CHEYENNE, Wyo. (AP) 鈥� Taco Bell rang up a win Tuesday in its quest to make 鈥淭aco Tuesday" free of trademark restrictions, with Taco John鈥檚 formally abandoning its decades-old claim to own the phrase amid a challenge from its bigger rival.
In a filing with the U.S. Patent and Trademark Office, Cheyenne-based Taco John鈥檚 gave up any further claim to 鈥淭aco Tuesday鈥� in 49 states, ending a high-profile spat with Taco Bell.
But the dispute looks to keep simmering on the Jersey Shore, where Gregory's Restaurant & Bar in Somers Point promised to keep fighting Taco Bell over the exclusive right to hold 鈥淭aco Tuesday鈥� promotions in New Jersey.
鈥淲e鈥檙e hanging in there. We鈥檙e sticking by our guns,鈥� Gregory's Restaurant & Bar attorney Stephen Altamuro said.
While 鈥淭aco Tuesday鈥� has become a well-known phrase often used at restaurants and elsewhere, Taco John's has worked hard to defend its more than 40-year-old trademark of the term in the 49 states besides New Jersey. The fast food chain sent many cease-and-desist orders over the years to anyone besides Gregory's Restaurant & Bar daring to have a 鈥淭aco Tuesday鈥� promotion.
In 2019, the company went so far as to send a letter to a small brewery just five blocks from its corporate headquarters, using 鈥淭aco Tuesday鈥� to promote a taco truck parked outside on Tuesdays.
Even NBA star LeBron James got in on the action that year, filing unsuccessfully for his own 鈥淭aco Tuesday鈥� trademark.
The disputes culminated with Taco Bell filing with U.S. trademark regulators this May to get Taco John鈥檚 and Gregory's Restaurant & Bar abandon their trademarks, saying the term had become too widely used to belong to any one person or business.
Depriving people of free use of 鈥淭aco Tuesday鈥� would be like depriving them 鈥渙f sunshine itself,鈥� Taco Bell attorneys wrote in a U.S. Patent and Trademark Office filing. Taco John鈥檚, in response, said in part that it didn鈥檛 seek to bar anyone from selling tacos on Tuesdays.
The company's two-page trademark office filing Tuesday didn't give a reason for abandoning the trademark but CEO Jim Creel said in a statement the cost to keep defending it would be better used otherwise.
鈥淲e鈥檝e always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn鈥檛 feel like the right thing to do,鈥� Creel said. 鈥淎s we鈥檝e said before, we鈥檙e lovers, not fighters, at Taco John鈥檚.鈥�
Taco Bell will still have a fight on its hands over 鈥淭aco Tuesday鈥� in New Jersey, where the Gregory's Restaurant & Bar attorney said his client laid claim to the trademark even before Taco John's did in the 1970s. Taco John's and Gregory's Restaurant & Bar agreed to divvy up the trademark between New Jersey and the rest of the U.S. in the 1990s, Altamuro said.
鈥淐learly it鈥檚 David and Goliath. I mean, certainly they bring a lot more resources to the table than we do," Altamuro said of defending the New Jersey trademark against Taco Bell. 鈥淏ut we鈥檙e willing to scrap as much as we need to.鈥�
Taco Bell spokeswoman Richa Anand didn鈥檛 immediately return a social media message seeking comment Tuesday.
Cheyenne-based Taco John鈥檚 got its start as a food truck over 50 years ago. 鈥淭aco Tuesday,鈥� according to Taco John's, began with a franchisee in Minnesota coming up with 鈥淭aco Twosday鈥� to promote two tacos for 99 cents on a slow day of the week.
With more than 7,200 locations in the U.S. and internationally, Taco Bell 鈥� a Yum! Brands chain along with Pizza Hut, KFC and The Habit Burger Grill 鈥� remains much bigger than Taco John's, which has about 370 locations in 23 mainly Western and Midwestern states.
A trademark attorney, Michael Atkins, of Seattle, said the Taco John's decision to not 鈥渢hrow good money after bad鈥� and to finally abandon 鈥淭aco Tuesday鈥� was wise because it has become too commonplace.
鈥淚t was silly for them to try to claim monopoly rights over an ordinary phrase,鈥� Atkins said. "They would鈥檝e lost.鈥�
Mead Gruver, The Associated Press
