The Taco Tuesday war is over, and on a Tuesday no less.
Taco John’s announced Tuesday that it’s throwing up a white flag in the fight for its longstanding trademark on the popular phrase “Taco Tuesday.”
The fight for the trademark began on a Tuesday in May, when Taco Bell filed a petition — which read more like a publicity stunt — seeking to cancel its much smaller rival’s 34-year-old trademark on the phrase, “Taco Tuesday.”
Taco John’s representatives initially told Cowboy State Daily they would defend Taco Tuesday to the last, but CEO Jim Creel told Cowboy State Daily on Tuesday that the legal cost of defending the popular phrase was the main factor in the Wyoming-based company’s decision to abandon it instead.
“The price tag’s up around a million dollars,” Creel said. “We just don’t feel like that’s a good expenditure of funds.”
Creel also mentioned LeBron James’ effort a few years ago to trademark Taco Tuesday in the entertainment sector, which was rejected as “too generic” by the U.S. Patent Office.
That rejection had many speculating that the Taco Tuesday trademark owned by Taco John’s had become too popular to defend.
The term for that is genericide, and it’s happened to lots of highly popular products. Aspirin, elevator, thermos, hacky sack and even Apple’s “app” store all were once trademarks that were done in by their own popularity.
Donations Instead
Instead of spending millions in legal fees defending a trademark that has become popular around the world, Taco John’s is instead going to donate $40,000 — $100 for each of its 400 stores — to Children of Restaurant Employees. The nonprofit helps families that have children and are facing a health crisis or life-threatening injury.
Creel said Taco John’s also is challenging other restaurants that want to use Taco Tuesday in their marketing to also contribute $100 per store to the nonprofit.
“It’s really a great organization, and it’s one that helps those who are out making tacos every day,” Creel said.
If Taco Bell were to honor Taco John’s challenge, that donation would tally up to $720,000.
“(That’s) less than they’d have to spend in a legal battle for the mark,” Creel said. “We also invite Del Taco, Taco Beuno, Taco Cabana, Jack In The Box, and mom and pop taco shops across the country that intend to use Taco Tuesday in the future to join us in this movement to support working families and donate to CORE.”
Taco Bell did not immediately respond to a Cowboy State Daily phone call or email message for comment.
Marketing Success
The trademark fight may be over, but that doesn’t mean Taco John’s is through with Taco Tuesday. The phrase has been at the heart of the Wyoming-based chain’s marketing campaign since at least 1989.
Creel said Taco John’s will continue to honor its Taco Tuesday every day special through the end of July, which was begun in May shortly after Taco Bell filed its petition to cancel Taco John’s registration, as well as that of a small, rival bar in New Jersey that owns the trademark in that state.
Taco John’s will continue using the phrase as part of its own marketing campaigns in the future, Creel said.
“Even though we don’t have the registration, we can still use it,” Creel said. “And people know Taco John’s was the home of Taco Tuesday, so, it will be business as usual from that standpoint.”
Publicity surrounding the trademark tiff, meanwhile, has had an effect Taco Bell probably didn’t anticipate. Business at Taco John’s franchises went up — dramatically in some cases.
“A couple of the franchises in Wyoming saw double-digit sales increases,” Creel told Cowboy State Daily. “Especially in those areas where we have a lot of fans, Taco John’s fans, and it’s continued. Our sales remain positive from this whole experience and hopefully will continue.”
New Jersey Store Vows To Fight On
While Taco John’s has held the franchise in most of the United States, there is one exception. A restaurant and bar in New Jersey owns a trademark on the phrase in that state.
Taco Bell filed a separate petition to cancel that registration in May, the same day it filed to cancel Taco John’s trademark everywhere else.
The owner of the restaurant, which is called Gregory’s, told Reuters he has no plans to give up the trademark at this time, and he plans to keep fighting for it.
While Taco Bell has claimed it wants to “liberate” the phrase for everyone, the stores that are being targeted by the campaign of a much bigger rival see it a bit differently.
“Really, they just want to put millions of advertising behind it to appropriate it as their own,” Taco John’s spokesman Barry Westrum told Cowboy state Daily when the petition was first filed.
Renée Jean can be reached at renee@cowboystatedaily.com.
