A Wyoming chain trademarked Taco Tuesday. Here’s why Taco Bell is challenging it
Taco John’s, a Wyoming-based taco chain, started using the phrase “Taco Tuesday” as part of a promotion to sell two tacos for 99 cents, according to The Associated Press. It started with one of the chain’s Minnesota locations and by 1989, the Patent and Trademark office approved the trademark “Taco Tuesday” for Taco John’s.
A trademark is a way of distinguishing brands from one another. This means if other entities use the phrase, it’s possible the entity could face legal action or receive cease and desist letters. On Tuesday, Taco Bell filed a petition of cancellation to the Patent and Trademark office, asking for the phrase “Taco Tuesday” to no longer be trademarked.
In the petition, Taco Bell said, “‘Taco Tuesday’ is a common phrase. Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say ‘what’s up’ or ‘brunch’? Chaos.” The chain said it brought forward the petition because “Taco Bell believes that tacos, just like the joy they bring, belong to everyone on any day.”
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The chain also said, “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.” Taco Bell isn’t seeking any damages
Taco John’s is responding to the petition by running a two-week long Taco Tuesday deal (two tacos for $2), according to NPR. Taco John’s CEO Jim Creel said, “When it comes right down to it, we’re lovers, not fighters, at Taco John’s. But when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”
According to CNN, the next steps are that Taco John’s has a 40-day period where it can file a response, and if a remedy isn’t found, then “the case will move to a discovery period where each company can make document requests and present evidence stating their case. Following that would be a trial and oral arguments presented in front of the board’s judges.”
This process can take up to two years, per CNN. A key part of the case will likely deal with the part of U.S. trademark law which “prevents the registration of common phrases or phrases that become commonplace after a registration is granted.” This means if a phrase becomes too common, it’s possible a trademark could be canceled.
In a press release, Creel said, “I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s.”
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Is the phrase Taco Tuesday trademarked?
Yes, Taco John’s trademarked the phrase “Taco Tuesday” in 1989, and another restaurant also has the phrase registered as a trademark.
A New Jersey restaurant has the phrase registered as a trademark, and Taco Bell filed a petition to cancel that trademark as well. CBS News reported Gregory Hotel, which owns Gregory’s Restaurant and Bar, has held the registered trademark since 1979 in the state of New Jersey.
There was another instance of someone attempting to trademark the phrase. In 2019, The New York Times said LeBron James tried to trademark the phrase “Taco Tuesday,” but his petition was denied because the phrase was too commonly used.
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Who invented Taco Tuesday?
While Taco John’s trademarked the phrase “Taco Tuesday” in 1989, there were some earlier instances of taco deals on Tuesday.
The concept and phrase had been used before then. Gustavo Arellano at Thrillist said, “The earliest-documented advertisement for a Tuesday taco special I could find is in the classified section of the Oct. 16, 1933, edition of the El Paso Herald-Post. ... The White Star Cafeteria at the St. Regis launched a weeklong campaign to let everyone know it sold ‘Mexican Tacos’ on Tuesday — three for just 15 cents.”
The first Arellano found the phrase “Taco Tuesday” used was on Aug. 20, 1973, in the “Rapid City Journal.” Arellano said the Snow White Drive In had the phrase “Stop in on Taco Tuesday.” The first chain he found using “Taco Tuesday” in a campaign was Baker’s Drive-Thru, which started around Nov. 2, 1976.
Arellano said in Thrillist, “Meanwhile, the earliest Taco Tuesday® usage by Taco John’s appeared in the Dec. 2, 1979, edition of the Longsport Pharos-Tribune in Indiana.” In the 1980s leading up to the chain trademarking the phrase, the special took off.
