The battle for “Taco Tuesday” has officially ended with Taco John’s calling a truce with Taco Bell as the competitor told the U.S. Patent and Trademark Office (USPTO) it would officially drop its iconic trademark.

(Video Credit: Eyewitness News ABC7NY)

Taco Bell claimed on Tuesday to have “liberated” the phrase following a fight for it that begin in May when Taco Bell filed a petition with the patent office seeking to cancel the trademark that was held by Taco John’s in 49 states and Gregory’s Bar in Somers Point, New Jersey, which has the rights in that state.

Taco Bell, which has $2 billion in annual sales, craftily publicized its effort to win the fight for “Taco Tuesday.” The company brazenly promoted it in a marketing campaign, claiming it wanted to “liberate the phrase for restaurants nationwide.”

“Taco Bell is not trying to take over the trademark. Quite the opposite – Taco Bell is trying to get rid of the trademark registrations,” the fast-food giant proclaimed in a press release trying to not appear self-serving. “Taco Bell believes that all across the nation should be able to celebrate Taco Tuesday, without fear of consequences. This is why Taco Bell has sought to cancel the trademark registrations and free Taco Tuesday for all.”

Taco John’s told the USPTO in June that Taco Bell was only seeking to sell more tacos, and that its trademark did not prohibit anyone “from advertising and selling tacos on Tuesday.”

Major update! Remember when Taco Bell petitioned the USPTO in May to cancel Taco John’s trademark registration for “Taco Tuesday” since 1989? The dispute is finally settled! Taco John’s has officially filed a notice of abandonment, surrendering the trademark. Interestingly,… pic.twitter.com/Pw4pF9vwRv

— Eli⚖️.eth (Eliana) (@eliana_esq) July 19, 2023

Fox Business reported:

Marketing materials and the multiple petitions for Taco Bell’s “Liberation Of ‘Taco Tuesday’’ campaign, state that canceling the trademark registrations associated with the phrase will help mom-and-pop restaurants and taco vendors in that it will stop Taco John’s and Gregory’s Restaurant & Bar from being able to send cease-and-desist letters, or have a chance to sue if the phrase is used for business purposes.

 

The common phrase can now be used by all businesses free of charge in every state except New Jersey.

Gregory’s Bar co-owner Gregory Gregory told Reuters in an interview that he has no plans to give up the trademark, and he was “shocked” that Taco John’s had caved to pressure over it so soon.

“We’re a little blindsided by Taco John’s folding their tent before it really even got started. We’re just in the basic beginning of all this,” says Gregory’s Restaurant Co-Owner Greg Gregory on restaurant’s trademark on the phrase ‘Taco Tuesday.’ “I’m stunned.” pic.twitter.com/mBViazCFcC

— Last Call (@LastCallCNBC) July 19, 2023

“The restaurant in New Jersey opened in 1946 and started using the phrase in 1979 to encourage sales. The small business trademarked Taco Tuesday in 1981 and later defended its trademark against Taco John’s, according to Smith & Hopen, a patent and trademark law firm in Oldsmar, Florida,” Fox Business noted.

Jim Creel, Taco John’s chief executive, told the Wall Street Journal that defending the trademark could cost as much as $1 million. He noted in a shrewd marketing move that instead, Taco John’s could donate $40,000 to Children of Restaurant Employees, a nonprofit group. He hopes Taco Bell will consider giving a donation to the group as well.

“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,” Creel remarked in a statement.

“It’s just not worth the amount of money it would take to defend it,” he said concerning the trademark for the Cheyenne, Wyoming-based chain. “We’d rather take that money and put it toward a good cause.”

Taco John says it’s ending its fight for the “Taco Tuesday” trademark because it doesn’t want to pay the legal fees that come with fighting against Taco Bell. pic.twitter.com/R3vx2Hjx91

— Complex (@Complex) July 18, 2023

Creel commented that it was tough for Taco John’s to give up the trademark.

“It’s a sad day for us and our franchisees and a lot of our customers,” Creel contended. “But at the same time, we will still have Taco Tuesday, and others will have Taco Tuesday as well.”

Taco John’s operates nearly 400 restaurants in more than 20 states.

Trademark attorney Josh Gerben told CNN in an interview that Taco John’s decision is “not surprising” because the “phrase became ubiquitous in the marketplace and any attempt to enforce the trademark registration would likely have failed in court.”

Taco Bell just won the ‘Taco Tuesday’ trademark dispute with rival Taco John, and that is just common sense to us that they would win… on a Tuesday. BRB while we celebrate with tacos. #tacotuesday pic.twitter.com/ypbyIkPBhg

— Common Sense PAC (@commonsense_pac) July 18, 2023

“Therefore, the trademark registration had little, if any, value left at this point in time,” he stated. “If the case was litigated to the end, Taco John’s could have suffered a significant public-relations loss. By bowing out of the court fight at this point, given the low probability of winning, Taco John’s can work to control the court of public opinion around the issue.”

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