Declaring a mission to liberate Taco Tuesday for all, Taco Bell is asking U.S. regulators to force Wyoming-based Taco Johns to abandon its longstanding claim to the trademark.
Too many businesses and others refer to Taco Tuesday for Taco Johns to be able to have exclusive rights to the phrase, Taco Bell asserts in a U.S. Patent and Trademark Office filing that is, of course, dated Tuesday.
Its the latest development in a long-running beef over Taco Tuesday that even included NBA star LeBron James making an unsuccessful attempt to claim the trademark in 2019.
Taco Bell believes Taco Tuesday is critical to everyones 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, the Taco Bell filing reads.
A key question is whether Taco Tuesday over the years has succumbed to genericide, New York trademark law attorney Emily Poler said. Thats the term for when a word or phrase become so widely used for similar products or in this case, sales promotions theyre no longer associated with the trademark holder.
Well-known examples of genericide victims include cellophane, escalator and trampoline.
Basically what this is about is you cannot trademark something that is generic, Poler said. That means it doesnt have any association with that particular source or product.
James a well-known taco lover encountered this problem when he tried to trademark Taco Tuesday in 2019. The Patent and Trademark Office, in a ruling that didnt refer to Taco Johns, deemed Taco Tuesday too much of a commonplace term to qualify as a trademark.
With more than 7,200 locations in the U.S. and internationally, Taco Bell a Yum! Brands chain along with Pizza Hut, KFC and The Habit Burger Grill is vastly bigger than Cheyenne-based Taco Johns. Begun as a food truck more than 50 years ago, Taco Johns now has about 370 locations in 23 mainly Midwestern and Western states.
The chains relatively small size hasnt discouraged big-time enforcement of Taco Tuesday as trademark, which dates to the 1980s. In 2019, the company sent a letter to a brewery just five blocks from its corporate headquarters, warning it to stop using Taco Tuesday to promote a taco truck parked outside on Tuesdays.
Actively defending a trademark is required to maintain claim to it, and the letter was just one example of Taco Johns telling restaurants far and wide to stop having Taco Tuesdays.
Taco Johns responded to Taco Bells filing by announcing a new two-week Taco Tuesday promotion, with a large side of riposte.
Id like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco Johns, CEO Jim Creel said in an emailed statement. We love celebrating Taco Tuesday with taco lovers everywhere, and we even want to offer a special invitation to fans of Taco Bell to liberate themselves by coming by to see how flavorful and bold tacos can be at Taco Johns all month long.
The filing is one of two from Taco Bell involving Taco Tuesday. One contests Taco Johns claim to Taco Tuesday in 49 states, while a similar filing contests a New Jersey restaurant and bars claim to Taco Tuesday in that state. Both Taco Johns and Gregorys Restaurant and Bar in Somers Point, New Jersey, have been using Taco Tuesday for over 40 years.
A Taco Johns franchisee in Minnesota came up with Taco Twosday to promote two tacos for 99 cents on a slow day of the week, Creel told The Associated Press in an interview Tuesday.
The Patent and Trademark Office approved the Taco Johns Taco Tuesday trademark in 1989. Even with its many letters, Creel said, the company has never had to go to court over the phrase.
Hes not feeling too picked on, either, by the much bigger Taco Bell.
Its OK. Its kind of nice that theyve noticed, Creel said.
