Few phrases evoke more excitement than “Taco Tuesday.” The phrase gained popularity in the 1980s when restaurants and taquerias nationwide began offering discounted taco dinners on Tuesday evenings. It then raged back into the national spotlight in 2019 when LeBron James would post boisterous videos on Instagram announcing his family’s weekly dinner tradition.
Of course, the popularity of “Taco Tuesday” resulted in a decades-long battle over the phrase’s trademark rights. Recently, an unlikely alliance has formed between LeBron James and Taco Bell to liberate the phrase from its long-standing trademark protections. Taco Bell has gone as far to say the phrase “should be freely available to all who make, sell, eat, and celebrate tacos.” It’s trademark owners, however, beg to differ.
HISTORY OF THE TACO TUESDAY TRADEMARK
The TACO TUESDAY mark originated in the 1980s in two locations. First, in 1982, the USPTO granted a registration for the mark to Gregory’s Restaurant & Bar, a standalone location in Somers Point, New Jersey. Then, in 1989, the USPTO granted another registration to Taco John’s, a Wyoming-based Mexican fast-food chain. Taco John’s has rights to TACO TUESDAY in all states but New Jersey, where Gregory’s control continues.
Taco John’s has actively fought to protect its rights to the TACO TUESDAY mark by bringing legal claims against countless restaurants and retailers seeking the phrase in branding and advertising. Meanwhile, the USPTO has been cautious to grant additional registrations for the phrase, emphasizing the need for distinctiveness and avoiding the monopolization of common expressions. Nevertheless, Taco John’s has made clear it does not plan to lose control of its cherished mark.
TACO BELL AND LEBRON JAMES TURN UP THE HEAT
On May 16, 2023, Taco Bell announced it filed a petition with the USPTO to cancel the TACO TUESDAY mark. Taco Bell stated it has no interest in owning the rights to the phrase, arguing instead “nobody should have exclusive rights in a common phrase.” Naturally, Taco John’s took the opportunity to remind everyone it owns the mark. Owner Jim Creel retorted “I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s.”
LeBron James has also joined Taco bell to liberate the “Taco Tuesday” mark with a recent ad campaign, proclaiming “No more trademarks, no more bleeps, starting right now.” Notably, in 2019, the USPTO denied James’ own application to trademark “Taco Tuesday,” concluding it was “a commonplace term” used by “a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment message.” This result was no surprise to James’ camp, who confessed the plan was for the USPTO “to recognize that someone cannot be sued” for using the TACO TUESDAY mark.
The primary criticism for TACO TUESDAY is the mark contravenes the well-accepted rule that generic or commonplace terms cannot receive trademark protection. This issue often arises with restaurants who seek protections over their names and branding that incorporate generic terms, like PIZZA as a trademark for pizza. Stronger, more desirable trademarks often incorporate arbitrary or suggestive marks, such as SONIC for restaurant services, or STARBUCKS for café services.
While Taco John’s and Gregory’s may lose their rights to the TACO TUESDAY mark, the excitement of the phrase will never cool off. If you are involved in a legal dispute concerning your business’s name, or if you need assistance registering your trademark, contact us to learn how we can help.