Taco Bell takes on Taco John's over Taco Tuesday trademark
Photo Source: Taco John’s | Taco Bell

Taco Bell says it is out to liberate Taco Tuesdays.

The Mexican food-inspired restaurant chain said it has filed legal petitions asking the U.S. Patent and Trademark Office Trademark Trial and Appeal Board to cancel Taco John’s “Taco Tuesday” trademark after 34 years.

Taco Bell said in a press release that “the very essence of ‘Taco Tuesday’ is to celebrate the commonality amongst people of all walks of life who come together every week to celebrate something as simple, yet culturally phenomenal, as the taco.”

The petition could have legs if Taco Bell successfully makes the case that “Taco Tuesday” has become so commonly used in society that the trademark holder, in this case Taco John’s, can no longer hold claim to it. Emily Poler, a trademark law attorney, said the legal term is “genericide” in an Associated Press interview.

Taco John’s, which first filed its trademark claim, has held control of “Taco Tuesday” in 49 states since 1989, reports Quartz.  A single unit business named Gregory’s Restaurant & Bar in Somers Point, NJ, holds the trademark in the Garden State.

Gregory’s claims to be “The Original Taco Tuesday” having served its first tacos on a Tuesday in February 1979. Taco Bell is seeking to void that trademark, as well.

Taco John’s, which opened as a taco stand in 1969 has about 400 stores across 23 states. It responded to Taco Bell’s announcement with a press release of its own.

“I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday® is best celebrated at Taco John’s,” said the chain’s CEO Jim Creel. “We love celebrating Taco Tuesday® with taco lovers everywhere, and we even want to offer a special invitation to fans of Taco Bell to liberate themselves by coming by to see how flavorful and bold tacos can be at Taco John’s all month long.”

Mr. Creel didn’t stop at his implied critique of Taco Bell’s menu offerings.

“We’re lovers, not fighters, at Taco John’s,” he said. “But when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”

BrainTrust

“My bias is to side with ‘the little guy’ on issues like this one, however this has been in place for 40+ years and ‘Taco Tuesday’ is pretty generic at this point.”

Mark Self

President and CEO, Vector Textiles


“It shouldn’t matter that Taco Tuesday is part of the vernacular, it’s owned by Taco John’s & Gregory’s, 2 companies that have taken the high road in allowing others to use it.”

Georganne Bender

Principal, KIZER & BENDER Speaking


“Villain but they shouldn’t be. Taco John started a trend 40+ years ago that they’ve been able to capitalize on.”

Phil Chang

Podcast Host, Retail Influencer, Fractional CMO

Discussion Questions

DISCUSSION QUESTIONS: What do you think of Taco Bell’s action to overturn the “Taco Tuesday” trademarks held by Taco John’s and Gregory’s since 1979? Will Taco Bell ultimately come off as hero or a villain in this case?

Poll

Do you side with Taco Bell or Taco John’s and Gregory’s over the dispute over the Taco Tuesday trademark?

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29 responses to “Is Taco Bell The Hero or The Villain in Taco Tuesday Fight?”

  1. Bob Amster Avatar
    Bob Amster

    Taco John’s was first to market with the tagline. They have the right to collect on it or deny use to others. (I would collect on it.)

    1. Katie Thomas Avatar
      Katie Thomas

      To collect on it indefinitely, though? What if we said the same thing about pharmaceutical companies?

  2. John Lietsch Avatar
    John Lietsch

    If Taco’s Bell business strategy is so dependent on the use of the phrase “Taco Tuesday” that it’s willing to sue Taco John’s then I think it has other problems. I can’t see how Taco Bell comes off as anything but a villain in this fight unless the fight stays largely out of the public eye or Taco Bell has the support of other restaurant owners, especially those that are independently owned and operated. Thankfully, the public tends to have a short term memory for these types of issues so Taco Bell may only be a villain for a short time.

  3. Jasmine Glasheen Avatar
    Jasmine Glasheen

    This is a massively petty move by Taco Bell. As a company, I’ve been continually impressed by Taco Bell’s guerilla
    marketing initiatives, from a pop up themed hotel in Palm Springs a few years back (yes, I tried to get a room there, but it was sold out within 3 minutes) to the taco liberty bell joke (https://mov-management.com/5-genius-guerrilla-marketing-campaigns-part-1/).

    But next gens are pro mental health awareness and very, very anti bully. I don’t see how fighting to remove a trademark that another company fairly promoted is going to shed a positive light on Taco Bell. Frankly, it’s not a good look.

  4. Mark Self Avatar
    Mark Self

    My bias is to side with “the little guy” on issues like this one, however this has been in place for 40+ years and “Taco Tuesday” is pretty generic at this point.

    Taco John’s can increase their profile (in my view) if they just made this trademark some form of creative common for everyone to use.

    Taco Bell will look like the villain only if they prosecute this action in a ham handed way-as in playing the part of the bully as opposed to making sure their rhetoric is nice and supportive of Taco John’s initiative to trademark this in the first place.

  5. Jeff Sward Avatar
    Jeff Sward

    Sounds like a lawsuit was cheaper than some new, clever marketing campaign. Free press…!!!

  6. Georganne Bender Avatar
    Georganne Bender

    It shouldn’t matter that Taco Tuesday has become part of the vernacular, it’s still owned by Taco John’s and Gregory’s, two companies that have taken the high road in allowing others to use it. Taco Bell will lose goodwill points in this fight.

    1. Cathy Hotka Avatar
      Cathy Hotka

      Agreed, Georganne. This was a topic of conversation on CBS this morning; having a larger company menacing a smaller one isn’t a good look.

  7. Steve Montgomery Avatar
    Steve Montgomery

    Taco Bell is the villain in this fight. Taco John’s owns the trademark and should receive all the benefits of doing so including the exclusive right to use it. This is a case of if you can’t beat them on the street, try doing so in court.

    1. Gene Detroyer Avatar
      Gene Detroyer

      Does Taco John own the trademark? Have they re-registered it every 10 years? Have they defended its use by every little Taco stand in the country? If not, they no longer own its use.

  8. Phil Chang Avatar
    Phil Chang

    Villain but they shouldn’t be. Taco John started a trend 40+ years ago that they’ve been able to capitalize on. Kudo’s to them for normalizing “Taco Tuesday” but every taco joint near me does “taco tuesday” Taco Bell is the only one with resources to challenge the trademark. I’ve never seen a single taco restaurant have to take down their taco tuesday because of Taco John, so I’m not really sure what Taco John is defending except something on paper.

    1. George Anderson Avatar
      George Anderson

      Conversely, what is Taco Bell looking to undo based on the same logic?

  9. Gene Detroyer Avatar
    Gene Detroyer

    As I understand, the suit is to “free” the trademark. A “free” trademark allows everyone to use it, including big Taco Bell and my favorite food truck.

    The question is, has Taco John renewed it every ten years as required, and have they defended it or just let the market use it openly? If not, the judge’s decision will be short in favor of “freeing” the trademark.

  10. Doug Garnett Avatar
    Doug Garnett

    It would seem to me that if anyone gets to trademark Taco Tuesday it would be Lego in their brilliant movie. 🙂

  11. Katie Thomas Avatar
    Katie Thomas

    Taco John’s has lost the plot. It’s simple alliteration, not groundbreaking IP specific to their organization. It’s time to let go.

    1. Gene Detroyer Avatar
      Gene Detroyer

      Yes, it is already gone.

    2. Ryan Mathews Avatar
      Ryan Mathews

      Let’s remember Taco John’s didn’t pick this fight.

      I, for one, would probably have lived my entire life contentedly without even knowing they even existed unless Taco Bell had initiated this action.

      If Taco John’s had rigorously defended their legal copyright, Taco Bell might have a beef … complaint, not taco.It seems to me Taco John’s spokesperson is smarter than Taco Bell’s lawyers, or at least has a better sense of humor.

  12. Ryan Mathews Avatar
    Ryan Mathews

    I try not to think very much about Taco Bell at all, but the move to overturn Taco John’s trademark strikes me as either (a) a brilliant example of guerrilla marketing, or (b) an example of thinking like a gorilla — pounding your chest and roaring like mad hoping the little guy will run away in fear. If … and in this case it’s too big an if … I was going to take this seriously, I’d ask if Taco John’s has every exercised its trademark protection, i.e., has it ever taken anyone to court for using the phrase “Taco Tuesday.” If they haven’t protected their trademark, their case is weakened and Taco Bell could probably use it with impunity. No matter who wins, Taco Bell comes off as the villain in the end.

  13. Allison McGuire Avatar
    Allison McGuire

    What a great opportunity for Taco John’s to get exposure from this, while also putting in a few jabs at their competitor who’s coming after them. I applaud Taco John’s for standing up for themselves and the foresight to trademark the term years ago. Taco Bell should be smart enough to market without having to use “Taco Tuesday” and getting lawyers involved.

    1. Gene Detroyer Avatar
      Gene Detroyer

      I suspect that Taco Bell wanted to use Taco Tuesday in a promotion or on a menu, just like every other taco seller, but Taco Bell’s lawyers said, “No, no, not unless you get the term officially “freed.” Getting it “freed” should be a no-brainer. I can’t imagine Taco John has defended the term or officially given others permission to use it.

  14. Craig Sundstrom Avatar
    Craig Sundstrom

    While my knowledge of intellectual property case law is low, my visceral reaction is that common phraseology shouldn’t be trademarkable (I recall some absurdity where an automaker had trademarked – or tied to – “Drive Safely”). So I’ll go with Taco Bell…whatever their rationale for pursuing this may be.

    1. Ryan Mathews Avatar
      Ryan Mathews

      Craig,

      But in this case the trademark preceded the common phraseology. This would be like arguing Kleenex can’t protect its brand name because many people – maybe most people – say Kleenex instead of facial tissue.

      1. Craig Sundstrom Avatar
        Craig Sundstrom

        Correct. I was really commenting more on (what I perceive as) a shortcoming in our Trademark laws that would (even) allow something so mundane to be trademarked in the first place.
        “Kleenex”, I’m fine with, as there is at least a trace of originality in the coined word. Had Kimberly-Clark (or whoever) wanted to trademark “cleansing tissue” It wouldn’t pass muster…mine anyway.

  15. Jeff Hall Avatar
    Jeff Hall

    The optics of this legal action, regardless of Taco Bell’s motivation and reasoning, just don’t look good for the plaintiff. In the short term, Taco John’s can enjoy the massive publicity and expanded public awareness of their brand.

  16. David Slavick Avatar
    David Slavick

    They own it, they keep it. You snooze you lose. Taco Bell has plenty of marketing muscle to leverage to overcome” a competitor’s ownership of a phrase.

  17. Patricia Vekich Waldron Avatar
    Patricia Vekich Waldron

    Every taco restaurant, pop-up and taco stand in San Diego has Taco Tuesday. That’s a term that’s tough trademark to reinforce after all this time – it’s like Jello and Kleenex.

    That being said, a big guy picking a fight with a little one is not good optics.

  18. Rachelle King Avatar
    Rachelle King

    Seems the lawyers at Taco Bell don’t have enough to do. You don’t have to like your competitors but respecting a long held trademark that they own may be considered taking the high road in a world otherwise full of low road beefs.

  19. James Tenser Avatar
    James Tenser

    I learned a long time ago from an IP lawyer I admire that protecting a mark (or a patent for that matter) is 10% about registering it properly and 90% about defending it from trolls and infringers.
    Seems to me the “Taco Tuesday” PR war is a demonstration of how a much smaller competitor can try to force a stand-off versus a much larger one.
    Taco John’s may suffer from a legal disadvantage if they have failed to invest continuously in projecting the mark since it was initially registered. Taco Bell’s expensive attorneys will no doubt probe the record for any missed filings or procedural mistakes.
    More concerning is the generic nature of the two-word mark, Taco Tuesday. It may be hard to defend on the basis of uniqueness – or too costly for Taco John to make a successful case.
    Tough tacos for the little guy, I think.

  20. Mark Avatar
    Mark

    All this over an alliterative two words? So they are driven to win millions in court, I assume,. You can’t expect every taco shop to cease using these two linked words.
    What’s wrong with Taco Mondays? Or Tacos on Tuesdays? Does the “on” count?
    Is this like Fish Fridays? Who owns that? This could digress into lawsuits against any two words linked together by a trademark. Paramount sued a very small sub shop, long ago, just for using the word “starship” in connection to Star Trek!

29 Comments
oldest
newest
Bob Amster
Bob Amster
2 months ago

Taco John’s was first to market with the tagline. They have the right to collect on it or deny use to others. (I would collect on it.)

Katie Thomas
Katie Thomas
  Bob Amster
2 months ago

To collect on it indefinitely, though? What if we said the same thing about pharmaceutical companies?

John Lietsch
John Lietsch
2 months ago

If Taco’s Bell business strategy is so dependent on the use of the phrase “Taco Tuesday” that it’s willing to sue Taco John’s then I think it has other problems. I can’t see how Taco Bell comes off as anything but a villain in this fight unless the fight stays largely out of the public eye or Taco Bell has the support of other restaurant owners, especially those that are independently owned and operated. Thankfully, the public tends to have a short term memory for these types of issues so Taco Bell may only be a villain for a short time.

Jasmine Glasheen
Jasmine Glasheen
2 months ago

This is a massively petty move by Taco Bell. As a company, I’ve been continually impressed by Taco Bell’s guerilla
marketing initiatives, from a pop up themed hotel in Palm Springs a few years back (yes, I tried to get a room there, but it was sold out within 3 minutes) to the taco liberty bell joke (https://mov-management.com/5-genius-guerrilla-marketing-campaigns-part-1/).

But next gens are pro mental health awareness and very, very anti bully. I don’t see how fighting to remove a trademark that another company fairly promoted is going to shed a positive light on Taco Bell. Frankly, it’s not a good look.

Mark Self
Mark Self
2 months ago

My bias is to side with “the little guy” on issues like this one, however this has been in place for 40+ years and “Taco Tuesday” is pretty generic at this point.

Taco John’s can increase their profile (in my view) if they just made this trademark some form of creative common for everyone to use.

Taco Bell will look like the villain only if they prosecute this action in a ham handed way-as in playing the part of the bully as opposed to making sure their rhetoric is nice and supportive of Taco John’s initiative to trademark this in the first place.

Jeff Sward
Jeff Sward
2 months ago

Sounds like a lawsuit was cheaper than some new, clever marketing campaign. Free press…!!!

Georganne Bender
Georganne Bender
2 months ago

It shouldn’t matter that Taco Tuesday has become part of the vernacular, it’s still owned by Taco John’s and Gregory’s, two companies that have taken the high road in allowing others to use it. Taco Bell will lose goodwill points in this fight.

Cathy Hotka
Cathy Hotka
  Georganne Bender
2 months ago

Agreed, Georganne. This was a topic of conversation on CBS this morning; having a larger company menacing a smaller one isn’t a good look.

Steve Montgomery
Steve Montgomery
2 months ago

Taco Bell is the villain in this fight. Taco John’s owns the trademark and should receive all the benefits of doing so including the exclusive right to use it. This is a case of if you can’t beat them on the street, try doing so in court.

Gene Detroyer
Gene Detroyer
  Steve Montgomery
2 months ago

Does Taco John own the trademark? Have they re-registered it every 10 years? Have they defended its use by every little Taco stand in the country? If not, they no longer own its use.

Phil Chang
Phil Chang
2 months ago

Villain but they shouldn’t be. Taco John started a trend 40+ years ago that they’ve been able to capitalize on. Kudo’s to them for normalizing “Taco Tuesday” but every taco joint near me does “taco tuesday” Taco Bell is the only one with resources to challenge the trademark. I’ve never seen a single taco restaurant have to take down their taco tuesday because of Taco John, so I’m not really sure what Taco John is defending except something on paper.

George Anderson
George Anderson
  Phil Chang
2 months ago

Conversely, what is Taco Bell looking to undo based on the same logic?

Gene Detroyer
Gene Detroyer
2 months ago

As I understand, the suit is to “free” the trademark. A “free” trademark allows everyone to use it, including big Taco Bell and my favorite food truck.

The question is, has Taco John renewed it every ten years as required, and have they defended it or just let the market use it openly? If not, the judge’s decision will be short in favor of “freeing” the trademark.

Doug Garnett
Doug Garnett
2 months ago

It would seem to me that if anyone gets to trademark Taco Tuesday it would be Lego in their brilliant movie. 🙂

Katie Thomas
Katie Thomas
2 months ago

Taco John’s has lost the plot. It’s simple alliteration, not groundbreaking IP specific to their organization. It’s time to let go.

Gene Detroyer
Gene Detroyer
  Katie Thomas
2 months ago

Yes, it is already gone.

Ryan Mathews
Ryan Mathews
  Katie Thomas
2 months ago

Let’s remember Taco John’s didn’t pick this fight.

I, for one, would probably have lived my entire life contentedly without even knowing they even existed unless Taco Bell had initiated this action.

If Taco John’s had rigorously defended their legal copyright, Taco Bell might have a beef … complaint, not taco.It seems to me Taco John’s spokesperson is smarter than Taco Bell’s lawyers, or at least has a better sense of humor.

Ryan Mathews
Ryan Mathews
2 months ago

I try not to think very much about Taco Bell at all, but the move to overturn Taco John’s trademark strikes me as either (a) a brilliant example of guerrilla marketing, or (b) an example of thinking like a gorilla — pounding your chest and roaring like mad hoping the little guy will run away in fear. If … and in this case it’s too big an if … I was going to take this seriously, I’d ask if Taco John’s has every exercised its trademark protection, i.e., has it ever taken anyone to court for using the phrase “Taco Tuesday.” If they haven’t protected their trademark, their case is weakened and Taco Bell could probably use it with impunity. No matter who wins, Taco Bell comes off as the villain in the end.

Allison McGuire
Allison McGuire
2 months ago

What a great opportunity for Taco John’s to get exposure from this, while also putting in a few jabs at their competitor who’s coming after them. I applaud Taco John’s for standing up for themselves and the foresight to trademark the term years ago. Taco Bell should be smart enough to market without having to use “Taco Tuesday” and getting lawyers involved.

Gene Detroyer
Gene Detroyer
  Allison McGuire
2 months ago

I suspect that Taco Bell wanted to use Taco Tuesday in a promotion or on a menu, just like every other taco seller, but Taco Bell’s lawyers said, “No, no, not unless you get the term officially “freed.” Getting it “freed” should be a no-brainer. I can’t imagine Taco John has defended the term or officially given others permission to use it.

Craig Sundstrom
Craig Sundstrom
2 months ago

While my knowledge of intellectual property case law is low, my visceral reaction is that common phraseology shouldn’t be trademarkable (I recall some absurdity where an automaker had trademarked – or tied to – “Drive Safely”). So I’ll go with Taco Bell…whatever their rationale for pursuing this may be.

Ryan Mathews
Ryan Mathews
  Craig Sundstrom
2 months ago

Craig,

But in this case the trademark preceded the common phraseology. This would be like arguing Kleenex can’t protect its brand name because many people – maybe most people – say Kleenex instead of facial tissue.

Craig Sundstrom
Craig Sundstrom
  Ryan Mathews
2 months ago

Correct. I was really commenting more on (what I perceive as) a shortcoming in our Trademark laws that would (even) allow something so mundane to be trademarked in the first place.
“Kleenex”, I’m fine with, as there is at least a trace of originality in the coined word. Had Kimberly-Clark (or whoever) wanted to trademark “cleansing tissue” It wouldn’t pass muster…mine anyway.

Jeff Hall
Jeff Hall
2 months ago

The optics of this legal action, regardless of Taco Bell’s motivation and reasoning, just don’t look good for the plaintiff. In the short term, Taco John’s can enjoy the massive publicity and expanded public awareness of their brand.

David Slavick
David Slavick
2 months ago

They own it, they keep it. You snooze you lose. Taco Bell has plenty of marketing muscle to leverage to overcome” a competitor’s ownership of a phrase.

Patricia Vekich Waldron
Patricia Vekich Waldron
2 months ago

Every taco restaurant, pop-up and taco stand in San Diego has Taco Tuesday. That’s a term that’s tough trademark to reinforce after all this time – it’s like Jello and Kleenex.

That being said, a big guy picking a fight with a little one is not good optics.

Rachelle King
Rachelle King
2 months ago

Seems the lawyers at Taco Bell don’t have enough to do. You don’t have to like your competitors but respecting a long held trademark that they own may be considered taking the high road in a world otherwise full of low road beefs.

James Tenser
James Tenser
2 months ago

I learned a long time ago from an IP lawyer I admire that protecting a mark (or a patent for that matter) is 10% about registering it properly and 90% about defending it from trolls and infringers.
Seems to me the “Taco Tuesday” PR war is a demonstration of how a much smaller competitor can try to force a stand-off versus a much larger one.
Taco John’s may suffer from a legal disadvantage if they have failed to invest continuously in projecting the mark since it was initially registered. Taco Bell’s expensive attorneys will no doubt probe the record for any missed filings or procedural mistakes.
More concerning is the generic nature of the two-word mark, Taco Tuesday. It may be hard to defend on the basis of uniqueness – or too costly for Taco John to make a successful case.
Tough tacos for the little guy, I think.

Mark
Mark
2 months ago

All this over an alliterative two words? So they are driven to win millions in court, I assume,. You can’t expect every taco shop to cease using these two linked words.
What’s wrong with Taco Mondays? Or Tacos on Tuesdays? Does the “on” count?
Is this like Fish Fridays? Who owns that? This could digress into lawsuits against any two words linked together by a trademark. Paramount sued a very small sub shop, long ago, just for using the word “starship” in connection to Star Trek!