Taco Bell had a mission “to liberate Taco Tuesday…on behalf of ALL who make, sell, eat and celebrate tacos,” said CEO Mark King. After Taco Bell’s successful efforts to convince restaurant chain Taco John’s to forfeit its trademark registration for Taco Tuesday, only one trademark remained — held only in New Jersey by Gregory’s Restaurant and Bar. Taco Tuesday enthusiast and Los Angeles Lakers superstar LeBron James joined Taco Bell in efforts that eventually led to the forfeiture of this final registered mark.
Gregory’s is a family-owned restaurant and bar located on the Jersey Shore. The establishment has been open for nearly eight decades and was passed down through five generations of Gregorys. One of the Gregorys, Gregory Gregory, coined the term “Taco Tuesday” on a Tuesday night in 1979 while serving his first tacos, made with help from a Texan friend. The Taco Tuesday special at Gregory’s featured two tacos in a basket for only $2.50 with the same original recipe. Four decades later, Gregory’s has sold more than 2 million tacos.
In 1982, Gregory’s registered a service mark for the phrase with the United States Patent and Trademark Office (USPTO). A registered trademark has the potential to protect a trademark holder in perpetuity, as long as the trademark holder periodically submits evidence of using the trademark to the USPTO. Unfortunately, Gregory’s failed to submit such evidence to the USPTO, which resulted in cancelation of its mark in 1989.
Gregory’s tried to fix this mistake by submitting a new application for Taco Tuesday a few months after the cancellation of its mark. However, Taco John’s applied for a Taco Tuesday trademark just before Gregory’s submitted its new application. Since the USPTO awards federal registration to the party with the earliest filing date, Gregory’s was too late to gain federal protection. Almost five years and thousands of dollars later, Gregory’s regained trademark protection for Taco Tuesday, but only in New Jersey. Taco John’s, on the other hand, had trademark protection for Taco Tuesday in all other 49 states.
Taco Bell began its months-long effort to cancel these trademarks earlier this year, stating that “[n]obody should have exclusive rights in a common phrase” in a petition to the USPTO. As a part of its efforts, Taco Bell jumped on the opportunity to feature LeBron James in a commercial supporting its campaign to cancel Taco Tuesday trademarks.
James has a long history with Taco Tuesday and even attempted to register the trademark himself in 2019. James hoped to register the mark to monetize the videos he began sharing on Instagram of his family’s taco nights, complete with family t-shirts that said, “It’s Taco Tuesday.” The USPTO denied LeBron’s registration for the trademark because “[Taco Tuesday was] a commonplace term” at that point in 2019.
Taco Bell’s commercial starring James was titled “Taco Bleep” and featured the star stating phrases such as “everyone should be able to say and celebrate Taco [bleep noise].” The bleeping aspect, according to Taco Bell, was to “[highlight] the absurdity of ‘Taco Tuesday’ being ‘trademarked.” Gregory’s responded to these commercials with a sign outside of the restaurant that read “CMON LEBRON HOME OF THE ORIGINAL TACO TUESDAY!”
In the end, Gregory’s decided to forfeit its trademark for Taco Tuesday in New Jersey. Gregory Gregory of Gregory’s said, “Taco Tuesday has always been a source of pride for my family and our restaurant, but we recognize Taco Tuesday is widely celebrated and embraced beyond our four walls,” according to a Taco Bell press release.
This story is a good reminder for trademark registration holders to periodically submit evidence containing use of their trademarks to the USPTO to avoid cancellation of their registrations. It is also a good reminder of the power of tacos to bring people together.
Enjoy a taco this Tuesday and know that LeBron James is likely doing the same.
Written by Niki Camateros-Mann