Most everyone is familiar with the term “Taco Tuesdays.” Restaurants and food trucks across the country have their own Taco Tuesdays every week. But who can legally use the term?
That’s been the subject of dispute over the years. Even basketball great LeBron James has gotten into the fray.
Taco John’s vs. Taco Bell (and LeBron)
Back in 1989, a chain of Mexican restaurants called Taco John’s trademarked Taco Tuesday in 49 states after the original holder of the trademark failed to renew its rights to it. Taco John’s is the only one legally allowed to place the registered trademark sign after it.
The much more famous and ubiquitous fast-food enterprise Taco Bell, however, has announced that it is petitioning the U.S. Patent and Trademark Office (USPTO) to cancel the trademark registration. It’s even launched a campaign called “Freeing Taco T***day,” claiming that the phrase belongs to everyone.
LeBron James has joined forces with Taco Bell to “liberate” Taco Tuesday. He is featured in a new ad campaign and said in a statement, “‘Taco Tuesday’ is a tradition that everyone should be able to celebrate. All restaurants, all families, all businesses – everybody…. and it’s a celebration that nobody should own.”
You may remember that James tried to trademark the phrase several years ago after his family’s own “Taco Tuesdays: became Instagram favorites – complete with t-shirts. He reportedly wasn’t trying to keep the name for himself but to avoid being sued. The USPTO, however, denied his application.
Meanwhile, Taco John’s is making the most of the free publicity. It also seems to be serious about maintaining its rights to the phrase. Its CEO said in a statement that “when a big, bad bully threatens to take away the mark our forefathers originated so many decades ago, well, that just rings hollow to us. If ‘living más’ means filling the pockets of Taco Bell’s army of lawyers, we’re not interested.”
The matter may not be decided any time soon
Taco Bell’s petition to cancel the registered trademark is in the hands of the USPTO’s Trademark Trial and Appeal Board. The board has up to two years to make a decision.
Trademark law, like all intellectual property law, is extremely complex and specialized. Whatever side of a trademark dispute you’re on, you should never try to handle it yourself. Experienced legal guidance can make all the difference.