‘Taco Tuesday’: Is it time to terminate trademark?

Many people were surprised to learn that the phrase “Taco Tuesday” — common in everyday language and often trending on social media — has been trademarked.

Now, Taco Bell — a heavyweight in the Mexican food space — has petitioned the U.S. Patent and Trademark Office (USPTO) to rescind the trademark, and a University of Minnesota professor thinks the restaurant chain has a point.

“Taco Tuesday” is an American custom where people eat — either at home or in a restaurant — tacos on Tuesday. It is not uncommon to hear a restaurant, or an individual on social media, reference the phrase in connection with taco consumption. It came as a surprise to many Americans, then, that the phrase was trademarked by Taco John’s, a Wyoming-based Mexican food chain.

Taco John’s alleges it has used the phrase “Taco Tuesday” since 1982, holding a registered trademark since 1989. It holds that trademark in 49 out of 50 states. The only state in which it does not hold a trademark is New Jersey. Gregory Gregory, who owns Gregory’s Restaurant & Bar, received a trademark in New Jersey for the phrase in 1982.

On May 16, 2023, Taco Bell filed a petition with the USPTO to cancel Taco John’s trademark. “The use of the phrase ‘potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say, ‘Taco Tuesday,’” the filing said.

The filing made national headlines. The following week, Taco Bell doubled down by teaming up with an unlikely partner: basketball superstar LeBron James. James has used the phrase “Taco Tuesday” on his personal social media accounts for years. He even attempted to trademark the phrase “Taco Tuesday” back in 2019 but failed. Part of the reasoning the USPTO examining attorney used in the declined trademark filing was that the mark was deemed a “commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment” — words that may ultimately support Taco Bell’s case.

On May 22, during an NBA playoff game between the Lakers and Nuggets, the company aired a commercial starring James in which he says the phrase “Taco Tuesday” but the “Tuesday” part is bleeped out. “Everyone should be able to say and celebrate Taco —–,” James implores. At the end of the ad, James informs the public that Taco Bell is taking a stand and refers viewers to a Change.org petition. It has a little more than 3,000 signatures at the time of publication. The petition alleges that the phrase “should be freely available to all who make, sell, eat and celebrate tacos.”

William McGeveran, Gray, Plant, Mooty, Mooty & Bennett Professor of Law at the University of Minnesota Law School, weighed in on the fast food chain’s attempts to strip Taco John’s of the trademark.

“A trademark is supposed to receive legal protection only if consumers continue to associate it with a particular source of goods and services,” McGeveran informs. “When a term becomes generic or merely descriptive, it no longer does that. Many former trademarks have lost protection because they became generic terms — famous examples include aspirin, thermos, and escalator.”

A quick search for restaurants offering Taco Tuesday specials yields many results that do not involve Taco John’s. “The fact that so many other restaurants use “Taco Tuesday” suggests that the mark may already be generic,” McGeveran notes.

Although the phrase has been used openly without enforcement in every single instance, Taco John’s has defended it. In 2010, Taco John’s threatened Iguana Mexican Grill in Oklahoma. In 2016, it sent a cease and desist notice to Old Fashioned Tavern and Restaurant in Wisconsin.

Still, the efforts to prevent others from using the phrase is not outcome-determinative, according to McGeveran. “Taco John’s has tried to stop others from using it, especially by having their lawyers send cease-and-desist letters,” McGeveran says. “But the real question isn’t whether they have tried to maintain the connection of the mark to their business, it is whether they have succeeded in getting consumers to think that way.”

Taco John’s has 40 days to file a response. Absent an agreement, there would be discovery and a trial. A decision could take up to two years.

McGeveran is not sure whether a court will find in favor of Taco Bell. “It is hard to say,” McGeveran admits. “Courts are often reluctant to declare marks generic. It will depend on the evidence. But I suspect this may be an example of a generic term for future trademark professors.”

However, McGeveran leans in favor of Taco Bell. “The question is whether consumers really associate Taco Tuesday with Taco John’s in particular, or just see it as a common description of a promotion for Mexican food that any restaurant might use,” McGeveran asserts. “I strongly suspect it is the latter, and that is what Taco Bell is arguing. If so, then the trademark registration should be canceled.”