Liberty and tacos for all: Taco Bell prevails as Taco John’s abandons trademark to ‘Taco Tuesday’

Jul 18, 2023, 12:49 PM

FILE - A sign stands outside the corporate headquarters of Cheyenne-based Taco John's, Aug. 1, 2019...

FILE - A sign stands outside the corporate headquarters of Cheyenne-based Taco John's, Aug. 1, 2019, in Cheyenne, Wyo. Taco Bell rang up a win Tuesday, July 18, 2023, in its quest to make “Taco Tuesday" free of trademark restrictions, with Taco John’s formally abandoning its decades-old claim to own the phrase amid a challenge from its bigger rival. (AP Photo/Mead Gruver, File)

(AP Photo/Mead Gruver, File)

CHEYENNE, Wyo. (AP) — Taco Bell rang up a win Tuesday in its quest to make “Taco Tuesday” free of trademark restrictions, with Taco John’s formally abandoning its decades-old claim to own the phrase amid a challenge from its bigger rival.

In a filing with the U.S. Patent and Trademark Office, Cheyenne-based Taco John’s gave up any further claim to “Taco Tuesday” in 49 states, ending a high-profile spat with Taco Bell.

But the dispute looks to keep simmering on the Jersey Shore, where Gregory’s Restaurant & Bar in Somers Point promised to keep fighting Taco Bell over the exclusive right to hold “Taco Tuesday” promotions in New Jersey.

“We’re hanging in there. We’re sticking by our guns,” Gregory’s Restaurant & Bar attorney Stephen Altamuro said.

While “Taco Tuesday” has become a well-known phrase often used at restaurants and elsewhere, Taco John’s has worked hard to defend its more than 40-year-old trademark of the term in the 49 states besides New Jersey. The fast food chain sent many cease-and-desist orders over the years to anyone besides Gregory’s Restaurant & Bar daring to have a “Taco Tuesday” promotion.

In 2019, the company went so far as to send a letter to a small brewery just five blocks from its corporate headquarters, warning it to stop using “Taco Tuesday” to promote a taco truck parked outside on Tuesdays.

Even NBA star LeBron James got in on the action that year, filing unsuccessfully for his own “Taco Tuesday” trademark.

The disputes culminated with Taco Bell filing with U.S. trademark regulators this May to get Taco John’s and Gregory’s Restaurant & Bar abandon their trademarks, saying the term had become too widely used to belong to any one person or business.

Depriving people of free use of “Taco Tuesday” would be like depriving them “of sunshine itself,” Taco Bell attorneys wrote in a U.S. Patent and Trademark Office filing. Taco John’s, in response, said in part that it didn’t seek to bar anyone from selling tacos on Tuesdays.

The company’s two-page trademark office filing Tuesday didn’t give a reason for abandoning the trademark but CEO Jim Creel said in a statement the cost to keep defending it would be better used otherwise.

“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,” Creel said. “As we’ve said before, we’re lovers, not fighters, at Taco John’s.”

Taco Bell will still have a fight on its hands over “Taco Tuesday” in New Jersey, where the Gregory’s Restaurant & Bar attorney said his client laid claim to the trademark even before Taco John’s did in the 1970s. Taco John’s and Gregory’s Restaurant & Bar agreed to divvy up the trademark between New Jersey and the rest of the U.S. in the 1990s, Altamuro said.

“Clearly it’s David and Goliath. I mean, certainly they bring a lot more resources to the table than we do,” Altamuro said of defending the New Jersey trademark against Taco Bell. “But we’re willing to scrap as much as we need to.”

Taco Bell spokeswoman Richa Anand didn’t immediately return a social media message seeking comment Tuesday.

Cheyenne-based Taco John’s got its start as a food truck over 50 years ago. “Taco Tuesday,” according to Taco John’s, began with a franchisee in Minnesota coming up with “Taco Twosday” to promote two tacos for 99 cents on a slow day of the week.

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 — remains much bigger than Taco John’s, which has about 370 locations in 23 mainly Western and Midwestern states.

A trademark attorney, Michael Atkins, of Seattle, said the Taco John’s decision to not “throw good money after bad” and to finally abandon “Taco Tuesday” was wise because it has become too commonplace.

“It was silly for them to try to claim monopoly rights over an ordinary phrase,” Atkins said. “They would’ve lost.”

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Liberty and tacos for all: Taco Bell prevails as Taco John’s abandons trademark to ‘Taco Tuesday’