By Ed Avis
Were you worried about using the phrase “Taco Tuesday” because Taco John’s held the trademark to the phrase and threatened legal action against other restaurants using it? Well, you can stop worrying: On July 18 the chain officially announced that it will drop its trademark claim on the phrase.
Even though the company had long claimed it owned the term, and occasionally sent cease-and-desist letters to restaurants using it, the threat was actually hollow. In 2019, el Restaurante researched the issue and learned that the company had filed only three trademark infringement cases about the term since it gained the trademark in 1989. One was dismissed and no conclusion information was available on the other two. (Click here to read our original article on the topic.)
More important, trademark attorneys we interviewed at that time said Taco John’s trademark was simply not enforceable because the phrase was too common.
“As long as you’re using the phrase ‘Taco Tuesday’ to describe the literal day, and not using it as a brand name, it’s pretty safe that you’re not going to lose a court case,” said Jeremy Peter Green, a trademark attorney who regularly represents restaurants in trademark issues, at the time.
Kevin Grierson, a partner and intellectual property co-chair at law firm Culhane Meadows, concurred with Green: “Infringement of a trademark normally means you are creating a likelihood of confusion of between our trademark and your use of it. But that’s nonsense in this case. No one thinks the taqueria down the street is part of Taco John’s just because they advertise ‘Taco Tuesday.’”
The attorneys explained that if someone contested Taco John’s claim to the phrase and won the case, Taco John’s could be forced to abandon the trademark altogether. Nobody forcefully contested the phrase for several decades, so Taco John’s was able to continue browbeating other users by sending the letters. But that changed in May when Taco Bell – a much larger rival – took up the fight and challenged Taco John’s by filing a petition with the U.S. Patent and Trademark Office to cancel the trademark.
Taco John’s decided the fight wasn’t worth it.
“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,” said Taco John’s CEO Jim Creel in a statement the company released July 18 announcing that they were officially abandoning the trademark.
The company is putting a positive spin on the situation by donating money to non-profit organization Children of Restaurant Employees (CORE), which supports restaurant workers when the employee, spouse or a child faces a life-altering health crisis, injury, death or natural disaster.
“As we’ve said before, we’re lovers, not fighters, at Taco John’s,” Creel said in the statement. “So in that spirit, we have decided to begin sharing Taco Tuesday with a pledge to contribute $100 per location in our system to restaurant employees with children who are battling a health crisis, death or natural disaster. “
Creel went on to challenge other taco chains to match their donation: “Let’s see if our friends at Taco Bell are willing to ‘liberate’ themselves from their army of lawyers by giving back to restaurant families instead. We challenge them to match our $100-per-restaurant pledge – that’s about $720,000 – which is less than they’d have to spend in a legal battle for the mark. We also invite Del Taco, Taco Bueno, Taco Cabana, Jack In The Box and mom and pop taco shops across the country that intend to use Taco Tuesday in the future to join us in this movement to support working families and donate to CORE.”
The bottom-line: Now you can promote your Taco Tuesday specials as much as you want without worrying about getting that nagging letter – or lawsuit – from Taco John’s.