Taco Bell has filed a petition to vacate the trademark for “Taco Tuesday,” registered in the 1980s by Wyoming-based restaurant chain Taco John’s. Might consumer surveys be used to determine whether Taco Tuesday is protected?
Tacobout a Trademark Dispute
Taco Bell is a fast-food Mexican franchise with 15,138 restaurants. Taco John’s is a fast casual Mexican chain of 360 restaurants. In 1989, as part of the Taco John’s marketing strategy, the restaurant started offering two tacos for 99 cents, calling it Taco Twosday. The campaign evolved slightly and was eventually trademarked as Taco Tuesday. The mark has been maintained by Taco John’s for the past three decades.
However, the name has grown immensely in popularity, and hungry consumers can find restaurants offering discounted tacos across the nation on Tuesdays. Taco John’s has already defended the mark on a number of occasions. On May 16, 2023, Taco Bell filed a petition to cancel the trademark.
Is the Taco Tuesday Freedom Call a Valid Petition or Publicity?
Taco Bell argues that Taco Tuesday is a cultural phenomenon, stating that “Taco Bell believes ‘Taco Tuesday’ should belong to all who make, sell, eat and celebrate tacos.” Taco John’s, however, argues that the promotion has been a mainstay of its marketing for over three decades. Taco Bell’s legal petition accompanies a Reddit “ask me anything” post, a public petition on change.org, and a new campaign featuring basketball player LeBron James, which emphasizes the controversy underlying the petition’s message by discussing “Taco [bleep].” In addition, the two brands are in a friendly-ish Twitter battle, and Taco John’s also extended its Taco Tuesday offer throughout the month of May.
This petition is making headlines, but how strong is the case for canceling the mark protecting “Taco Tuesday”? And could consumer surveys provide a useful measure of how far-reaching a cultural phenomenon “Taco Tuesday” is?
Consumer Surveys and Canceling Trademarks
While the robust ribbing between Taco Bell and Taco John’s is amusing, Taco John’s had to file a response to the Taco Bell petition within 40 days, which brings the dispute into real life. If Taco Bell can introduce evidence that Taco Tuesday is a cultural phenomenon that has a history of open use by brands other than Taco John’s, it might have the opportunity to let the rest of Taco Tuesday’s users “Live Más.” What type of evidence could be used in a trademark dispute where one party seeks the cancellation of a mark, due to it taking on another meaning? How can Taco John’s provide evidence that its mark should remain protected?
One answer is a secondary meaning survey, which could measure whether consumers associate “Taco Tuesday” with one company (presumably Taco John’s) or more than one company. Parties to a case like this might also be interested in a likelihood of confusion survey measuring whether consumers believe a restaurant that uses “Taco Tuesday” is Taco John’s or another business.
MMR Strategy Group designs survey research to support parties to these types of disputes. If you require consumer survey evidence for litigation, contact MMR Strategy Group today.
Update:
Taco John’s has agreed to drop its trademark registration on the phrase “Taco Tuesday.” This decision followed Taco Bell’s petition to cancel the mark at the Trademark Trial and Appeal Board. Taco John’s owner, Spicy Seasonings LLC, has opted to donate to the Children of Restaurant Employees nonprofit instead of spending it on legal fees. While we aren’t aware of any surveys that measured whether Taco Tuesday is associated with any particular company, we suspect that a survey of restaurant owners would find that they support Taco John’s decision to Free its Taco Tuesday mark for use by all.