Taco John’s stepped up its defense of its “Taco Tuesday” trademark on Monday, saying in a filing that Taco Bell’s effort to cancel the nearly 34-year-old trademark was done in an effort to “sell more tacos” and causing Taco John’s “to sell less tacos.”
Taco John’s parent company, Spicy Seasonings LLC, also denied that “there is anything ‘not cool’ about independently creating a trademark over 40 years ago and obtaining a registration for that trademark with the United States Patent and Trademark Office.”
The filing adds to one of the weirdest marketing efforts in recent years. Taco Bell took action last month to cancel Taco John’s long-held registration of the trademark for the phrase, something the smaller chain has used since 1979 and which it registered a decade later. Taco John’s owns the mark in 49 states. Taco Bell also sued a hotel in New Jersey that owns the mark in that state.
“Tacos have a unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week,” Taco Bell said in its initial filing. “But since 1989, entities associated with [Taco John’s] have owned a federal trademark registration for ‘Taco Tuesday.’ Not cool.”
Taco Bell even recruited NBA star LeBron James to join in on the effort and has created an online petition calling for the end of the trademarks.
Both James and Taco Bell argue that the phrase is common and that “nobody should have exclusive rights on a common phrase.”
Taco John’s, however, argues that it is not common and wasn’t common before it began using the mark and registered it in 1989. The company also argues that its rival's real goals are to sell more tacos, and that it “has the right to enforce its trademark rights against infringers and those who want to infringe, including Taco Bell.”
And it denied that doing so “violates any American ideal.”
Taco John’s also acknowledged in its filing that “there are more infringers of the mark ‘Taco Tuesday’ than Seasonings can send cease and desist letters and/or sue.”
Taco John’s argues that Taco Bell failed to state a claim strong enough to warrant cancellation of the trademark. “A registered trademark is ‘fun to say’ does not constitute a legal basis to cancel a trademark that has been registered with the USPTO for 34 years and was first used by Seasonings and its licensees as early as 1979.”
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