There are a lot of monikers for the different days of the week; Manic Monday, Thirsty Thursday, and Sunday Funday®. One popular moniker used on Tuesdays is Taco Tuesday®. Tuesdays are typically a slow night for restaurants and the use of this phrase has helped to get customers in the door.
Unfortunately, unlike tacos, this phrase is not for public consumption. The Cheyenne, Wyoming based franchise, Taco John’s, is the owner of this registered trademarked phrase and the company is not shy about letting people know it. They have sent over 100 cease-and-desist letters demanding companies remove the phrase from their websites, flyers, social media pages etc.
One company, The Old Fashioned in Madison, Wisconsin, learned first-hand how serious Taco John’s is about protecting their trademark. The restaurant had been running a “Taco Tuesday” special for nine years when they received a cease-and-desist letter. “At first we were kind of — not angry, just perplexed,” said Jennifer DeBolt, manager of the Old Fashioned. DeBolt and restaurant owners Bob Miller and Tami Lax thought they were part of a joke.
After much deliberation, the owners decided not to pursue a lawsuit as they did not want a long drawn out legal battle and did not feel they would win the case. Instead, the Old Fashioned held a contest for their customers to rename the Tuesday night special with the winner receiving free tacos for a year. The restaurant had over 600 entries with clever names such as “The Tuesday Special That Shall Not Be Named”, “Trademark Tyrant Taco Day!” and “Taco-tastic Tuesday”. They eventually settled on “Ole Tuesday”.
The phrase “Taco Tuesday” was first introduced by the Taco John’s franchise in 1980 by David Olsen, a Taco John’s manager in Minnesota. In an attempt to generate business on a slow night Olsen came up with the idea to sell two tacos for 99 cents, he originally called it “Taco Twosday.” Thanks to the phrase, business increased on Tuesdays and as a result Taco John’s decided to incorporate it in their advertising. Due to the phrase’s popularity, the company thought it would be in their best interest to get a trademark for it. In 1989 Taco John’s was granted U.S. Trademark Registration No. 1572589 for “Taco Tuesday”.
Taco John’s has registered the phrase in 49 of the 50 states but were unable to register the phrase in New Jersey, as restaurateur Greg Gregory already owned the trademark. Gregory’s original idea of “Margarita Thriller Night” was shot down by his parents, the restaurant owners at the time. They compromised and allowed him to sell tacos on Tuesdays, an item not many restaurants were serving at that time. Gregory liked the way Taco Tuesday sounded and from there the phrase stuck. Tuesdays began to build momentum, there was an increase in traffic and orders for tacos. A college professor of Gregory’s came in for tacos one night and told him he should consider trademark protection for the phrase and he did. Gregory was granted the trademark in 1979 (U.S. Trademark Registration No. 3621366) and still uses it today in his restaurant, Gregory’s Restaurant and Bar.
Some consider Taco John’s to be bullies when it comes to threatening legal action over the phrase but Chief Marketing Officer Billie Jo Waara would disagree. “Over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies. We also recognize that the unauthorized use [of Taco Tuesday] is prolific, and we do our best to communicate ownership. It’s a challenge for sure.” By not protecting the phrase Taco John risks the trademark falling into the public domain and according to Waara “[i]t’s just unfathomable to us not to protect it.”
Next time you are out on a Tuesday for tacos, take note to see if the restaurant is illicitly using the phrase. If anything, you can enlighten your friends on your vast knowledge of the history of “Taco Tuesday” and its trademark.
Suiter Swantz IP is a full-service intellectual property law firm based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark, or copyright matters and would like to speak to one of our patent attorneys please feel free to contact us.