‘Taco Tuesday’ Tango

The word expression ‘Taco Tuesday’ is of an unknown origin. But over the period of time, it has become a popular marketing tag line for the restaurants and bars to attract customers on a particular day of the week typically on Tuesday to sell the Mexican foods. ‘Taco Tuesday’ is often used by the eating joints and restaurants in the United States to sell tacos, tortillas, quesadillas and the like. Over the years, some businesses and individuals have attempted to trademark the phrase ‘Taco Tuesday’ for various purposes.

Similarly, in the early 1980s, Taco John’s, a regional fast-food chain based in Wyoming, filed an application for registration of the trademark ‘Taco Tuesday’. In 1989, the United States Patent and Trademark Office (USPTO) granted the registration with Registration no. 1572589 under Class-43 in favor of Taco John’s. However, the trademark was only associated with specific service as a restaurant business. Taco John’s did manage the trademark ‘Taco Tuesday’ for their specific restaurant services, the phrase has largely remained a widely used and generic term for promoting taco specials on Tuesdays by various establishments. The enforcement of the trademark has been limited and ‘Taco Tuesday’ continues to be used freely by businesses in their marketing and promotions. This Registration is “restricted to the area comprising the entire United States, except for the state of New Jersey,” pursuant to Concurrent Use Proceeding No. 94000972. The Application for the ‘Taco Tuesday’ trademark was filed on  March 23, 1989 and it was finally registered on December 19, 1989. The Registration to Registrant was  assigned by the Registrant’s predecessor in interest  on September 24, 2020. This assignment was recorded with the USPTO on October 2, 2020. Any entity wishing to use the phrase ‘Taco Tuesday’ had to obtain prior permission from Taco John’s.

On May 16 of this year, Taco Bell IP Holder, LLC., located at Glen Bell Way, California, filed a petition for cancellation of the trademark ‘Taco Tuesday’ on the grounds that the phrase ‘Taco Tuesday’ is very generic in nature and no one can claim any monopolistic right over the phrase ‘Taco Tuesday’. The phrase has become ubiquitous in the restaurant business in promoting the custom of having Mexican dishes on Tuesday nights. In re Monday Night Ventures LLC, Serial. No. 88817107 2022 WL 17730970 (TTAB, Nov. 28, 2022), at 21 the USPTO Trademark Trial and Appeal Board observed that the concept of ‘Taco Tuesday’ is a commonplace term used in reference with having Mexican foods and drinks, hence it can no longer serve as a source identifier. The phrase denotes information related to the custom of having tacos and other Mexican dishes on Tuesdays. On June 23, 2023 the defendant filed the reply to the Petition for Cancellation stating that the petition fails to state any claim upon which legal remedy such as cancellation of the trademark ‘Taco Tuesday’.

Subsequently, Taco Bell IP Holder, LLC. started the ‘Free Taco Tuesday’ initiative and partnered with the iconic basketball player LeBron James. The aggressive campaigning by Taco Bell ultimately resulted in Taco John’s conceding defeat to avoid damage to its public relations and further backlash. Ultimately the might of Taco Bell prevailed and Taco John’s had to yield.

After an intense battle of bitter hatred between the two contesting business houses, Taco John’s decided to end the strife by voluntarily surrendering its trademark for ‘Taco Tuesday’ to the USPTO Trademark Trial and Appeal Board. On August 1, 2023 the petition of Taco Bell IP Holder , LLC was granted with cancellation no. 92082333 under Section 18 of the Trademark Act, 1946, on the grounds of abandonment and the generic nature of the mark under Section 14(3) of the Trademark Act, 1946. The usage of the phrase ‘Taco Tuesday’ consists of a combination of common words associated with everyday usage in the restaurant business parlance. The common words lack the distinctive character that trademarks have and hence, cannot be used as unique identifiers of their origin. The phrase ‘Taco Tuesday’ has already become ubiquitous in the restaurant service industry and hence, it should not be protected for exclusive usage.

Taco John’s, while relinquishing the trademark for ‘Taco Tuesday’, announced its plans of donating the funds it saved from not continuing the litigation battle to a non- profit organization, Children Of Restaurant Employees (CORE), which provides financial relief to families of restaurant employees with children when either the employee, spouse, or children, suffer from any life altering disease, injury, natural disaster. Taco John further proposed Taco Bell and LeBron James to donate free tacos for the social cause.

On March 7, 2007, Gregory Hotel Inc, running a chain of restaurants. filed an application to obtain the registration of ‘Taco Tuesday’ in respect of  Restaurant Services which refers to registration no. 3621366 in  Class- 43. The registration is restricted to the the state of New Jersey. On May 16, 2023, Taco Bell IP Holder, LLC. has approached the USPTO Trademark Trial and Appeal Board to cancel the subject registration under the same grounds as in the case of Taco John’s. Gregory Hotel Inc. has vehemently opposed the cancellation of the registration by filing the reply against the petition filed by Taco Bell. Gregory Inc. has submitted that the  petitioner has failed to state a claim upon which the relief such as- the cancellation of the trademark can be granted.

Gregory’s Inc. expressed their amazement at Taco John’s decision to relinquish the trademark for ‘Taco Tuesday’ phrase, and declared that they had not decided on relinquishing the trademark for the phrase ‘Taco Tuesday’ for the state of New Jersey.

Undoubtedly, it is always an interesting trademark battle initiated by Taco Bell, LLC. all the time against any particular business house to claim monopolistic right over such an arbitrary phrase ‘Taco Tuesday’. However, only time will tell when the battle will end. Indeed, the phrase ‘Taco Tuesday’ is generic as well as popular for restaurants involved in Mexican food.