TACO TUESDAY Trademark Battle Settled with PR Stunt

The Taco John’s restaurant chain announced Tuesday that it will share its Taco Tuesday trademark, but also posed a challenge to Taco Bell and LeBron James “to Support Workers, Not Lawyers.”

Taco Bell filed a Petition for Cancellation of the trademark for TACO TUESDAY on May 16, 2023. The mark was registered by Spicy Seasonings, LLC, which operates the Taco John’s restaurant franchise, in 1989 for “restaurant services.” Soon after, NBA star LeBron James joined Taco Bell’s fight by starring in a commercial where he was bleeped each time he uttered the phrase “Taco Tuesday.” James applied for a trademark registration on Taco Tuesday himself in 2019 for advertising and marketing services, podcasting services, and entertainment services. His application was rejected by the U.S. Patent and Trademark Office (USPTO) because “the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.”

In a press release issued Tuesday, Taco John’s said it will abandon the registration for TACO TUESDAY. “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,” said Taco John’s CEO Jim Creel.

Instead, Taco John’s challenged Taco Bell and James to donate money to Children of Restaurant Employees (CORE), a nonprofit organization to which Taco John’s said it will be donating $40,000. “As we’ve said before, we’re lovers, not fighters, at Taco John’s. So in that spirit, we have decided to begin sharing Taco Tuesday with a pledge to contribute $100 per location in our system to restaurant employees with children who are battling a health crisis, death or natural disaster. And we’re challenging our litigious competitors and other taco-loving brands to join us in supporting the people who serve our favorite food to guests across the nation.”

If Taco Bell were to match Taco John’s $100 per location pledge the total donation would be about $720,000, said the press release. “[W]hich is less than they’d have to spend in a legal battle for the mark.”

Taco John’s also challenged other popular taco chains, including “Del Taco, Taco Bueno, Taco Cabana, Jack In The Box and mom and pop taco shops across the country” to donate to CORE. And it pressed James to donate “any fees he received from the latest multi-million-dollar Taco Bell Taco Tuesday ad campaign to CORE.”

While the restaurant will no longer own the trademark, Taco John’s said it “will always be the home of Taco Tuesday to its legions of fans across the nation.”

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Author: wolterke