Intellectual Property

Taco Tuesday Trademark Triangle

It is never fun as a trademark owner to face a challenge from a better-resourced adversary.

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It had to happen on a Tuesday. Last week, as reported both by Joe Patrice on these pages, as well as by major mainstream media like CNN, the owner of the USPTO registration on the term “Taco Tuesday” decided, in Joe’s pithy phrasing “to abandon the mark and create a true Taco Tuesday for the ages.” The now-former servicemark owner, Taco John’s, is a Wyoming-based fast food chain with over 350 outlets concentrated in the Mountain West. (For reasons unclear to me, they also have an outpost at John F. Kennedy International Airport’s Terminal 1, but that location is closed as part of the current major JFK revamp.) On the trademark side, Taco John’s had owned the Taco Tuesday federal registration (for every state but New Jersey) since 1989 for “restaurant services,” along with a trademark on its signature characterization of its cuisine as “West-Mex.” The former mark became a source of legal trouble, however, when Taco Bell filed a cancellation petition in the USPTO in May of this year.

It is never fun as a trademark owner to face a challenge from a better-resourced adversary. For context, Taco Bell has more locations, just in Ohio, than Taco John’s has nationwide. Add in the marketing collaboration it has with one of the world’s most recognized athletes, Lebron James, and it is no surprise that things were looking good for Taco Bell’s legal challenge — both on the merits and in the court of public opinion. Under the circumstances, it is not surprising to see Taco John’s back off from what would have likely been a quixotic effort to avoid cancellation of the Taco Tuesday mark.

In a deft press release issued in conjunction with its abandonment filing, Taco John’s embraced a significant about face. It attempted to pull off a public relations judo flip from its prior characterization as an erstwhile trademark bully to its hoped-for public embracing as a scrappy underdog doing right by the world. In addition to playing to the perennial desire of the masses to see lawyers get their comeuppance — “paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do” in the CEO’s words — the company also pledged to take at least some of the money saved on litigation costs and direct it to charitable ends. While also challenging both Taco Bell and Lebron to do the same, of course.

Whether their efforts were effective is up for debate. As pointed out by Joe Patrice, Taco John’s had earned its reputation as a trademark bully when it had “gleefully paid law firms to fire off bullying letters to local businesses around the country.” Still, the gates of repentance are always open, even to former trademark bullies, so it’s nice to see that Taco John’s is raising awareness and dollars for what seems like a very worthy charity as it unwinds itself from what seemed like an unwinnable IP battle. At the same time, the value of the publicity from this whole saga is probably accruing to the benefit of all the players, with the Taco Bell/Lebron collab claiming victory on behalf of the American public as well.

But no one can claim total victory here, as there is a third leg to this Taco Tuesday trademark triangle, namely, Gregory Gregory, the owner of a Jersey Shore bar who has held a New Jersey state trademark on the term since the early 1980s. Yes, state trademark registers exist, including in New Jersey. And Gregory’s Bar, at least according to a recent Slate interview of the eponymous owner, started a successful Taco Tuesday promotion in the late 1970s, leading to their state trademark filing a few years later — at the suggestion of one of  Gregory’s college professors, no less. Two million tacos sold later, the bar continues to hang on to the state mark, getting the last laugh on Taco John’s, with which it had a legal tussle at the time of Taco John’s 1989 federal registration. “Taco Tuesday” is even the name of Gregory’s boat, which explains why it seems likely that he will defend his rights in the mark until the last, even in the face of a Taco Bell/Lebron campaign to “liberate the phrase for humanity.”

Ultimately, this is an IP story that has a little bit of every ingredient, just like a well-constructed taco. From big business to the owner of a local tavern, from a global celebrity in Lebron to a guy who just wants to putter around the waters around South Jersey in his “Taco Tuesday”-named vessel, this saga reminds us that the business world is both vast and quirky in its reach when it comes to generating IP disputes. And that IP issues can arise in the unlikeliest of places, with those disputes sometimes — like here — creating an odd mix of both bedfellows and adversaries, united despite their differences by a belief that the IP at issue is theirs in some measure. For us, this twisted triangle of taco loving is a reminder of the role of emotion in IP disputes, as well as the importance of controlling the media narrative around such disputes to the best extent possible. No matter where your heart lies with respect to this dispute, whether you prefer your tacos from Taco Bell, or the “West-Tex” version offered by Taco John’s, or even have a personal chef whipping them up like Lebron, there should also be a little room in your stomach (and heart) for the glories of a Tuesday night taco at a Jersey Shore haunt that also runs something called “Mussel Mania” on summer Sunday nights. Here is to tacos for all, and to all of us for tacos and trademarks this Tuesday.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

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Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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