Taco Bell wins ‘Taco Tuesday’ trademark dispute with rival chain

July 18 (Reuters) – Yum Brands’ (YUM.N) Taco Bell prevailed on Tuesday in its self-described bid to “liberate” the phrase “Taco Tuesday,” as competing fast-food chain Taco John’s told the U.S. Patent and Trademark Office (USPTO) it would abandon its federal “Taco Tuesday” trademark.

Taco Bell had asked the USPTO in May to cancel the trademark, calling it a common phrase that Taco John’s had monopolized unfairly in the restaurant industry.

In a statement, Taco John CEO Jim Creel said: “We’ve always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do.”

He said the Cheyenne, Wyoming-based chain would instead donate $100 for each of its nearly 400 locations to a nonprofit for restaurant workers in crisis, and challenged Taco Bell to do the same.

Taco Bell has more than 7,200 locations in the U.S., according to Yum Brands’ website.

Representatives for Taco Bell did not immediately respond to a request for comment on the Tuesday filing.

Taco John’s owned the right to use the “Taco Tuesday” name in commerce in every state except New Jersey, where it is still owned by Gregory’s Restaurant & Bar in Somers Point.

A separate Taco Bell challenge to that trademark is still pending. The restaurant’s co-owner Gregory Gregory told Reuters he did not have plans to give up its trademark and he was “shocked” that Taco John’s had abandoned its mark so soon.

Taco Bell publicized its petitions to cancel the “Taco Tuesday” marks as part of a marketing campaign, claiming it wanted to “liberate the phrase for restaurants nationwide.”

Taco John’s told the USPTO last month that Taco Bell was only seeking to sell more tacos, and that its mark did not prohibit anyone “from advertising and selling tacos on Tuesday.”

Reporting by Blake Brittain in Washington, D.C;
Editing by David Bario and David Holmes

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