That’s Nacho Brand! Taco Bell & Taco John’s Fight Heats Up over ‘Taco Tuesday’ Trademark

A popular slogan that makes waves in the zeitgeist is sometimes all it takes for a business’ popularity to skyrocket into the stratosphere. For over 30 years, the little taco joint that could, Midwest-based Taco John’s, has been the rightsholder to the popular ‘Taco Tuesday’ slogan, after receiving an official trademark for the phrase in 1989. Originating from a single food truck in Cheyenne, Wyoming, the now 400-locations-strong Mexican restaurant has been the only restaurant legally allowed to utilize the phrase in marketing and advertising since the trademark was put in place.

This ruling has undoubtedly stuck in the craw of many competing Hispanic restaurants since that time, most notably the most successful taco-themed restaurant in the world: Taco Bell. And now it seems that Taco Bell has finally struck back, officially filing a petition with the U.S. Patent and Trademark Office asking that the trademark be struck down.

Trademarked Phrase or Generic Slang?

Taco Bell’s key assertion is one of “genericide”. In other words, the taco giant contends that the ‘Taco Tuesday’ phrase has become so prevalent and ubiquitous that it is too common to belong to one company, albeit one that trademarked it decades ago, and that Taco John’s ownership of the phrase should be rendered moot. To quote Taco Bell’s filing, “Nobody should have exclusive rights in a common phrase. Can you imagine if we weren’t allowed to say ‘what’s up’ or ‘brunch’?”

Active defense of a trademark is required to maintain a company’s claim on it, and Taco John’s has been plenty active. Although ‘Taco Tuesday’ related disputes have never made it to court in the 34 years since the trademark’s approval, Taco John’s has frequently reached out with cease-and-desists to other restaurants using the slogan, including one that was only five blocks from their corporate headquarters. And the response from the taco world’s David to Taco Bell’s 8000+ locations Goliath has been an obstinate, and even downright sarcastic, refusal to budge an inch.

No Press is Bad Press

Despite many jumping on the bandwagon and agreeing with Taco Bell’s claim that ‘Taco Tuesday’ is too common of a term to be realistically trademarked, the public quarrel has attracted mountains of attention for its smaller counterpart. According to Taco John’s CMO Barry Westrum, the company’s app downloads have increased by 25% since the dispute came to light, with a “significant improvement” in sales growth and traffic, and over 1 billion media impressions around the world.

“It’s just been a wonderful opportunity for our brand,” Westrum said, while adding that the company has no intention of letting the trademark go without a fight. “We feel strongly that we owe it to our franchisees… who had an idea and fought to get the claim.” CEO Jim Creel put it even more bluntly, calling Taco Bell a “big, bad bully” and opining that “If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.” For their part, Taco Bell has stressed that they are not seeking damages as part of the dispute, merely that they are seeking “reason and common sense.”

Whose Side Are You On?

This surprise move from Taco Bell has trademark experts and fans of Mexican fast food drawing battle lines, with such heavy hitters as LeBron James and Jack in the Box defending the taco behemoth and calling for the ‘Taco Tuesday’ phrase to be “liberated” for common use once again, while others say the trademark should stay where it is because Taco John’s superior food helps its claim.

Whatever side you favor, this burrito brawl’s next phase is coming soon. Taco John’s now has less than a month before its response to the petition is required and, depending on the content therein, this Taco Tuesday tangle could get a lot more interesting very fast. Beyond a few choice words in interviews, the Wyoming taco purveyor’s only official response thus far has been, you guessed it, a new Taco Tuesday deal offering two tacos for $2. “¡Ay, carumba!” indeed.

If there’s anything that this unexpected trademark dispute can teach us, it’s that it requires constant vigilance, knowledge, and experience to create, maintain, and protect your intellectual property. Your inventions and ideas are your own, but if they are not dutifully and carefully safeguarded, they can potentially be laid bare for others to use as their own. If you have questions about how to handle your intellectual property, Richards Rodriguez & Skeith’s intellectual property attorneys may be able to help! Contact us today to learn more.