Intellectual Property

'Taco Tuesday' Trademark Terminated Thanks To Taco Bell

It's a Taco Tuesday miracle!

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Three tacos served with salad, salsa and lime on a restaurant tableIt felt like a regular, taco-less Tuesday. We woke up yesterday in a world where Taco John’s (and, in New Jersey, a place called Gregory’s) claimed dominion over the phrase “Taco Tuesday” and Taco John’s did not shy away from hurling legal threats at anyone who hoped to embark on the alliterative culinary adventure. But then Taco Bell filed a pair of petitions with the Trademark Trial and Appeal Board — and brought LeBron into it somehow — seeking to, as they put it, liberate the trademark for the world.

And, yesterday, Taco John’s agreed to abandon the mark and create a true Taco Tuesday for the ages.

“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,” Taco John’s CEO Jim Creel said in a statement.

I wouldn’t buy this “woe is us” routine from a dollar menu. Taco John’s gleefully paid law firms to fire off bullying letters to local businesses around the country. In 2010, it threatened to sue Iguana Grill in Oklahoma City for attaching the phrase to its $1 taco promotion and… Taco John’s doesn’t even operate in Oklahoma. Those mom-and-pop establishments also relented rather than pay lawyers, so this isn’t a novel concept for the corporate chain.

The company also “announced it would spend money it would have given to its lawyers on a charitable donation, giving $40,000 to the nonprofit Children of Restaurant Employees, which supports workers and their families through health crises and natural disasters.” Which is certainly a welcome donation, but… they just said they would’ve spent “millions of dollars” on lawyers, but when it comes to charity they could only come up with roughly the equivalent of hiring TWO minimum wage workers in Montana (a state where they do operate).

More likely, Taco John’s spoke with lawyers willing to level with the company that the case looked bleak. Despite all the cease-and-desist efforts, Taco Tuesday has entered the zeitgeist and can’t be readily identified with Taco John’s (or Gregory’s) anymore.

It’s also a victory for the strategy of litigation as marketing. Not a publicity stunt, mind you, but a real legal claim crafted with an eye toward publicity. Taco Bell’s attorneys from Pirkey Barber filed petitions that covered the substantive bases while piquing media interest by lacing in quotable, funny lines. While this took it up a notch, it’s not the first time Taco Bell recognized that legal can contribute to sales…

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In any event, the Taco Tuesday tiff positioned Taco Bell as the “cool” taco chain trying to push back on a silly legal quirk. Everyone wrote about it and a whole bunch of random folks became armchair IP lawyers over it.

Even if they lost, they would’ve “won.”

But they did not lose, and have successfully opened up Taco Tuesday to 49 states. The ban lives on, for now, in New Jersey. Why do you gotta be weird, New Jersey?

‘Taco Tuesday’ belongs to us all, after Taco John’s gives up trademark [Washington Post]

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Earlier: ‘Taco Tuesday’ Trademark Challenge A Win-Win Proposition For Taco Bell

HeadshotJoe Patrice is a senior editor at Above the Law and co-host of Thinking Like A Lawyer. Feel free to email any tips, questions, or comments. Follow him on Twitter if you’re interested in law, politics, and a healthy dose of college sports news. Joe also serves as a Managing Director at RPN Executive Search.

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