When Taco John’s gave up Tuesday on defending its trademark on the phrase “Taco Tuesday,” the announcement came with a significant challenge to YUM! Brands-owned Taco Bell.
Taco John’s announced it will donate $40,000 — $100 per store — to the Children of Restaurant Employees, a nonprofit that helps families facing medical crises. And it challenged Taco Bell, and any other taco joint using the phrase Taco Tuesday in its marketing, to do the same.
“It’s really a great organization, and it’s one that helps those who are out making tacos every day,” Taco Jon’s CEO Jim Creel told Cowboy State Daily.
It appears that Taco John’s challenge may be gaining some traction with Taco Bell.
Mark King, who is Taco Bell’s CEO, told Cowboy state Daily in an email that the company wants to recognize the $40,000 donation Taco John’s is making to the nonprofit.
“We admire this initiative and plan on working with CORE and other organizations to identify how we can drive meaningful change for restaurant employees and their families,” he said.
While that stops short of pledging $100 per store, which would add up to a $720,000 donation for Taco Bell, Creel told Cowboy State Daily he’s glad the much larger rival chain is acknowledging Taco John’s challenge.
“I hope they follow through with it as it was presented to them,” Creel said. “Of course, it would be great if they went above that amount as well! In the end, our most precious resource, the children will be the real winners.”
Taco Bell Pleased With Outcome
Taco Bell also told Cowboy State Daily it’s pleased that Taco John’s has decided to abandon its trademark on the phrase “Taco Tuesday,” calling it a “victory with taco allies everywhere.”
“Taco John’s decision to join the movement and liberate Taco Tuesday means countless businesses big and small, restaurants and taco vendors can now embrace, celebrate and champion ‘Taco Tuesdays’ freely,” King said. “However, celebration is nothing without recognition and reflection. Thank you to the taco fans everywhere who fought by our side, and a thank you to Taco Johns for recognizing what we’ve known all along — when tacos win, we all win.”
Taco John’s announced it would abandon its trademark on the popular catch-phrase Tuesday, saying it just didn’t seem right to spend upward of $1 million defending it.
“You know, LeBron (James) applied for a Taco Tuesday trademark (for the entertainment sector), and what they told him was it’s too generic of a term,” Creel told Cowboy State Daily. “So they wouldn’t give him the Taco Tuesday trademark for that.”
The LeBron ruling may have actually sparked the Taco Tuesday war. Several media outlets, in the wake of that ruling, theorized that the Taco Tuesday phrase had gained too much popularity to be defended any more.
Genericde is the term for it, referring to products whose brand name has become so popular, they’ve become generic. Aspirin, elevator, thermos, hacky sack, Apples “app” store — all of these were once trademarked, but lost them once the terminology became too commonly used.
Taco John’s Will Still Have Taco Tuesdays
While the trademark fight is over, that doesn’t mean that Taco John’s is through with Taco Tuesday. It’s a phrase that’s been at the heart of the Wyoming-based chain’s marketing campaign since at least 1989.
Creel said Taco John’s would continue to use the phrase, and that it will continue its Taco Tuesday everyday campaign through the end of July.
“Even though we don’t have the registration, we can still use it,” Creel told Cowboy State Daily. “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 Taco Bell-instigated trademark tiff, meanwhile, probably had an effect the much larger chain didn’t anticipate. Fans of Taco Johns rallied behind their stores, dramatically increasing business and foot traffic at many of the chain’s stores in the West.
“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.”
Who Really Started Taco Tuesday?
While the origins of the phrase are a bit murky — and precede Taco John’s 1989 trademark — a Minnesota store is credited with bringing the idea to Taco John’s.
David Olsen, who owned the store in Minnesota, was trying to come up with a campaign that would boost sales on what were terrible Tuesday sales.
He’d had some success with “Soft-shell Sundays,” so he started playing around with the word “Tuesday.” He quickly realized that Tuesday also sounded like Twos-Day. Wy not sell two tacos for the price of one on Tuesdays?
And that’s how Taco John’s “Taco Tuesday” was born.
At that time, a single taco was 69 cents, so two for 99 cents was really a great deal. Customers thought so too — the promotion doubled Olsen’s sales in short order.
As word of his successful campaign spread up the corporate ladder, it was a no-brainer to take the idea national. Company executives had been actively looking for a way at the time to unify the chain, which had lots of individual stores doing their own thing.
Eventually, the chain was able to trademark the phrase, even though a New Jersey chain had beaten them to the punch by a few months.
Gregory’s Bar and Restaurant filed for a trademark on the phrase in 1979, but, in 1989, it made a critical error. 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.
There was a legal battle after that, which ended with Gregory’s retaining the right to use the trademark in New Jersey, while Taco John’s had it every where else.
Not Liberating To Gregory
Taco Bell has billed the trademark tiff as “liberating” the phrase for everyone.
“People like tacos on Tuesdays,” Taco Bell’s petition says. “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.”
To the stores being targeted by their much larger rival, however, it’s felt more like being strong-armed out of their trademark.
“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.
For now, money appears to have won the taco war everywhere except New Jersey.
Gregory’s Restaurant and Bar owner, Gregory Gregory, has told reporters he will continue fighting Taco Bell alone to retain the Taco Tuesday trademark, even if it is something of a David vs. Goliath struggle now.
On the restaurant’s website, Gregory notes the restaurant served its first tacos on a Tuesday night in 1979, nearly four decades ago. They’ve been doing that ever since, with more than 2 million tacos sold, and counting.
Renée Jean can be reached at renee@cowboystatedaily.com.
