“Taco Tuesday” Trademark Tussle Gets Spicy

The "Taco Tuesday" trademark tussle is getting quite spicy, and Ed White Law is here for it.

Taco John's, a fast food taco spot known for its regional footprint, has issued a rebuttal to Taco Bell's efforts to democratize the phrase for public consumption.

In a response filed on Friday, countering Taco Bell’s appeal to "cancel" the trademark, the parent company of Taco John’s, Spicy Seasonings, contested there is "anything 'not cool' about" the act of securing a trademark for the slogan. The organization, based in Wyoming, suggested that Taco Bell’s lawsuit is riddled with "statements of opinion to which no response is required, including that Tuesday is a mediocre day of the week."

Last month, Taco Bell filed a petition with the US Patent and Trademark Office with a request to cancel the trademark that Taco John's has held for 34 years. Their argument? The frequently used phrase "should be freely available to all who make, sell, eat and celebrate tacos." Currently, with Taco John’s being the trademark holder, any other enterprises and restaurants have to gain permission to use "Taco Tuesday" in their branding and marketing initiatives.

The application of the slogan "potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility 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," as articulated in the initial submission.

Responding to this, Taco John’s defended its stance by stating it "has the right to enforce its trademark rights against infringers and those who want to infringe, including Taco Bell." They further declared their position by stating it "denies that enforcing its trademark rights against infringers who seek to profit from the goodwill that Spicy Seasonings and its licensees … have created over the last forty-four years violates any American ideal."

The case, according to trademark attorney Josh Gerben, now “gets real” after Taco Bell “scored an early press relations victory by the well-coordinated roll-out of the cancellation actions,” he told CNN.

As the legal proceedings unfold, the discovery stage is up next. Taco Bell is likely to "conduct a survey to determine what portion of the American public associated Taco Tuesday" with either Taco John’s or Gregory Hotel, the owner of the trademark in New Jersey. The aim is to assess whether the phrase is more generally associated with the tradition of consuming tacos on Tuesdays.

It’s predicted that Taco John’s and Gregory Hotel will likely investigate if Taco Bell has been "attempting to assist other restaurants or celebrities to use Taco Tuesday in an attempt to invalidate their trademark rights," possibly using a similar customer survey methodology.

This is not going to be something where Taco Bell is going to be able to declare victory anytime soon. The path toward resolution seems long, absent an unlikely settlement. Many believe the litigation process could stretch out for at least two years.