When a trademark conflict breaks out, it usually involves its owner protecting their rights from infringement by some upstart competitor. This time, Tex-Mex giant Taco Bell wants the rightful owner’s rights to ‘Taco Tuesday’ cancelled…
Taco Bell wants the trademark owner of ‘Taco Tuesday’ to be stripped of its rights…
When most folks hear the phrase ‘Taco Tuesday’, they immediately think of Taco Bell. Today, kids, we’ll learn the truth behind the tale. Turns out ‘Taco Tuesday’ is actually trademarked by smaller competitor Taco John’s, a Wyoming-based chain with about 400 stores, which has allowed Taco Bell and others to use it more or less freely for decades.
Free ‘Taco Tuesday’
The Bell contends that John’s continued ownership of the phrase, “potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility [bold and italics mine] of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from [Taco John’s] — simply for pursuing happiness on a Tuesday,” a recent filing with the U.S. Patent and Trademark Office states. “Nobody should have exclusive rights in a common phrase.”
I guess the Patent and Trademark people had no trouble awarding exclusive rights to Taco John’s 34 years ago, though. What’s changed?
My first thought was, ‘Taco Tuesday’ may not have been a ‘common phrase’ way back when. But it was just such a great, alliterative zinger that it became a common phrase over time. At least in the rather one-sided estimation of Taco Bell. Anyway…
A little history
According to an in-depth article at priceonomics.com:
According to Taco John’s lore, David Olsen, the owner of a Taco John’s in Minnesota, coined the term in the early 1980s.
“He was just trying to drive sales on a slow day,” says Waara. “He called it ‘Taco Twosday.’ He sold two tacos for 99 cents. It was a twofer deal.”
At that point, Taco John’s had been around for over a decade, having expanded from one taco stand at a rodeo in Cheyenne, Wyoming, into a franchise in several states. Taco Tuesday turned Olsen’s slowest day into a busy one, so Taco John’s executives made it the centerpiece of the company’s first national advertising campaign. They created radio spots, Waara says, that, “stuck and were used for almost a decade.” In 1989, Taco John’s applied to trademark Taco Tuesday with the U.S. government, and that trademark has become a sacred possession. During our phone call, unprompted, Waara recited the trademark registration number for Taco Tuesday: 1,572,589.”
Alas, Taco Tuesday is considered an example of a phrase with very weak trademarkability. So other restaurants have played fast and loose with it over the decades.
But that doesn’t seem to bother Taco John’s: “It’s just unfathomable to us not to protect it,” John’s chief marketing officer Billie Jo Waara told CNN. “It’s part of our DNA. Taco Tuesday is this American institution. Not to take the chance to talk about it and our story, that would go against who we are. […] “We understand that it’s prolific and shareable. But that’s why it’s great.”
Now may be a good time to note that nowhere in he literature about Taco Tuesday is there a single mention that Taco John’s ever hassled Taco Bell about using the phrase.
However, experts say the Bell may just be using its ‘Free Taco Tuesday’ campaign not only as a means of enduring other restos won’t henceforth be hassled by Taco John’s over using the phrase. It’s a great basis for a high-profile promo campaign. One which could end up with the public believing that Taco Bell is the rightful owner of the trademark.
As it stands, Taco Bell is asking the Patent and Trademark Office to cancel Taco John’s trademark for no palpable reason. Seems to me that things have been cruising along just fine without any sort of intervention by anybody. But now Taco Bell has decided to make some PR noise by hammering on a relatively defenceless little guy who doesn’t have the wherewithal to fight back.
I don’t like this tactic at all. Taco John’s has never done anything to harm Taco Bell. But Taco Bell seems afraid Taco John’s will someday try to whammy it with a lawsuit.
It looks to me like a case of the elephant who was afraid of the mouse: “Over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies,” says Waara. “We also recognize that the unauthorized use [of Taco Tuesday] is prolific, and we do our best to communicate ownership. It’s a challenge for sure.”
And I can almost see the Taco John’s people grinning as they reflect on that. By the way, Taco John’s is responding to the Taco Bell challenge by launching a ‘Taco Twosday’ promotion of its own through the end of this month…