Let the taco wars begin — again.
Taco Bell is trying to drop a bomb on competitor Taco John’s, headquartered in Cheyenne, Wyoming, filing paperwork — on Tuesday — that seeks to squash the smaller rival’s Taco Tuesday trademark.
The legal petition reads more like a press release than a court petition, saying it just wants to “liberate” the phrase Taco Tuesday and end the “pure chaos” the trademark has caused for the masses.
“People like tacos on Tuesdays,” the court petition says in a most un-court like fashion. “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.”
Every Day Is Now Taco Tuesday
Taco John’s, however, is saying “not so fast.”
What’s really behind Taco Bell’s populist petition is a larger competitor trying to muscle out the little guy, Taco John’s Chief Marketing Officer Barry Westrum told Cowboy State Daily.
“You know, really, they just want to put millions of dollars of advertising behind it to appropriate it as their own,” he said. “And we just don’t think this is right for our customers, and for our franchisees, who have been enjoying Taco Tuesday for 34 years.”
In honor of that longstanding tradition, Westrum said Taco John’s is extending its Taco Tuesday deal to every day of the week through the end of the month.
“It’s available now on Taco Wednesday, Taco Thursday, Taco Friday, and so on,” he said. “We are having some fun with this. They can poke at legal stuff all they want, but we know our customers just want their tacos from us every day of the week. And that’s what we intend to stay focused on.”
Taco John’s CEO Jim Creel, meanwhile, thanked Taco Bell for “reminding everyone that Taco Tuesday is best celebrated at Taco John’s.
“We love celebrating Taco Tuesday with taco lovers everywhere, and we want to offer a special invitation to fans of Taco Belt liberate themselves by coming by to see how flavorful and bold tacos can be at Taco John’s all month long.”
How Taco Tuesday Came To Taco John’s
The idea for Taco John’s Taco Tuesday trademark began as a promotion for a Minnesota franchise owned by David Olsen. Tuesdays, as it happened, were his worst sales day of the week.
He’d had some success boosting his Sunday with “Soft-shell Sundays,” but he needed something to perk up a bad case of the terrible Tuesdays.
Playing around with the word “Tuesday” led him to a great idea. Tuesday, he thought, sounds just like “twosday.”
Why not sell two tacos for 99 cents on Tuesdays?
Taco Tuesday was born.
At the time, individual tacos were selling for 69 cents each, so two for 99 cents was a great deal. Customers thought so, too, and the promotion doubled Olsen’s sales in a very short time.
Word of the successful campaign spread quickly up the corporate chain. It was a no-brainer to take it national for all Taco John’s franchises, complete with its own trademark.
Of course, this success did not go unnoticed by rival restaurants, and the company has frequently had to defend its trademark as a result.
Westrum wasn’t sure how many challenges the trademark has faced over the years, but former TJI chief marketing officer Billie Jo Waara mentions defending the trademark against “national cola companies, barbecue providers, restaurant chains large and small, and even some well-known pharmaceutical companies” in a TEDxCheyenne Talk.
Who Said It First
Who exactly created the phrase Taco Tuesday is a bit more murky.
There are instances that predate Taco John’s use of the trademark in media ads. And initially, when Taco John’s first filed for a trademark on the phrase in 1979, the company discovered a bar in New Jersey had beaten them to it by a few months.
But Gregory’s Restaurant and Bar made a critical error in 1989 with its trademark. It failed to file timely proof that the trademark was still in use. That automatically canceled the registration, opening the door for Taco John’s to claim it instead — which the Wyoming-based chain immediately did.
A big legal battle ensued, ultimately ending with Gregory’s retaining the right to use the trademark in New Jersey, while Taco John’s has it everywhere else.
Once trademarked in 1989, Taco Tuesday went on to become one of the biggest marketing success stories that Taco John’s has ever had.
It was particularly good timing for the company.
Until then, the franchise had been somewhat fragmented, with each store kind of doing its own thing. Some franchises even offered products that other stores didn’t have, like hotdogs, for example.
Taco Tuesdays helped unify them around a singular message, and that helped bring the franchise together throughout the next decade or so.
But gaining the trademark — and then keeping it — has proven to be an ongoing battle.
The LeBron James Connection
As Waara herself noted in her TEDxCheyenne talk, the rise of social media has led to a vast increase in unauthorized use of the Taco Tuesday trademark by restaurants, food trucks and fundraisers.
“If any of you Google ‘Taco Tuesday’ or search for ‘Taco Tuesday,’ you’ll see over 3 million hits on any day of the week,” she said. “That number rises, of course, with every Tuesday, and if you use the hashtag Taco Tuesday with a Facebook, Instagram, Twitter or any other social media or digital platform, you’ll see this huge spike and you’ll see tons of content put out there by other users.”
Those social media users include NBA superstar LeBron James, well known for his Tuesday Instagram posts celebrating all things taco.
In 2019, James tried to gain a trademark for Taco Tuesday for entertainment purposes, but it was summarily rejected. Not because of the Taco John’s trademark, though. James wasn’t seeking it for a restaurant.
The patent office rejected it for entertainment purposes because it said the phrase is too commonplace for a trademark.
That doesn’t in and of itself mean Taco John’s trademark is invalid. Their trademark really only applies to the restaurant world. But it did lead some media outlets to speculate that Taco John’s trademark can no longer be defended. It also brought a wave of articles by various media outlets opining about the Wyoming taco chain’s trademark as somehow unfair.
Some of this angst may underpin Taco Bell’s legal petition to do away with the trademark. Words in the petition saying Taco Tuesdays “belong to everyone” echo similar sentiments in those articles.
And the two words in fact do belong to everyone — as long as “everyone” is not a restaurant business.
Once a trademark has been in use for five or more continuous years, they are much more difficult to invalidate.
But that doesn’t mean they are immune.
In fact, there is a long list of highly popular products that became so much a part of everyday language that the trademark could no longer be defended. Aspirin, elevator, thermos, hacky sack, wine cooler and even Apple’s “app” store all were once trademarks whose very popularity doomed them.
The legal jargon for this is brand “genericide.” It refers to a brand becoming so generic the trademark can no longer be defended.
Westrum told Cowboy State Daily he believes the Taco John’s trademark is still valid and that customers are aware that Taco Tuesday and Taco John’s just go together.
“Tuesday is typically the best-selling day of the week at our 370 restaurants across 23 states, and we intend to, you know, keep doing that for our fans every Tuesday,” he said. “This has been a big part of our brand ever since we were granted the trademark, all the way back to 1989.”
Contact Renée Jean at Renee@CowboyStateDaily.com