The battle for the ‘Taco Tuesday’ trademark is over

By Jordan Valinsky, CNN Business

New York (CNN) — Taco John’s, the regional chain that has “Taco Tuesday” trademarked, announced Tuesday that it’s ending its fight in defending the phrase and will “abandon” it because it doesn’t want to pay the legal fees that come with a fight against Taco Bell.

“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,” Taco John’s CEO Jim Creel said in a statement

Taco Bell filed a petition in May with the US Patent and Trademark office to cancel the trademark owned by rival Taco John’s for 34 years because Taco Bell claims the commonly used phrase “should be freely available to all who make, sell, eat and celebrate tacos.”

As a result of the trademark being abandoned, Creel said that it’s donating $40,000 ($100 per its roughly 400 locations) to Children of Restaurant Employees (CORE).

CORE is a nonprofit organization that “supports restaurant workers with children by providing financial relief when either the employee, spouse or a child faces a life-altering health crisis, injury, death or natural disaster,” Taco John’s explained in a statement.

Taco Bell didn’t immediately respond for comment.

Taco John’s has owned the trademark in every state except New Jersey since 1989. It has used the phrase for marketing purposes and has defended its use of the phrase and sent cease-and-desist letters to others trying to use it.

But Taco Bell took issue with that, and said that “nobody should have exclusive rights in a common phrase” and that any restaurant should be able to use it.

Trademark attorney Josh Gerben told CNN that Taco John’s decision is “not surprising” because the “phrase became ubiquitous in the marketplace and any attempt to enforce the trademark registration would likely have failed in court.”

“Therefore, the trademark registration had little, if any, value left at this point in time,” he said. “If the case was litigated to the end, Taco John’s could have suffered a significant public-relations loss. By bowing out of the court fight at this point, given the low probability of winning, Taco John’s can work to control the court of public opinion around the issue. “

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