation as section 14(3) of the Trade Mark Act on the basis of abandonment and that the mark is or has become too generic.  

Taco Bell also capitalised on the dispute by launching a marketing campaign with Lebron James to collect signatures in support of ‘freeing Taco Tuesday’. This campaign garnered significant public attention and accumulated over 24,568 signatures in favour of Taco Bell’s stance. 

Taco Bell’s litigious stance towards the words ‘Taco Tuesday’ has not been limited to Taco Johns. Taco bell also filed a petition for cancellation in relation to the Gregory’s Restaurant in New Jersey. 

The Outcome

On 18 July 2023 (coincidentally, a Tuesday!), the trade mark dispute came to an end. Ultimately, Taco John’s CEO, Jim Creel, announced that the company was voluntarily abandoning its trademark to ‘Taco Tuesday.’ He cited ethical reasons, stating that spending large sums on lawyers to defend the mark didn’t feel right. Creel noted that it would have cost approximately $1million to defend the ‘Taco Tuesday’ trade mark.  

The legal significance of this battle lies in the successful challenge against a previously registered trade mark based on the argument that it had become a generic term due to widespread use and popularity. The abandonment of the ‘Taco Tuesday’ trade mark was a notable shift for Taco Johns considering the business had a propensity to enforce its rights in the registered mark and sent many cease and desist letters over the years to businesses.  

Ultimately, the battle serves as a reminder to businesses about the importance of continually monitoring and evaluating the distinctiveness and protectability of their trademarks in response to evolving consumer perceptions.  

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