ALEXANDRIA, Va.—Taco Bell has filed a petition with the U.S. Patent and Trademark office to cancel the trademark “Taco Tuesday,” which is owned by its smaller competitor Taco John’s, reports CNN. Taco Bell believes the phrase “should be freely available to all who make, sell, eat and celebrate tacos.” Taco John’s has owned the trademark for 34 years.
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’ without express permission from [Taco John’s]—simply for pursuing happiness on a Tuesday,” the filing said.
Taco Bell added that “nobody should have exclusive rights in a common phrase.”
Maggie Mettler, director of legal for Taco Bell’s parent company, Yum! Brands, told CNN that it’s using the trademark law to “remedy this injustice.”
“It’s a bold brand action that we hope others are willing to support,” Mettler said.
Taco Bell is filing the petition with the Trademark Trial and Appeal Board, and the board can take up to two years before it issues a decision. Taco John’s has 40 days to file a response, and if the restaurants do not agree, the case will move to a discovery period where each company can make document requests and present evidence stating their case. After that period, there would be a trial and oral arguments presented in front of the board’s judges.
According to trademark attorney Josh Gerben, Taco Bell has a “strong case” because US trademark law “prevents the registration of common phrases or phrases that become commonplace after a registration is granted.” The phrase “has become a cultural phenomenon with a long history of being used by individuals and companies other than the current owner of the trademark,” he told CNN.
Although Taco John’s invented the phrase, that may not be a strong enough defense, Gerben told CNN. The “Taco Tuesday” phrase is “widely used by Americans in a way that has nothing to do with the defendant’s restaurant,” he added.
Taco John’s trademarked the phrase in 1989 after using “Taco Tuesday” to entice sales of its 99-cent tacos on its slowest day of the week. Taco John’s has sent cease-and-desist letters to others trying to use it.
“Over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies,” former Taco John’s marketing executive Billie Jo Waara said in a 2016 interview. “We also recognize that the unauthorized use [of Taco Tuesday] is prolific, and we do our best to communicate ownership.”
“Taco Bell has not reached out to us, so we have no comment on any possible trademark action,” Taco John’s said in a statement. “Taco John’s would like to thank our worthy competitors at Taco Bell for reminding everyone that ‘Taco Tuesday’ is best celebrated at Taco John’s—the trademark owner of Taco Tuesday.”