Taco John’s responds to Taco Bell’s Taco Tuesday lawsuit

By Jordan Valinsky, CNN

New York (CNN) — The fight for the “Taco Tuesday” trademark is getting spicy.

Taco John’s, a regional chain, has responded to Taco Bell’s effort to liberate the phrase so that anyone can use it.

In a filing Friday, responding to Taco Bell’s petition to “cancel” the trademark, Taco John’s parent company Spicy Seasonings denied there is “anything ‘not cool’ about” obtaining a trademark for the phrase. The Wyoming-based company said Taco Bell’s lawsuit is filled with “statements of opinion to which no response is required, including that Tuesday is a mediocre day of the week.”

Last month, Taco Bell filed a petition 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.” Since Taco John’s holds the trademark, other restaurants and companies must seek permission to use “Taco Tuesday” in branding and advertising.

The use of the phrase “potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from [Taco John’s] — simply for pursuing happiness on a Tuesday,” the original filing said.

In response, Taco John’s said it “has the right to enforce its trademark rights against infringers and those who want to infringe, including Taco Bell,” adding that it “denies that enforcing its trademark rights against infringers who seek to profit from the goodwill that Spicy Seasonings and its licensees … have created over the last forty-four years violates any American ideal.”

The case, according to trademark attorney Josh Gerben, now “gets real” after Taco Bell “scored an early press relations victory by the well-coordinated roll-out of the cancellation actions,” he told CNN.

The next step in the legal process is the discovery portion and a likely move by Taco Bell to “conduct a survey to determine what portion of the American public associated Taco Tuesday” with either Taco John’s or Gregory Hotel, the trademark’s owner in New Jersey, “versus the phrase being a more of a general custom associated with eating tacos on Tuesdays,” he said.

Gerben expects that Taco John’s and Gregory Hotel will likely conduct their own investigation as to whether or not Taco Bell has been “attempting to assist other restaurants or celebrities to use Taco Tuesday in an attempt to invalidate their trademark rights,” perhaps with a similar customer survey.

Regardless, a resolution is far from close since Gerben doesn’t expect a settlement and said the legal process could take about two years.

“This is not going to be something where Taco Bell is going to be able to declare victory anytime soon,” he said.

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