Going up against its much larger rival, Taco John's issuedits formal response to U.S. officials last week as Taco Bell attempts to pry the "Taco Tuesday" trademark from the smaller chain.
Taco Tuesday has long been trademarked by Taco John’s, a chain of fast food restaurants mostly located in the Midwest and Rocky Mountains. The restaurant chain has held the trademark on the name since 1989, but used the term for several years prior.
But the much larger brand Taco Bell said it wants to “liberate” the trademark so it and other restaurants can freely promote the day without infringing on the trademark. Last month, Taco Bell filed a petition with the U.S. Patent and Trademark Office to end Taco John’s trademark of the phrase.
Taco John's parent company Spicy Seasonings, LLC, issued its formal response last Friday. In its response, Taco John's says just because a trademark is fun to say "does not constitute a legal basis to cancel a trademark that has been registered with the USPTO for 34 years."
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In its original filing, Taco Bell said the fact that Taco John's owns the Taco Tuesday trademark is "not cool."
Taco John's responded by saying it "denies that there is anything 'not cool' about independently creating a trademark over 40 years ago and obtaining a registration for that trademark with the United States Patent and Trademark office."
In the tit-for-tat filings, Taco Bell said it "simply seeks reason and common sense." Taco John's responded by denying "any allegation that it is not reasonable and does not have common sense."
In Taco Bell's original legal filing, it claimed the term "Taco Tuesday" is used as a generic term for "promotions, deals, coupons, and other incentives for purchasing tacos and related products on Tuesdays." It added the term is "used ubiquitously by restaurants throughout the United States in a generic and informational manner to promote the sale and/or consumption of tacos and related products on Tuesdays."
Taco John's said it recognizes that there are more infringers of the Taco Tuesday trademark than it can send cease-and-desist letters to.
Taco Bell alleged that because of Taco John's "failure or inability to adequately police" the Taco Tuesday trademark, its ownership of the phrase should be abandoned. Taco John's denied the allegations.
Shontavia Johnson, associate vice president for entrepreneurship and innovation at Clemson University, told Scripps News that Taco John’s has done everything correctly by filing a trademark for the phrase; but that sometimes, usage of words or phrases can grow beyond the scope of a trademark.
“If you think about words that we all know — escalator, aspirin, yo-yo — those started out as trademarks, too, that now are owned by everyone because the companies and those brands got so big that people started using the phrase not in the trademark sense but just to refer to, in the escalator case, moving stairs or, with yo-yos, of little toys that go up and down,” Johnson said.
