The fight for the “Taco Tuesday” trademark is getting spicy.
Taco Jones, a regional chain, has responded to Taco Bell’s efforts to free up the phrase so anyone can use it.
On Friday, responding to Taco Bell’s petition to “cancel” its trademark, Taco John’s parent company Spicy Seasonings denied that it had “anything untoward” about the phrase. The Wyoming-based company said Taco Bell’s lawsuit is “full of sentimental statements that require no response. Tuesday is the middle day of the week.”
Last month, Taco Bell filed a petition with the U.S. Patent and Trademark Office to cancel the 34-year-old trademark owned by rival Taco Jones because Taco Bell’s commonly used phrase “should be freely available to all who make, sell, eat, and enjoy tacos.” Because Taco Jones owns the trademark, other restaurants and companies must request permission to use “Taco Tuesday” in branding and advertising.
“Taco Bell and anyone who wants to share tacos with the world can use the phrase ‘Taco Tuesday’ without express permission and may receive angry mail.” [Taco John’s] – simply to follow the joy of Tuesday, “said the first file.
In response, Taco Johns said it “has the right to enforce its trademark rights against infringers and alleged infringers, including Taco Bell.” Spices and their licenses… defy every American ideal they have created in the last forty-four years.
According to trademark attorney Josh Gerben, the case has now come to fruition after Taco Bell scored a well-coordinated takedown press victory.
The next step in the legal process is the discovery phase and a possible move by Taco Bell “to conduct a survey to find out which American people associate Taco Tuesday” with Taco Jones or the Gregory Hotel, the owner of the trademark in New Jersey, “the phrase more generally associated with eating tacos on Tuesdays.” It’s a habit,” he said.
Gerben expects Taco Jones and Gregory Hotel to conduct their own investigation into whether or not Taco Bell is “trying to help other restaurants or celebrities use Taco Tuesday to infringe on their trademark rights.” survey.
Regardless, a resolution is imminent as Gerben will not settle and the legal process could take two years.
“This is not going to be something that Taco Bell can claim victory in anytime soon,” he said.