In a press release issued on July 18, 2023, Taco John’s—a restaurant franchise famous for using the registered mark “TACO TUESDAY” (i.e., U.S. Registration No. 1,572,589) in connection with restaurant services—announced its intent to surrender its federal registration, thereby giving up benefits it accrued over the life of the nearly 45 year old registration. The registered mark, owned by Spicy Seasonings, LLC, was used primarily in connection with Taco John’s since 1989.
The dispute began on May 16, 2023, when Taco Bell filed its Petition to Cancel the mark “TACO TUESDAY” (i.e., TTAB Proceeding No. 92082333), mainly arguing that the phrase has become generic in connection with the identified services. A week after filing its Petition to Cancel “TACO TUESDAY,” Taco Bell took the dispute public, releasing a commercial with LeBron James wherein LeBron is “bleeped” in every instance of saying the phrase “Taco Tuesday.”
According to Taco John’s CEO, Jim Creel, Spicy Seasonings decided not to continue to defend the cancellation action in large part due to the ever-increasing attorneys’ fees. Rather than “paying millions of dollars to lawyers to defend [their] mark,” Spicy Seasonings has opted to surrender its registration for “TACO TUESDAY” and donate $40,000 to the non-profit organization Children of Restaurant Employees (CORE).