“Taco Tuesday” Trademark War Ends After Taco John’s Surrenders to Taco Bell

Taco John’s said they will no longer duke it out over their “Taco Tuesday” trademark phrase because the regional chain doesn’t want to fork over the legal fees that come with its fight against Taco Bell.

“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,” Taco John’s CEO Jim Creel said in a released statement.

In May, the company’s rival, Taco Bell, filed a petition with the US Patent and Trademark Office to cancel Taco John’s trademark, which it has owned for 34 years. Taco Bell claimed the commonly used phrase “should be freely available to all who make, sell, eat, and celebrate tacos.”

Instead of spending money on legal fees, Creel announced that Taco John will donate $40,000 ($100 per its roughly 400 locations) to Children of Restaurant Employees (CORE).

CORE is a nonprofit organization that “supports restaurant workers with children by providing financial relief when either the employee, spouse or a child faces a life-altering health crisis, injury, death or natural disaster,” Taco John’s added in its statement.

Taco John’s has owned the trademark in every state except for New Jersey since 1989. The fast-food chain has used the phrase in its marketing campaigns and has defended its use of the phrase by sending out cease-and-desist letters to others trying to use it, CNN reported.

That move didn’t sit well with Taco Bell, and the company argued that “nobody should have exclusive rights in a common phrase” and that any restaurant should be able to use it.

Josh Gerben, a trademark attorney, told CNN that Taco John’s decision to abandon the phrase is “not surprising” because the “phrase became ubiquitous in the marketplace and any attempt to enforce the trademark registration would likely have failed in court.”

“Therefore, the trademark registration had little, if any, value left at this point in time,” he said. “If the case was litigated to the end, Taco John’s could have suffered a significant public-relations loss. By bowing out of the court fight at this point, given the low probability of winning, Taco John’s can work to control the court of public opinion around the issue. “