Taco John’s “Taco Tuesday” Trademark: A Surrender in the Battle Against Taco Bell
In the world of fast-food chains, competition is fierce, and branding plays a vital role in capturing the hearts and appetites of consumers. One such case that recently made headlines is the regional Wyoming-based chain Taco John’s, which operates roughly 400 restaurants in over 20 states. In May 2023, Taco John’s found itself in a legal battle with Taco Bell over Taco John’s “Taco Tuesday” trademark.
08.01.23
However, in a surprising move, Taco John’s decided to end the fight, citing the financial cost it would take to defend its trademark as the primary reason for its decision. This article delves into the background of the dispute, the significance of the Taco Tuesday trademark, and how companies can decrease the likelihood of “genericide.”
The Origins of Taco Tuesday and Taco John’s Trademark
Taco Tuesday is a phrase that has become synonymous with the idea of enjoying discounted tacos and other specials at eating establishments on Tuesdays. Its popularity has grown significantly over the years, with countless restaurants and eateries across the United States adopting the catchy slogan as a marketing tool to attract customers.
In 1989, Taco John’s successfully obtained a trademark for Taco Tuesday. Because of its trademark registration, the chain has enjoyed the exclusive right to use the term within the restaurant services industry across the United States. However, Taco John’s agreed to allow Gregory’s Restaurant & Bar, a restaurant in the New Jersey shore town of Somers Point, to use Taco Tuesday because Gregory’s did not intend to expand outside of New Jersey. Gregory’s had also previously registered the Taco Tuesday trademark in 1982 but had allowed its registration to lapse.
The Taco Bell Dispute
For decades, Taco John’s effectively utilized its Taco Tuesday trademark, building its brand around the concept of offering tacos at discounted prices on Tuesdays. As the phrase’s popularity grew, so did competitors’ interest in using Taco Tuesday to promote their restaurants. On May 16, 2023, Taco Bell filed a petition in the United States Patent and Trademark Office (USPTO) for the cancellation of Taco John’s Taco Tuesday trademark registration. Taco Bell argued principally that the phrase Taco Tuesday is a common and generic phrase, meaning it should not be entitled to trademark protection. Taco Bell also cheekily argued that the phrase “should be freely available to all who make, sell, eat, and celebrate tacos” and that Taco John’s federal trademark registration is “not cool” and “not right.” Taco Bell also launched a marketing campaign advocating for the liberation of the phrase.
The Surrender
The legal battle surrounding Taco John’s trademark was positioned to be lengthy and expensive. However, on July 18, 2023, Taco John’s announced it would throw in the towel. Taco John’s CEO, Jim Creel, believed it was “not worth the amount of money it would take to defend it.” Taco John’s estimated it could cost as much as $1 million to defend the trademark. Accordingly, Taco John’s filed a notice of abandonment of its Taco Tuesday trademark and now any restaurant in the United States, except those in New Jersey, can use the phrase. The decision came as a shock to many, as the company had previously demonstrated a staunch defense of its intellectual property rights.
So, why did Taco John’s suddenly decide to give up the fight? The primary reason cited by Taco John’s is the financial burden associated with defending its trademark against Taco Bell. Legal battles of this magnitude can be costly and time-consuming, even for established companies. As a regional chain, Taco John’s may have found it increasingly challenging to allocate resources to sustain a prolonged legal dispute against the vast resources of Taco Bell.
Taco John’s may also have recognized the extent to which the phrase has become generic, a process known as “genericide.” Genericide refers to the gradual process of a trademarked term becoming generic due to its widespread adoption by the general public. When a trademarked term experiences genericide it may lose trademark protection. Under the Lanham Act, 15 U.S.C. § 1051 et seq., generic terms may not be registered as trademarks. Some examples of trademarked terms that have suffered genericide include aspirin, escalator and jet ski.
Avoiding Genericide
While it may be impossible to control the general public from using a trademarked term generically, companies can take the following measures to decrease the chances of genericide and losing trademark protection:
- Register your trademarks with the United States Patent and Trademark Office.
- Police against others using your trademarks and enforce your rights.
- Distinguish trademarks from surrounding text using different font styles, sizes and/or colors.
- Use trademarks as adjectives, followed by the generic products or services offered.
- Educate employees, customers, and suppliers about your trademarks as separate and distinct from the products or services offered.
- Avoid using your trademarks as plural nouns to avoid suggesting genericness (e.g., “Goodyear tires” instead of “Goodyears”).
- Avoid using your trademarks as verbs (e.g., using “Xerox” to refer to copying or “Ubering” to refer to using a rideshare service).
- Utilize the registered trademark symbol (®) for registered trademarks and the trademark symbol (™) for unregistered trademarks.
Conclusion
As the Taco Tuesday saga comes to an end, it serves as a reminder of the complexities and challenges businesses face in safeguarding their intellectual property. The case also highlights the importance of considering the broader implications and costs of pursuing legal action in the pursuit of brand protection. For now, Taco Tuesday remains a widely used phrase, free for businesses across the nation to capitalize on its appeal to hungry consumers seeking a mid-week taco treat.
For additional information or assistance regarding trademark registration and protection, contact William W. Matthews, III at wmatthews@klehr.com, Lisa A. Lori at llori@klehr.com, or Michael A. Oliano at moliano@klehr.com.