“¡Yo quiero Taco Tuesday!” At least, that’s what Taco Bell wanted when it asked U.S. trademark regulators to determine whether Wyoming-based taco chain Taco John’s claim of exclusive ownership over the term “Taco Tuesday” was valid. The fast-food giant claimed the term was in common use despite Taco John’s having been granted exclusive use of “Taco Tuesday” nearly 40 years ago. Therefore, Taco John’s could not have exclusive rights to the phrase.
Taco Bell simultaneously sought declaratory judgment in New Jersey State Court against Gregory’s Restaurant and Bar. Like its counterpart, Taco John’s, Gregory’s was an eatery that claimed usage of the Taco Tuesday trademark for over 40 years. However, Gregory’s claimed the trademark in the State of New Jersey only. Nonetheless, Taco Bell sought to have Gregory’s trademark invalidated as well. If you find your business in a similar situation, contact an experienced trademark attorney today!
Who Is Involved in the Business Dispute?
While this matter directly involved Taco John’s and Taco Bell, it was not the first time Taco John’s had been called to enforce its claim to Taco Tuesday. In fact, Taco John’s had actively enforced its claim to the phrase against taco lovers of all types, from small local restaurants to NBA giant LeBron James. The fight against Taco Bell was just another Taco Tuesday at the U.S. Patent and Trademark Office (USPTO) as far as Taco John’s was concerned.
While Taco John’s lawyers have said they will fight Taco Bell’s petition, they may have an uphill battle defending the phrase against the taco behemoth. While Taco John’s may have coined the phrase, most Americans may be more familiar with Dad’s famous Tuesday night salsa or $2 Taco Tuesday margaritas at their local Tex-Mex joint than a regional taco outlet in Wyoming.
What Caused the Trademark Ownership Dispute?
Intellectual property attorney Trevor Brewer theorizes that the dispute was caused by the age-old trademark question of whether the term “Taco Tuesday” has become generic. “This is something we see even when brands aggressively enforce their marks,” says Brewer. “Terms like ‘aspirin,’ ‘trampoline,’ and even ‘flip phone’ are now considered generic since they have become commonly used. Previously, they were previously well-protected trademarks.”
As a long-time member of Florida’s intellectual property enforcement community, Brewer advises clients to register unique marks and to enforce them relentlessly. Without consistent monitoring and enforcement of intellectual property rights, a business can quickly lose its rights to its intellectual property. BrewerLong helps companies and individuals with all aspects of IP registration, maintenance, and enforcement.
What Was the Legal Basis for the Private Business Dispute?
The legal basis for the disputes in the Taco Bell cases was that the mark was in common use. Taco Bell did not necessarily want the Taco Tuesday mark, as LeBron James did when he challenged the Taco John’s taco restaurant chain for the “Taco Tuesday” trademark in 2019. Instead, Taco Bell wanted Taco Tuesday “for the people.” Its end-game appeared to be the unrestricted use of the term – without needing to license it commercially – either from Taco John’s nationally or Gregory’s within New Jersey.
What Was the Result of the Latest Taco Tuesday Tiff?
Taco Bell’s case requesting reversal of Taco John’s trademark is ongoing. The company does not request damages. The case is now pending before the USPTO’s Trademark Trial and Appeal Board. The Board can take up to two years before issuing a final decision.
Taco John’s has 40 days to file a response to Taco Bell’s initial petition. The parties are invited to try to reach a settlement between themselves before Taco John’s response period expires. If the two chains cannot agree, the case will move to a discovery period. During this period, each company can request documents from each other. The companies will also be allowed to present evidence stating their case.
Following this discovery period, the Trademark Trial and Appeal Board would conduct a trial, including oral arguments presented before the Board’s judges. Because Taco Bell’s case relies on the aspects of U.S. trademark law that prevent the registration of common phrases or phrases that become commonplace after registration is granted, Taco John’s may need to think outside the shell in preparing for a potential trial. One need only walk on any college campus or into any kitchen in America on a Tuesday night to know that “Taco Tuesday” is frequently used in restaurants, dormitories, fraternity houses, and family kitchens across the U.S., with or without Taco John’s.
Avoid Spicy Business Ownership Disputes Any Day of the Week
As the Taco Bell trademark dispute highlights, correctly registering and maintaining your unique IP is just as important as enforcing it. BrewerLong has built a reputation for providing clear guidance through complicated legal situations. We pride ourselves on helping clients to understand the risks and rewards of each potential legal solution, leading to outstanding results. Whether you’re dealing with IP and business ownership disputes, contract issues, or other complex legal matters, BrewerLong is ready to guide you through every step. Experience the peace of mind that comes from having a dedicated legal team in your corner. Contact BrewerLong today.
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