Taco Bell wins battle to free ‘Taco Tuesday’ trademark after N.J. restaurant drops fight

Restaurants all over the United States may legally use the term Taco Tuesday for their specials, and they have Taco Bell to thank.

The fast-food giant, with $2 billion in annual sales, filed a petition in May with the U.S. Patent and Trademark Office seeking to cancel the trademark, which was held by Taco John’s, a smaller chain based in Wyoming, and, in a quirk of legal fate, Gregory’s Restaurant & Bar in Somers Point, N.J.

Taco Bell had contended that Taco Tuesday is generic enough to be used by any restaurant anywhere.

Facing mounting legal bills, Taco John’s gave up its rights in July, and last week, Gregory’s also surrendered, as Taco Bell announced Tuesday.

“Taco Tuesday has brought a lot of pride to our place, and it’s given a lot of good times over the last 46 years,” owner Gregory Gregory told The Inquirer on Tuesday. “And now it does allow others in New Jersey the same opportunity. Now that we’ve relinquished the trademark, everybody can build their own traditions.”

Gregory said he realized that the trademark was hard to defend. “I was up in Maine at my hunting lodge and I stopped into a little country store and there was a sign handwritten in Magic Marker, ‘Don’t forget it’s Taco Tuesday,’” Gregory said, chuckling. (“Magic Marker” happens to be a trademark of the Bic Corp., but that’s another story.)

Gregory declined to describe the legal maneuvers, only to call Taco Bell “friendly competitors.”

“When we set out to free Taco Tuesday, we did it for all who make, sell, eat, and celebrate tacos,” said Sean Tresvant, Taco Bell’s chief global brand and strategy officer and incoming chief executive officer. “Thanks to Gregory’s choice to relinquish the trademark registration, New Jersey businesses and fans can fully enjoy Taco Tuesday, effective immediately.”

To celebrate, the chain also promised free Nacho Cheese Doritos Locos Tacos on Nov. 21 through the Taco Bell app, no purchase necessary, at New Jersey Taco Bell locations.

Taco John’s chief executive, Jim Creel, told the Wall Street Journal that it could have cost as much as $1 million to defend the trademark. He said Taco John’s would donate $40,000 to Children of Restaurant Employees, a nonprofit group.

Gregory, who said his family coined Taco Tuesday in 1979, told The Inquirer in May that his bar was still using its original recipe, including a salsa recipe from Playboy. A champion rower with Temple University in the 1970s, Gregory said he got the idea from the food court of the original Gallery in Center City Philadelphia when he noticed the taco stand was always the busiest. The bar sells discounted tacos on Tuesdays, two for $2.50, and Thursdays.

Gregory’s registered its trademark in 1982 but did not submit evidence that it was being used. As the Patent and Trademark Office canceled the registration in 1989, Taco John’s was awarded the trademark in 49 states but not New Jersey.

Litigation followed, and Gregory’s won the rights for Taco Tuesday in New Jersey, while Taco John’s — whose 370 locations are mainly in the West and Midwest — had the rights for the rest of the United States.

On Tuesday, Gregory’s sign proclaimed it the “home of the original Taco Tues & Thur.”

Walter Gregory, a co-owner of Gregory’s, said the tradition would continue, even if it wasn’t exclusively Gregory’s anymore. “We’re gonna have the best Taco Tuesday around,” he said. “We’re going to keep on having tacos forever.”

Behind the bar, awaiting both the start of Taco Tuesday and Game 7 of the National League Championship Series, bartender Tom Milburn said the long-standing defense of the trademark had served its purpose, and Gregory’s was ready to move on. Publicity about it led to ”an explosion” of business this summer. “It really helped us,” he said. “They had the best summer they ever had. Everybody coming here wanted to talk about it.”

Milburn said he couldn’t give a hoot about the end of the trademark. “I’m usually never here on Tuesdays,” he said.