‘Taco Tuesday' Trademark War Ends in Truce
In an unexpected turn of events, the well-known Wyoming-based taco chain, Taco John’s, announced on Tuesday their decision to abandon their trademark registration for the much-debated phrase, 'Taco Tuesday'. This decision comes two months after the initiation of legal proceedings and a vigorous advertising campaign by Taco Bell to "free Taco Tuesday".
Taco John’s CEO, Jim Creel, disclosed in a statement on Tuesday that the company will now “share” the popular phrase. He stated that the firm has chosen to abandon the trademark as "paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do."
Creel, in a conversation with the Wall Street Journal, speculated that defending the trademark could impose a financial burden of up to $1 million on the company. Taco John’s, which commenced operations in 1969. Taco John’s has flourished since its inception, with approximately 400 stores across 21 states, primarily locartd in Minnesota and Iowa.
With the relinquishment of the trademark, eateries throughout the nation are now free to use the phrase for their marketing campaigns, without fear of legal consequences.
CRUCIAL COMMENT
“Taco John's decision to join the movement and liberate Taco Tuesday means countless businesses big and small, restaurants, and taco vendors can now embrace, celebrate and champion ‘Taco Tuesdays’ freely,” Taco Bell CEO Mark King shared with Forbes. “Thank you to the taco fans everywhere who fought by our side, and a thank you to Taco Johns for recognizing what we've known all along—when tacos win, we all win.”
BACKGROUND
On May 16, Taco Bell revealed its intention to challenge Taco John’s trademark in court. The company argued that the phrase "should belong to all who make, sell, eat and celebrate tacos.” Taco Bell wasn’t pursuing damages or trademark rights for “Taco Tuesday”—rather, they wanted “common sense for usage of a common term.” Taco Bell, with its extensive network of over 8,200 stores globally, turned the lawsuit into a marketing event, roping in Lakers' billionaire superstar Lebron James and accumulating signatures to back the "free Taco Tuesday" movement. As of this Tuesday, the petition boasted 24,568 signatures. Taco John's has held the trademark for the phrase since 1989 in all states but New Jersey, where it is owned by Gregory's Restaurant & Bar. Taco Bell is still contesting this trademark, and the restaurant's co-owner expressed surprise at Taco John’s decision and indicated no intention of surrendering their trademark.
A PHILANTHROPIC TURN OF EVENTS
This part, we love.
Taco John’s leveraged this situation to challenge their “litigious competitors” to make a charitable donation. As part of the announcement, the company pledged to donate $100 per outlet—totaling around $40,000—to Children of Restaurant Employees (CORE), a group that assists employees with children facing health crises, death, or natural disasters. The company also encouraged Taco Bell and other “taco-loving brands” to follow suit, “liberating themselves from their army of lawyers” and matching their donations. Taco John’s estimated that if Taco Bell matched their contributions, it would amount to approximately $720,000, which is significantly less than what they would spend on a legal dispute over the mark. The challenge begins with a $40,000 donation from Taco John’s to an organization supporting their cause.