Everyone loves tacos, especially on Tuesdays. Hence, the popular phrase: Taco Tuesday. In recent years, this simple alliteration has evolved into a cultural phenomenon. Every Tuesday, taco and margarita connoisseurs flock to Mexican-themed restaurants to partake in this tasty tradition. Indeed, last week, when Taco Tuesday coincided with Cinco De Mayo, some Tampa restaurants had to close early because the overwhelming public enthusiasm threatened the Covid-era social distancing rules. My curiosity about the origins of the term Taco Tuesday sent me on a research quest. As an IP attorney, my natural starting point was the USPTO trademark database. So who owns the Taco Tuesday trademark? Here’s Part I of the story.

The Origin of Taco Tuesday

It all started on February 6, 1979. The first restaurant to coin the phrase Taco Tuesday was Gregory’s Restaurant & Bar in New Jersey. Two years later, recognizing the growing popularity of the phrase, Gregory’s applied for and successfully secured a federal registration for the TACO TUESDAY trademark for restaurant services. Federal trademark registrations can be extremely valuable because, unlike patents and copyrights, they do not expire and can last in perpetuity. But, there is one caveat: the trademark registration must be periodically renewed by submitting evidence showing continued use of the trademark. Failure to comply with this requirement results in cancellation of the trademark registration.

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The earliest specimen on file with the USPTO showing TACO TUESDAY trademark being used in commerce

You Snooze, You Lose

Gregory’s was not the only restaurant using the TACO TUESDAY trademark. In 1979, around the same time as Gregory’s, a Mexican-inspired fast food restaurant in Wyoming called Taco John’s also began using the phrase TACO TUESDAY to promote its specials. However, because Gregory’s was the first to register TACO TUESDAY, Taco John’s was left on the sidelines. At least, for a while.

In 1989, Gregory’s made a costly mistake. When its TACO TUESDAY trademark registration came up for renewal, Gregory’s failed to timely submit evidence of continued use. The USPTO is unforgiving with respect to missed deadlines and, on April 21, 1989, cancelled Gregory’s TACO TUESDAY registration.

Taco John’s seized this opportunity. With a haste of a second stringer who learns that the the coach is about to bench the quarterback, Taco John’s made its move. On March 23, 1989, Taco John’s filed its own trademark application for TACO TUESDAY. With Gregory’s trademark registration cancelled, the field was clear. Taco John’s strategy paid off, earning the Wyoming restaurant the coveted prize: the federal trademark registration for TACO TUESDAY.

The earliest specimen on file with the USPTO showing Taco John’s use of the TACO TUESDAY trademark

Attempted Cancellation and Subsequent Concurrent Use

Gregory’s recognized its mistake. A few months after losing its TACO TUESDAY registration, Gregory’s submitted a new application trying to reclaim this trademark. Too little, too late. The law is clear: the party with the earliest filing date has exclusive nationwide rights to that trademark. Because Gregory’s first registration lapsed, Taco John’s application had the priority. Rightfully, the USPTO rejected Gregory’s second application. Gregory’s only option was to challenge Taco John’s registration.

Gregory’s filed a cancellation proceeding alleging that its prior use of TACO TUESDAY dates back to 1979 and, therefore, predates Taco John’s 1989 application. The cancellation proceeding was contentious and lasted over three years. Under the trademark law, a junior registrant (Taco John’s) has nationwide rights in the trademark, except for the geographic region in which the senior user (Gregory’s) can prove trademark use prior to the filing date of the registration. Coming to terms with this harsh reality, Gregory’s terminated the cancellation proceeding and, instead, initiated a concurrent use proceeding. Ultimately, when the dust settled, Taco John’s retained the trademark rights to TACO TUESDAY in the entire country, except for New Jersey, while Gregory’s reclaimed its trademark rights, but only in New Jersey.

Lesson Not Learned

Had Gregory’s been attentive to the USPTO deadlines, Gregory’s first trademark registration from 1981 would not have expired. Gregory’s would have retained the nationwide rights and would have owned the TACO TUESDAY trademark, outright. Instead, Gregory’s dropped the ball on the simple renewal. As a result, Gregory’s had to spend nearly five years and thousands of dollars to reclaim its trademark rights and, only, in New Jersey. Gregory’s lost the other forty-nine states to its nemesis Taco John’s. A painful and expensive lesson learned, right? Wrong.

In 2006, when Gregory’s second registration was due for a renewal, Gregory’s again failed to submit the requisite evidence to the USPTO. The result: another cancelled registration. To rectify this mistake, Gregory’s reapplied again in 2007. Gregory’s had to endure yet another contentious trademark examination that lasted over two years and cost thousands of dollars to secure the registration for the third time.

So Who Owns the TACO TUESDAY?

For now, Gregory’s, the New Jersey restaurant, owns TACO TUESDAY trademark in its home state of New Jersey. Taco John’s, the Wyoming restaurant, owns the TACO TUESDAY trademark in the other forty-nine states. BUT, this all may change in the near future…because of LeBron James.

Stay tuned for Part II. Coming next Tuesday, May 19, 2020.

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