The Taco Tuesday Trademark Debacle

Above: Photo of Tacos. ID | 148861749 © Joshua Resnick | Dreamstime.com

How are you celebrating Taco Tuesday? Maybe you’re munching on a taco at the office or visiting your favorite Mexican restaurant. Food-themed events like Taco Tuesdays can inject some fun into the workweek slog. But did you know that, until recently, the phrase “Taco Tuesday” was trademarked? Last month, however, Gregory’s Restaurant and Bar in Somers Point, New Jersey gave up its right to the trademark, meaning that restaurants across all fifty states can now freely use the phrase.

So, why did Gregory’s forfeit its trademark? The answer involves Taco Bell. Of course, with the word “taco” in its name, the franchise wanted to take advantage of Taco Tuesdays in its marketing campaigns. But unfortunately, trademark law prevented Taco Bell from freely using the phrase anywhere in the United States. A smaller chain, Taco John’s, held the trademark in 49 states, and Gregory’s Restaurant and Bar owned it in New Jersey.

To remove the “Taco Tuesday” trademark, Taco Bell leveraged its power as a major corporation. It threatened to take both Taco John’s and Gregory’s Restaurant and Bar to court. It created ads featuring legendary basketball player LeBron James—a Taco Tuesday fan who had himself tried to trademark the term without success. Together, Taco Bell and James called for the term’s free usage, amusingly bleeping out the “Tuesday” in their ads to avoid trademark infringement. On its website, Taco Bell posted that Taco Tuesdays “should belong to everyone” and said it was “not cool” for businesses to have exclusive rights to the phrase.

Taco Bell’s legal argument rested on the premise that “Taco Tuesday” has become too generic. Typically, a registrant cannot receive a trademark for a commonly-used phrase. If registrants could trademark words like “jeans” or “breakfast,” it would reduce businesses’ ability to sell goods across the country. That’s why words that were once trademarked, like aspirin, escalator, and laundromat, are now free to use—they became so genericized that registrants could no longer claim exclusive rights to them. Taco Bell believes the same theory applies to Taco Tuesdays. After all, the USPTO denied LeBron James’s application because the term was too generic, so why should it allow restaurants to maintain their trademarks?

Afraid of facing Taco Bell in court, Taco John’s quickly forfeited the trademark across 49 states. But in New Jersey, Gregory’s Restaurant and Bar fought to keep its rights. Gregory’s claimed that it had helped popularize the term “Taco Tuesday” and should therefore retain exclusive rights to the trademark. From a legal perspective, it makes little difference whether or not the restaurant helped popularize the term. What’s more important is if people identify the trademark with the registrant. For example, McDonald’s may have made hamburgers more popular, but the same could be said of Burger King, Wendy’s, or any number of other restaurants. By contrast, the “Big Mac” is more distinctive and closely associated with McDonald’s, making it easier to trademark. “Taco Tuesday” fits into the former category. Gregory’s may have owned the trademark, but few people would have associated the phrase with the restaurant. And once the dispute went to the USPTO, Gregory’s finally caved to Taco Bell, relinquishing its trademark rights rather than face upwards of $100,000 in legal fees.

Although the Taco Tuesday trademark debacle might seem like just another story of a big company intimidating smaller businesses, the outcome has its upsides. Now, restaurants nationwide can use the phrase “Taco Tuesday” without fear of legal recourse. Consumers will have more opportunities for cheap deals on tacos. And on November 21, New Jersey residents can celebrate the genericization of “Taco Tuesday” with free Doritos Locos Tacos from Taco Bell.