After decades of legal wrangling, the popular fast food phrase "Taco Tuesday" is now free for all restaurants to use in marketing and promotions, except in the state of New Jersey.
Taco John's, which had claimed ownership of the trademark since 1989 in every state but New Jersey, announced today that it is abandoning its trademark rights to the common phrase. The surrender comes after competing fast food chain Taco Bell filed petitions with the U.S. Patent and Trademark Office earlier this year urging the agency to cancel Taco John's trademark registration.
In its petition, Taco Bell argued that "Taco Tuesday" is a widely used common phrase that no single company should be able to monopolize. "Nobody should have exclusive rights in a common phrase," the company wrote in its filing.
Taco John's had previously sent cease and desist letters to other restaurants using the "Taco Tuesday" phrase in their marketing. But the company said defending the trademark in court was not worth the legal fees or potential public backlash.
"We've always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn't feel like the right thing to do," said Taco John's CEO Jim Creel in a statement announcing the trademark surrender.
As part of the announcement, Taco John's said it would donate $40,000 to the nonprofit Children of Restaurant Employees, which provides support for restaurant workers facing health crises or other life challenges.
With more than 7,200 locations nationwide, Taco Bell has far more reach than the nearly 400-restaurant Taco John's chain. Taco John's two-page trademark abandonment notice now opens the door for Taco Bell and other chains to freely use "Taco Tuesday" promotions.
The one exception is in New Jersey, where local restaurant Gregory's retains a disputed claim to the trademark within state borders. Gregory's registered the trademark before Taco John's in the 1970s, according to its attorney Stephen Altamuro.
Altamuro told the Associated Press that while his client is the underdog in resources, "we're willing to scrap as much as we need to" to retain the New Jersey rights. Taco Bell indicated in its petition that the very notion of trademarking a common phrase like "Taco Tuesday" defies reason and common sense.
According to Taco John's, the phrase originated roughly 50 years ago when one of its Minnesota franchise locations started "Taco Twosday" promotions on otherwise slow Tuesdays. The alliteration caught on and spread nationwide over the ensuing decades.
Now, with its trademark surrendered, Taco John's will have to be content with being viewed as the originator but no longer the owner of the Taco Tuesday tradition and marketing tactic.
