Taco Bell wins battle to ‘liberate’ Taco Tuesday trademark held by competitor and small business

Taco Bell “liberated” the phrase Taco Tuesday, after competing fast-food chain Taco John’s told the U.S. Patent and Trademark Office (USPTO) it would abandon its federal Taco Tuesday trademark in 49 states.

The fast-food giant, with $2 billion in annual sales, filed a petition in May with the U.S. Patent and Trademark Office seeking to cancel the trademark, which is held by Taco John’s in 49 states and Gregory’s Bar in Somers Point, New Jersey, which has the rights in New Jersey.

Taco Bell publicized its petitions to cancel the Taco Tuesday marks as part of a marketing campaign, claiming it wanted to “liberate the phrase for restaurants nationwide.”

“Taco Bell is not trying to take over the trademark. Quite the opposite–Taco Bell is trying to get rid of the trademark registrations,” the fast-food restaurant said in a press release. “Taco Bell believes that all across the nation should be able to celebrate Taco Tuesday, without fear of consequences. This is why Taco Bell has sought to cancel the trademark registrations and free Taco Tuesday for all.”

TACO BELL AIMS TO CANCEL ‘TACO TUESDAY’ TRADEMARK HELD BY COMPETITOR AND SMALL BUSINESS: ‘WE ALL WIN’

Marketing materials and the multiple petitions for Taco Bell’s “Liberation Of ‘Taco Tuesday’” campaign, state that canceling the trademark registrations associated with the phrase will help mom-and-pop restaurants and taco vendors in that it will stop Taco John’s and Gregory’s Restaurant & Bar from being able to send cease-and-desist letters, or have a chance to sue if the phrase is used for business purposes.

Now, the catchy phrase is free to use in every state- but New Jersey. 

Gregory’s Bar co-owner Gregory Gregory told Reuters he did not have plans to give up its trademark, and he was “shocked” that Taco John’s had abandoned its mark so soon. 

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The restaurant in New Jersey, opened in 1946 and started using the phrase in 1979 to encourage sales. The small business trademarked Taco Tuesday in 1981 and later defended its trademark against Taco John’s, according to Smith & Hopen, a patent and trademark law firm in Oldsmar, Florida.

Taco Bell’s competitor Taco John’s chief executive, Jim Creel, told the Wall Street Journal that defending the trademark could cost as much as $1 million. 

Instead, Creel said that Taco John’s would donate $40,000 to Children of Restaurant Employees, a nonprofit group.

“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,” Creel said in a statement.

Taco Bell did not immediately respond to Fox New Digital’s request for comment.

Fox News’ Cortney Moore and Reuters contributed to this report.