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Fight over Taco Tuesday trademark is over – at least in 49 states

On Behalf of | Aug 19, 2023 | Trademarks

After much media attention, the fight over “Taco Tuesday” has largely been resolved. While it may seem like every food truck and restaurant that serves tacos advertises “Taco Tuesday,” that term was trademarked in 1989 by a restaurant chain called Taco John’s. 

The exception was New Jersey, where a single restaurant had registered the trademark for use in that state a decade earlier. Taco John’s was able to snag the trademark in the other 49 states when the previous owner failed to renew the registration. 

Taco Bell sought to cancel the registration – with some powerful help

Taco Bell petitioned the U.S. Patent and Trademark Office (USPTO) in May to cancel the registration. It asserted that the term “Taco Tuesday” has become so generic that anyone who serves tacos should be able to use it.

Meanwhile, Lebron James, whose Taco Tuesday Instagram posts developed a strong following, sought to acquire the trademark and make it available to anyone. He called Taco Tuesday “a celebration that nobody should own.”  

Choosing against a costly legal battle

Taco John’s at first seemed serious about fighting these attempts to cancel the registration. However, the company’s CEO soon realized that the price tag for defending it was too high for a franchise that has about 400 restaurants in fewer than half the states in the country. 

Although Taco John’s had used cease-and-desist letters to prevent restaurants from infringing on its trademark, it hadn’t engaged in a full-blown legal battle, which was expected to cost about $1 million.

The CEO said, “We’d rather take that money and put it toward a good cause.” Well – a bit of it, anyway. He says the company plans to donate $40,000 to a nonprofit organization that provides financial aid to restaurant employees with children. He’s expressed the hope that Taco Bell will also put some of the money it will save on litigation toward that organization.

Meanwhile, the New Jersey restaurant that holds the trademark in that state has been standing firm. It remains to be seen if that continues.

What lessons can be learned from this? That’s probably a matter of perspective. However, when a trademark becomes as ubiquitous as Taco Tuesday, consumers likely aren’t going to associate it with a particular business, so its value could be minimal. Each situation is highly unique, so whichever side of a trademark dispute you’re on, it’s wise to have experienced legal guidance.