Taco Bell Defy tests the future of fast food with ‘tacos from heaven’
The smaller brand said it would abandon the service mark it has through the US Patent and Trademark Office, citing the cost of legal fees to fight the mega-chain.
“We’ve always been proud to be the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our brand just doesn’t feel like the right thing to do,” Taco John’s CEO Jim Creel said in a statement.
In a strange arrangement dating back decades, Taco John’s had held the rights to the phrase in every state except New Jersey, where the Gregory’s restaurant still holds the honor. In May, Taco Bell had filed two petitions with the patent office to revoke these exclusive rights.
“Taco Bell believes ‘Taco Tuesday’ is essential to everyone’s Tuesday,” the company’s filing with the US Patent and Trademark Office states. “Depriving someone of saying ‘Taco Tuesday’ — be it Taco Bell or someone who gives tacos to the world — is like depriving the world of sunshine itself.”
Taco John’s, which operates more than 370 restaurants nationwide, sought to turn the end of the potential legal battle into a public relations victory. The company announced that it would use money it would have given to its lawyers on a charitable donation, giving $40,000 to the non-profit organization Children of Restaurant Employees, which supports workers and their families through health crises and natural disasters. It also brazenly challenged Taco Bell and others who would use the phrase — which it called “our illegal competitors” — to make similar gifts.
A Taco Bell representative did not immediately respond to a request for comment.
The ploy seemed to be working, with fans praising the company on social media. “Sad to see Taco Bell win, but love that you’re classy about it. :-)”, one tweeted. “Taco John for the win!” wrote another.
Taco John’s also invited/shamed NBA star LeBron James, who has appeared in Taco Bell ads, to donate the fees he received for the endorsement.
Some experts had doubted whether Taco John’s, which had previously defended its rights to the term, would ultimately prevail. Under trademark law, ubiquitous terms cannot be owned by anyone, said Maggie Mettler, legal director of Yum Brands, Taco Bell’s parent company. Terms such as escalator, aspirin and yo-yo became so common that their trademarks were cancelled.
The term was born in 1979, when Taco John’s franchisee Dave Olsen, in St. Paul, Minn., figured out a way to boost business on a typically slow day. Since then, its use has spread, with cafeterias and other restaurants adopting it to promote their offerings. The hashtag #TacoTuesday is trending on social media, and a search for the phrase on Etsy will bring up countless T-shirts, candles, and even neon signs.
Taco John’s said it would continue to offer its “Taco Tuesday” special, $2 for two tacos, making it a daily deal through the month. “Although the registration symbol will be gone, Taco John’s will always be the home of Taco Tuesday to its legions of fans across the nation,” the statement said.