The fight over the Taco Tuesday trademark is over.
Taco John’s on Tuesday said that it is abandoning the fight over the registration for the trademark, saying that it “doesn’t feel like the right thing to do” to pay lawyers to maintain a mark it has owned for 34 years.
“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,” Taco John’s CEO Jim Creel said in a statement.
Taco John’s filed a “notice of abandonment” with the U.S. Patent and Trademark Office (USPTO) on Tuesday, indicating it would give up its right to the Taco Tuesday trademark.
The company said it would instead contribute $100 per restaurant, or about $40,000, to CORE, or Children of Restaurant Employees, a nonprofit group that supports restaurant workers with children when they face a crisis, such as an injury, death or natural disaster. And Taco John's challenged Taco Bell to do the same.
The move essentially makes Taco Tuesday free for anyone to use, at least outside of New Jersey, the only state Taco John’s didn’t own the trademark.
The 400-unit Taco John’s has used the phrase “Taco Tuesday” in its marketing since the late 1970s and has held the trademark since 1989. It has periodically had to fend off efforts to trademark the phrase, most notably when the NBA star LeBron James made an effort to trademark the phrase himself.
Taco Bell in May launched an effort to cancel the trademark registration, arguing that the phrase had become commonplace and that nobody should own the exclusive right to use that phrase in its marketing. It argued that Taco John’s effectively abandoned the trademark by not doing more to keep it from becoming a commonplace term.
Taco John’s argued that its rival’s real goal was to sell more tacos and defended its “right to enforce its trademark rights against infringers and those who want to infringe, including Taco Bell.”
Throughout the trademark battle there was a real sense that this was more marketing effort than legal effort. Taco Bell erected billboards and recruited James to publicly sign a petition calling for the end of its trademark.
But, while Taco Bell was arguing that it was simply fighting for everybody’s right to use the phrase, at least in restaurant marketing, there was also a Goliath-versus-David aspect to the whole thing: Taco Bell generates $14.7 billion in global system sales and operates 8,200 locations. That makes it more than 20 times the size of Taco John’s.
What’s more, Taco Bell is part of the global behemoth Yum Brands, which also operates KFC, Pizza Hut and Habit Burger.
And there was a real legal battle going on with the USPTO over the trademark. Just last week, Taco Bell filed a motion with the office’s Trademark Trial and Appeal Board to strike Taco John’s defenses in the case, citing in part an earlier decision in which the USPTO found that “Taco Tuesday” was a “very commonplace term.”
A decision on that filing was pending. But, just four days afterward, Taco John’s opted to abandon the trademark altogether and use the whole thing as a challenge to donate to a charity. The company said that, to match its donation, Taco Bell would have to donate $720,000, “which is less than they’d have to spend in a legal battle for the mark,” Creel said.
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