Happy Tuesday, everyone! If this were a F2F class, I’d say we should all go out to dinner. And what would we be eating, you ask? Tacos, right? It’s Taco Tuesday in all its alliterative coolness, so tacos we must eat.
It is actually very appropriate that we discuss today’s topic on Tuesday, whether you or I eat tacos. You see, Taco Bell (owned by Yum! Brands) is suing regional chain Taco John’s over use of the phrase “Taco Tuesday.”
Wait. You mean someone actually owns that phrase? I had no idea. But first some back story.
Taco Bell traces its origins to 1951 when Glen Bell created his own version of the crunchy taco. He had been an employee of Mitla Restaurant in San Bernardino California, and if you ever find yourself there, I highly recommend it. They are still open and have some of the finest Mexican food you can find.
Prior to landing on the Taco Bell name—now you know it has everything to do with his last name, and nothing to do with metal orbs with a clapper swinging inside—Glen opened Bell’s Drive-In as well as Taco Tia in San Berdoo as they call it. It wasn’t until 1962 that he opened the first Taco Bell, in the familiar yet long gone mission-style building. He sold his first franchise in 1964, and the 100th in 1967.
He was off to the races, and went public in 1970 with 325 restaurants. In 1978, PepsiCo bought him out, and over time, Pepsi spun off its restaurant conglomerate, which also includes KFC and Pizza Hut, into Tricon, which then became Yum! Brands with an explanation point. There are now more than 7800 Taco Bells in the US alone.
Taco John’s also had humble beginnings, born first as a food trailer in 1968 by John Turner. And you thought food trailers were a 21C thing. Heck, we had hot dog trailers in Chicago dating back at least to the 1960s as well, so ponder that the next time you go to the food truck pavilion.
John started by serving tacos at Cheyenne Frontier Days in Wyoming, and was an instant success. Although Taco John’s was popular, it was a David in comparison to the Goliath Taco Bell, with 380 locations today in 22 states.
But in 1989, Taco John’s trademarked the phrase “Taco Tuesday,” a phrase that Taco Bell argues has become generic and in such common usage as to render it expired in terms of intellectual property. Hence, Taco Bell’s lawsuit. Oh, and one other small wrinkle: Taco John’s trademarked it in 49 states, because someone else—Gregory Hotel—had trademarked it previously for use in New Jersey.
Now if you’re beginning to think that Taco Bell is a bit of a bully, you might just be right. Back on 16th May, Taco Bell announced its intentions to sue, and then last Friday, the 23rd of June, it actually filed the suit.
The suit makes it clear that Taco John’s, for all its marketing savvy in trademarking the phrase in the first place, did nothing to protect it, to show that it was part of its branding. While Taco John’s sued a small Minnesota taco chain last year, that was over stealing TJ’s image and likeness, unrelated to the phrase.
Meanwhile, people like me have seen Taco Tuesday promotions virtually everywhere. Interestingly, both Taco Bell and Taco John’s will likely engage in some basic marketing research to try to bolster their versions of the case. Taco Bell will try via a survey to demonstrate that people have long considered the phrase to be part of the vernacular, a celebration of Tuesdays and all things taco, while Taco John’s will do likewise to show that Taco Bell has been trying to incite trademark violation by encouraging others to use the phrase with reckless abandon.
If I had to guess—and this coming from a guy whop has written hundreds of surveys—Taco Bell has the easier job, because proving common usage is far easier than proving alleged illegal activities.
I feel badly for Taco John’s, a chain I see often in the northern Midwest and intermountain states. While I am not a big patron of fast food period, I credit them for coming up with a phrase that has become more popular than they ever could have imagined back in 1989.
But that’s the problem. It became too popular, too much larger than life itself, at least the life of its owner. Either Taco John’s chose not to protect its trademark, or once the cat was out of the bag, it was too hard to tame. Either way, Taco Bell’s case, in all its bullier-than-thou, will probably prevail.
The bigger takeaway, and not just a bag of tacos, is that if you are in business and have taken the time and money to trademark something, you better protect it no matter what. Because there’s probably another Taco Bell, for better or for worse, waiting in the wings to seize it.
Would you like some salsa with that harsh reality?
Dr “Flour Tortillas, Please” Gerlich
