‘Taco Tuesday’ Trademark Fight Ends with a Charitable Challenge

By K.L. McQuaid

Special to the Wyoming Truth

Cheyenne-based Taco John’s International Inc. is relinquishing its long-held “Taco Tuesday” trademark to avoid a costly and protracted battle with its much-larger rival Taco Bell, which in May had petitioned the federal government to cancel the regional restaurant chain’s registration.

In abandoning a fight over the phrase in the U.S. Patent and Trademark Office last week, Taco John’s will avoid spending as much as $1 million to defend the trademark, which it had owned since December 1989 and which applied to every state in the U.S. except New Jersey.

“When we looked at what it would cost to defend the Taco Tuesday trademark, we frankly just didn’t see a lot of value in that,” Taco John’s CEO Jim Creel told the Wyoming Truth on Monday.

Instead, Taco John’s is donating $40,000 – $100 for each of its roughly 400 restaurants in 21 states – to Children of Restaurant Employees (CORE), a Brentwood, Tennessee nonprofit formed in 2004 to benefit service workers with children in the wake of health crises, injuries and death or natural disasters.

CORE’s website states that the majority of its grant recipients are single mothers.

Taco Bell claimed in its petition to cancel Taco John’s trademark that “Taco Tuesday” had become a generic phrase. U.S. trademark law states that no common phrase can be trademarked, even if it had been previously registered for protections.

The subsidiary of Yum! Brands – owner of KFC, Pizza Hut and 7,200 Taco Bell outlets in the U.S. – also compared its inability to freely use the phrase with “depriving the world of sunshine.”

“Not cool,” Taco Bell wrote in its petition.

The chain also enlisted Los Angeles Laker star, patent holder and taco enthusiast LeBron James, who had tried unsuccessfully to trademark “Taco Tuesday” in 2019, into filming a commercial endorsing Taco Bell’s “liberation” campaign.

Taco John’s, in response, argued that Taco Bell’s motivation was less about liberating a phrase and more about selling more tacos. The trademark didn’t interfere with Taco Bell’s abilities to sell or market its food, it noted.

With the ceasefire now in place, Taco John’s has challenged Taco Bell and smaller rivals Del Taco, Taco Bueno, Taco Cabana, Jack In the Box and scores of mom-and-pop eateries to match its $100-per-restaurant pledge to CORE.

In a statement, Creel noted that Taco Bell’s $720,000 donation would be less than it would spend fighting the “Taco Tuesday” trademark case.

Efforts to reach Taco Bell or Yum! Brands were unsuccessful, but in response to the challenge, Taco Bell took to Twitter and noted that Taco John’s had done “the right thing, and we will too.”

Taco John’s also is asking James to donate the money he made from the commercial to CORE.

“We hope the challenge brings millions of dollars to that organization,” Creel said.

Sheila Bennett, CORE’s executive director, said in a statement that the donation will help restaurant and other service workers and their families in their “darkest hours.”

Like Creel, she hopes Taco Bell and others will step up to the challenge.

“The need is great,” she said.

Creel, who last year was named one of the “Most Influential Restaurant CEOs in the Country” by Nation’s Restaurant News, a trade publication, also applauded Wyoming residents for their support during the standoff.

“They really came out strong and supported us,” said Creel, who has worked for Taco John’s since 2000.

In parts of the Cowboy State, where Taco John’s was founded in 1969, sales rose by as much as 20% following Taco Bell’s move to cancel the trademark. Sales were up by a double-digit margin overall chainwide, Creel said. Taco John’s generates about $450 million in revenue annually.

To express its thanks chainwide, Taco John’s is offering customers two tacos for just $2 until the end of this month through its app.

Creel adds that even without the trademark protection, Taco John’s will continue to use “Taco Tuesday” in its marketing.

“A lot of Midwesterners associate Taco Tuesday with Taco John’s,” he said.

Creel acknowledged, too, that he’s still reeling somewhat from news headlines that claimed Taco John’s had “surrendered” or that Taco Bell was “victorious.”

“It was sad to read that Taco Bell won,” he said. “That missed the whole point. The point was we were willing to give up the trademark to be human and to help stop the madness of litigiousness that has become so rampant in our society.”

He laments, as well, that no one from Taco Bell reached out before filing its petition two months ago.

The David-Vs.-Goliath corporate fight behind it, Creel said the chain plans to focus on opening new stores – nearly two dozen additional outlets are slated to debut in 2023 – and build on its Top 10 ranking as a Mexican food franchise by Entrepreneur magazine.

“In the end I feel fortunate to be in Wyoming, which remains the kind of place where business people still pick up the phone and have a conversation before getting their attorneys involved in disputes,” he said.