Taco John's have abandoned their effort to trade mark the phrase 'Taco Tuesday' ending their highly publicised trade mark dispute with Taco Bell.
Although the Wyoming-based chain Taco John’s had trademarked the phrase 'Taco Tuesday' more than 40 years ago, in May 2023 Taco Bell challenged the mark at the U.S. Patent and Trademark Office (USPTO).
Taco Bell argued Taco John's were unfairly monopolising the phrase, taking it away from the world’s restaurant industry. They stated that they felt the trade mark should be cancelled because the phrase had to remain:
"Freely available to all who make, sell, eat and celebrate tacos."
And:
“'Taco Tuesday' is critical to everyone's Tuesday. 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.”
In the face of mounting pressure from Taco Bell, Taco John's finally told the USPTO it would abandon its 'Taco Tuesday' trade mark on Tuesday 18 July.
A significant amount of this pressure came in the form of an ad campaign in which Taco Bell enlisted basketball start LeBron James, who himself had previously made an unsuccessful attempt to claim the trade mark in 2019.
In the ad every time James says Taco Tuesday, the Tuesday is bleeped. The ad - supported by life size cut outs of the star now displayed in all of Taco Bell’s outlets - caught the public’s attention and amusement.
Despite Taco John's abandoning their mark, the war of words has continued.
Taco John’s CEO Jim Creel said in a statement that paying millions to defend the trademark didn't "feel like the right thing to do." Instead, he said his company will donate $40,000 to the Children of Restaurant Employees charity before calling on Taco Bell to do the same whilst challenging them to "liberate themselves from their army of lawyers by giving back to restaurant families instead".
While this seems a very worthy conclusion to the dispute, there is a strong feeling among trade mark specialists that they would have had a hard job to hold on to their trade mark if legal proceedings had been triggered. The phrase 'Taco Tuesday' is arguably far too generic to protect given it doesn’t really have a clear association with a particular source or product and given the fact it is so commonly used en masse by taco lovers (and patrons of every taco vendor) across the world.
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