Taco Bell Sign - © Taco Bell

Taco Tuesday: Dispute Over Trademark Resolved

You’ll recall that Taco Bell challenged smaller, regional chain Taco John’s over the use of the promo phrase ‘Taco Tuesday’. The dispute has been resolved. And the scenario clearly illustrates the old adage, “You’re entitled to all the justice you can afford.”

Taco Tuesday - © cosmostaverna.comOnce technically in breach of Taco John’s trademark,
this ‘Taco Tuesday’ ad is now free and clear…

We said we’d keep an eye on this one for you, and here we are.

The Back Story

Mega chain Taco Bell went to war to ‘free Taco Tuesday’, a promo phrase trademarked by smaller, regional chain Taco John’s back last spring.

The Bell contended 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.”

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 didn’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.”

The resolution

I’ll bet you can guess what happened.

Jim Creel, chief executive of Taco John’s and their 400 restaurants spanning 20 states, said his legal advisors estimated it would cost north of $1 million dollars to defend the trademark. He flew the white flag.

“It’s just not worth the amount of money it would take to defend it,” Creel told the Wall Street Journal. “We’d rather take that money and put it toward a good cause.” A man of his word, Creel says he’s pledged $40,000 toward the Children of Restaurant Employees, a nonprofit organization that helps support restaurant workers with children. As we all know, resto workers are among the lowest paid folks around. And resto workers with kids are probably grateful for any help they can get.

The future

Will Taco Bell now hammer any other smaller outfits that dare to use the phrase ‘Taco Tuesday’ in their promos? Probably not. They just wanted to be free to use it themselves.

So, is the dispute really over? Seems so. As often happens in battles between big guys and little guys, the little guy surrendered. Rather than be destroyed.

My take

Is it morally and ethically right that Taco Bell forced Taco John’s to give up the trademark it was legally and properly awarded more than  30 years ago? I would say it’s wrong. But I’m a faded flower child. My generation’s motto was, “Question Authority!” My definition of ‘justice’ is clearly different than the one in common use today.

On the other hand, ‘Taco Tuesday’ was already in the wild, so to speak. Taco joints across the world were using it regardless of any trademark. I guess the surrender of Taco John’s just makes its ‘common use’ official.

But it still bothers me that Taco Bell went after Taco John’s not because of any imminent threat. The Bell said, the trademark, “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…” That’s bullying in my book.

Other folks would say, “It’s just business.”


~ Maggie J.