Ran across some unknown info (to me anyway)... Who would have thought that Taco Tuesday would be trademarked by a disputed few restaurants.
When the owners of the Old Fashioned Tavern and Restaurant received a cease and desist letter demanding they stop holding Taco Tuesdays, they thought it was a joke.
For almost a decade, the restaurant had sold $2 tacos on Tuesday night. Other restaurants and bars in the area had similar promotions, and in cities like San Francisco and Los Angeles, Taco Tuesday specials are as plentiful as yoga classes.
But the the letter claimed that “Taco Tuesday” was a federally registered trademark that belonged to Taco John’s, a chain of around 400 Mexican-style fast food restaurants.
But did they invent it?
What’s in a Name?
According to Taco John’s lore, David Olsen, the owner of a Taco John’s in Minnesota, coined the term in the early 1980s.
At that point, Taco John’s had been around for over a decade, having expanded from one taco stand at a rodeo in Cheyenne, Wyoming, into a franchise in several states. Taco Tuesday turned Olsen’s slowest day into a busy one, so Taco John’s executives made it the centerpiece of the company’s first national advertising campaign. They created radio spots, and they were used for almost a decade.
In 1989, Taco John’s applied to trademark Taco Tuesday with the U.S. government, and that trademark has become a sacred possession. But can you really trademark Taco Tuesday?
That’s often the first question that restaurant owners ask after receiving cease and desist letters from Taco John’s. The United States Patent and Trademark Office, though, did grant Taco John’s the trademark in 1989, and attorneys say it’s eligible for protection.
“Taco Tuesday” is eligible for trademark protection, since “Tuesday” doesn’t describe tacos.
The Battle for Taco Tuesday
The U.S. government has granted Taco John’s a trademark for the phrase Taco Tuesday. But it’s up to Taco John’s to defend it.
The biggest threat to Taco John’s ownership over Taco Tuesday, however, is not a populist backlash. It’s that so few people know about its claim.
This confusion is the danger of trying to trademark a fairly descriptive phrase. A related problem is that someone else may already be using it. Because with Taco Tuesday, at least two other restaurants can make a credible claim to having coined the term before David Olsen and Taco John’s.
The first is Steve Levinson, the former owner of the Tortilla Flats restaurant in Laguna Beach, California. Levinson first held a Taco Tuesday in the early eighties and applied for a (state) trademark in 1984.
Levinson is now retired, Tortilla Flats is closed, and the trademark is expired, so we could not verify the year he applied for it. But law partner William Levin represented Levinson in the late 1990s, and he says he successfully took legal action against over a dozen nearby restaurants on the basis of the state trademark.
It may seem odd that Taco John’s managed to get a federal trademark if Tortilla Flats already had a state trademark. But William Levin says this is typical of America’s “hybrid” trademark laws. Since Taco John’s does business across state lines, it could apply for a national trademark. But in trademark cases, if a competitor like Tortilla Flats can prove that it was already using the term, it can (at any time) challenge the trademark or even prevent Taco John’s from doing business in the state.
Which is why the Taco John’s trademark over Taco Tuesday doesn’t extend into New Jersey.
In 1978, Greg Gregory went to a food court in Philadelphia to do some market research before joining the family business: Gregory’s Restaurant and Bar in Somers Point, New Jersey. “I saw a big line for some Mexican food I’d never had before,” he says. “A guy in line told me they were ‘tacos.’”
His college professor came one night and advised Gregory to trademark “Taco Tuesday,” which he did, with the U.S. government, in 1982. Decades of phone calls and legal letters by his family to competing restaurants, Gregory says, have kept Taco Tuesday unique to Gregory’s Restaurant and Bar in their area.
So when Taco John’s applied for a federal trademark seven years later, they got it in every state… except New Jersey.
The enthusiasm exists in the phrase Taco Tuesday itself. The catchy phrase sticks in people’s minds and is unreasonably useful for selling tacos. Who Knew All This For A Name "TACO TUESDAY"
Now my problem might be a bit more personal... I love tacos, hard or soft. Love them ALL and as much as Pizza (that's another story)
Too much taco can cause the pants to shrink and the mirror to make images to enlarge. Gotta cut out some of the Taco Tuesdays... but I'll let you know how that goes next Tuesday...
Nana
Comments