Published August 16, 2023

TACO TUESDAY is officially free!  In May 2023 Taco Bell filed a Cancellation action with the Trademark Trial and Appeal Board and launched a star-studded ad campaign claiming that the registered TACO TUESDAY trademark should be cancelled so everyone could freely use it.  On July 18, owner of the TACO TUESDAY registration, Taco John’s, instead of fighting the cancellation, is giving up its registration – which, of course, was announced on a Tuesday.

Instead of sinking money into the legal fees to keep the mark, Taco John’s instead published it would be pledging $100 per location, or about $40,000, to the nonprofit Children of Restaurant Employees (CORE), which provides financial aid to restaurant workers when they, a spouse or their children face a life-altering crisis.  In doing so, it challenged Taco Bell and its competitors to do the same, and “put its money where its mouth is.” 

The official Taco John’s Twitter account tweeted on Tuesday:

Hey @tacobell …you’re getting your wish! You can celebrate Taco Tuesday now without any pushback from us. And we’re hoping you’ll put your money where your mouth is and join us in contributing to @COREGives 🌮🌮🌮

While it was likely a difficult decision for Taco John’s to surrender the registration, from a trademark standpoint, this was likely the right call.  Given the mountain of evidence showing pervasive use of the term TACO TUESDAY in the market, it would have been an Everest-level undertaking to overcome – both in time and legal fees.  Sometimes, the return on the investment just isn’t worth it.

What can businesses learn from this situation?  Companies everywhere need to have comprehensive trademark monitoring and enforcement strategies from day one.  This situation demonstrates what can happen when use by third parties goes unchecked for extended periods of time in the market.  Trademark rights get gradually chipped away –known as dilution – and cause serious problems later and ultimately impact the bottom line.  So if you see others using your company’s marks in commerce, don’t sit around and hope it goes away, take action, and put your dollars where your marks are.

Melissa H. Gray

Written by Melissa H. Gray

Founder of Melissa H. Gray PLLC & The Law Spot

The Law Spot

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