Left: Gregory Gregory, owner of Gregory’s Bar & Grill (screengrab via Facebook); Right: A sign hangs at a Taco Bell. (AP Photo/Gene J. Puskar).
Despite Taco Bell‘s demand that trademark holders “liberate” the phrase “Taco Tuesday,” one Jersey Shore bar is refusing to back down. Gregory’s Bar& Grill in Somers Point, New Jersey, touts itself as “the birthplace of Taco Tuesday,” and registered the trademark decades ago.
Taco Bell Corp. filed a petition in May asking the U.S. Trademark Office to cancel the trademarks to “Taco Tuesday” held by Taco John’s, a Wyoming restaurant that held the trademark in 49 states, and Gregory’s, which is the exclusive trademark holder in New Jersey.
The fast-food giant explained its own magnanimous reasoning in an unusually casual statement of facts:
People like tacos on Tuesdays. They just do. It’s even fun to say: “Taco Tuesday.” Tacos have the unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week. But since 1989, entities associated with Registrant have owned a federal trademark registration for “Taco Tuesday.” Not cool.
Taco John’s capitulated to Taco Bell’s demand and relinquished its trademark rights in “Taco Tuesday” in early July. The restaurant’s CEO Jim Creel said the choice was made with an eye toward minimizing potentially substantial legal costs.
Taco Bell CEO Mark King called development “a shared victory with taco allies everywhere” in an email to Law&Crime Monday. King continued:
Taco John’s decision to join the movement and liberate Taco Tuesday means countless businesses big and small, restaurants, and taco vendors can now embrace, celebrate and champion ‘Taco Tuesdays’ freely. However, celebration is nothing without recognition and reflection. Thank you to the taco fans everywhere who fought by our side, and a thank you to Taco Johns for recognizing what we’ve known all along — when tacos win, we all win.
“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. The company also pledged to donate to an organization that supports restaurant workers — and followed the promise with a challenge of its own, asking Taco Bell to make a donation of the funds that would have gone to a legal battle.
Let’s see if our friends at Taco Bell are willing to “liberate” themselves from their army of lawyers by giving back to restaurant families instead. We challenge them to match our $100-per-restaurant pledge – that’s about $720,000 – which is less than they’d have to spend in a legal battle for the mark. We also invite Del Taco, Taco Bueno, Taco Cabana, Jack In The Box and mom and pop taco shops across the country that intend to use Taco Tuesday in the future to join us in this movement to support working families and donate to CORE.
Gregory’s, owned by Gregory Gregory, filed an answer to Taco Bell’s petition to defend its intellectual property.
Gregory says the restaurant has been using the phrase since 1979 after he discovered tacos in a Philadelphia food court and started serving them along with salsa created from a recipe from an old Playboy magazine. Gregory was officially granted the service trademark for “Taco Tuesday” in 1982 by the United States Patent Office.
Gregory told press that he uses Taco Tuesday events at his restaurant to raise money for local charities and hopes to continue to fight for the right to use the phrase.
Under federal trademark law, a person who fails to take necessary steps to prevent or challenge infringement of their mark risks losing the legal right to the mark. Accordingly, Gregory says he has defended his trademark in New Jersey in several times in the past through the use of private correspondence or cease and desist letters. However, the battle over “Taco Tuesday” is the first time Gregory has been involved in formal litigation over the matter.
“This has really become David and Goliath now,” said Gregory about the battle waged by Taco Bell.
While Taco Bell’s attempt to “liberate” the phrase “Taco Tuesday” has been criticized by some as a public relations or marketing move, the underlying legal issue is a rather nuanced one. The U.S. Patent and Trademark Office considers the relative strength of various trademarks and generally, the weaker the trademark, the less legal protection it is afforded.
Strong trademarks include invented words — such as Pepsi or Exxon — or arbitrary words that are unrelated to the products they describe, such as Apple computers or Camel cigarettes. Less protectable are “suggestive trademarks,” in which the words are loosely related to the underlying product or service, such as Coppertone sunscreen or the Netflix streaming service.
By contrast, “descriptive” or “generic” trademarks are not registrable with the USPTO. These include words that merely describe goods or services without identifying the specific source, such as “Creamy Yogurt,” “Bagel Shop,” or “E-ticket.”
Taco Bell seized on this very concept in its petition, arguing that “‘Taco Tuesday’ is a common phrase.”
“Nobody should have exclusive rights in a common phrase,” Taco Bell said in its complaint. “Can you imagine if we weren’t allowed to say ‘what’s up’ or ‘brunch’? Chaos.”
Should the case proceed through litigation, Taco Bell is likely to advance some of the colorful arguments in made in its petition, including the following:
This Petition is brought because Taco Bell believes that tacos, just like the joy they bring, belong to everyone on any day. Ergo, “Taco Tuesday” should belong to everyone.
Taco Bell believes “Taco Tuesday” is critical to everyone’s Tuesday. To deprive anyone of saying “Taco Tuesday”— be it Taco Bell or anyone who provides tacos to the world — is like depriving the world of sunshine itself.
Counsel for Gregory’s did not immediately respond to request for comment.
Editor’s note: This piece was updated from its original version to include a statement from Taco Bell.
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