Federal Trademark Registration For TACO TUESDAY

Richard Rimer

July 21, 2023

Taco Bell v. Taco John: A Federal Trademark Registration Battle

In May Taco Bell moved to cancel Taco John’s federal trademark registration of TACO TUESDAY. This received a fair amount of press for several reasons. First, Taco Bell ran a national campaign starring Lebron James stating that everyone should be able to use “Taco Tuesday.” Second, Taco Bell’s counsel wrote a fairly informal Petition to the Trademark Trial and Appeal Board which in essence said that Taco John’s ownership of Taco Tuesday was “not cool.”

Taco Bell started the legal portion of this matter by filing a Petition to Cancel that was fairly artistic. To wit:
“People like tacos on Tuesdays. They just do. It’s even fun to say: “Taco Tuesday.” Tacos have the unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week. But since 1989, entities associated with Registrant have owned a federal trademark registration for “Taco Tuesday.” Not cool.”

Federal Trademark Registration

Lets Taco Bout It

Taco John filed its response in June and will not be outdone. I was impressed with Taco John’s response. This much smaller chain matched wits with Taco Bell, writing its own clever Answer to Taco Bell’s Petition.Their response:
“[Taco John] admits that since 1989, entities associated with it have owned a federal trademark registration for the mark TACO TUESDAY, that people like tacos and that tacos can bring people together. [Taco John] denies that there is anything “not cool” about independently creating a trademark over forty years ago and obtaining a registration for that trademark with the United States Patent and Trademark office. The remaining allegations of paragraph A are statements of opinion to which no response is required, including that Tuesday is a mediocre day of the week.”

Federal Trademark Registration

I think the most important words written in this matter were words by Taco John later in their Answer:
“…whether a registered trademark is “fun to say” does not constitute a legal basis to cancel a trademark that has been registered with the USPTO for thirty-four years and was first used by [Taco John] and its licensees as early as 1979.” Taco John also raises the affirmative defense of “unclean hands” by Taco Bell. This defense is often a throw-away, but an interesting tactic in this case.

TACO TUESDAY For All

Unfortunately for Taco John, this battle ended much sooner than expected. On July 18th, 2023 Taco John’s International, Inc. surrendered its federal trademark registration on TACO TUESDAY. Ultimately, Taco John’s saw the writing on the wall. They saw that they would likely lose this battle, and stopped the fight before they spent considerable sums with white shoe lawyers. Taco Bell is now declaring that they’ve freed Taco Tuesday for everyone to use.

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