The Journal. - Who Owns Taco Tuesday?

Episode Date: June 27, 2023

In May, Taco Bell filed a petition with the U.S. Patent and Trademark Office, claiming that ‘Taco Tuesday’ is a common phrase and that any restaurant should be able to use it. The trademark owners—Taco John’s and Gregory’s Restaurant & Bar— have both moved to fight back in court to protect their exclusive rights. WSJ’s Joseph De Avila breaks down the clash of the taco titans. Further Reading: - The Battle for Taco Tuesday Gets Heated  - The Long Fight Over ‘Taco Tuesday’  Learn more about your ad choices. Visit megaphone.fm/adchoices

It's a Tuesday night at Gregory's Restaurant and Bar on the Jersey Shore. And that means one thing. It's Taco Tuesday. Last week, our producer Rachel Humphries was there. That is a crunchy, fresh taco with warm ground beef, fresh cheese. Thank you. And she wasn't the only one eating two tacos for $2.50. There was Viviani Rapici.

They're perfect. It's just the amount of perfect of heat. They're not like too much. They're just perfect. And Carol Baglio. We come every week. We come every week. You come every week? Okay, why do you come every week?

Because we love the tacos. How long have you been coming here for? Well, I guess since about 2003. That's a long time. Gregory's has been hosting Taco Tuesday since 1979. It's been such a success that the bar's owner trademarked the phrase. His name is Gregory Gregory. I started, I was the first to have it.

I mean, most of the people that had Taco Tuesday here never had a taco before in their life. And when they go other places, they don't recognize them. You know what I mean? And I'm proud of that. But now, a major player in the taco industry is coming after Gregory's trademark. Last month, Taco Bell announced they want to, quote, liberate all Taco Tuesday trademarks

so that anyone can use the phrase. And Gregory has to decide if he's going to fight them on it. It's David and Goliath on steroids. You know what I mean? They probably have more lawyers than I have employees. So that's where I'm still weighing my options. Welcome to The Journal, our show about money, business, and power. I'm Jessica Mendoza. It's Tuesday, June 27th.

Coming up on the show, the fight over the Taco Tuesday trademark. trademark. Riding roller coasters. Learning to water ski. Applying sunscreen to your dad's back. Yep, definitely the best summer ever. Squeeze more summer out of summer with Skip. Did somebody say skip? Gregory Gregory ate his first taco in 1978 at a shopping center in Philadelphia. I noticed a line at the place that had one big sign on the top that said, TACO, T-A-C-O.

So I thought, what? This place is packed. Every day there's a line for this thing. So I went in and I said, I'll take a taco. And the lady said to me, it's taco. It's Mexican food. So I said, okay, I'll take one. They made it up for me. I went back, sat in my seat, took one bite and said, this is awful. But the people were relentless in this line. The following year, Gregory took over his family's longtime restaurant business on the Jersey Shore. While he was updating the menu, he says he remembered the lines he saw for

tacos. I was saying, we have to have tacos on the menu. They're so popular. I want to have them one night a week. And I said, let's do it on Tuesday because Wednesday was drink and drown at a nightclub down the street. So we said, let's cut their legs off and go on Tuesday. So we'll call it Taco Tuesday. And we said, yeah, that's what we'll do. We'll call it Taco Tuesday. So we got our recipe together. The salsa recipe came from Playboy magazine. In my ignorance, Greg, I didn't even know that Playboy does recipes. Well, it was in Playboy and it was a story about Mexican food. So we used that for our salsa recipe. And today it's still the same recipe. Armed with Playboy salsa, Taco Tuesday at Gregory's

took off. First day we sold five orders, 15 tacos, three for a dollar. The next week we sold 20 orders, and by the third week we sold out with 200 shells that I had to drive to Philly to get. And by the early 80s, it was out of control. It was out of control.

We had a full house, and what is not unheard of to sell 300 orders in a night. Not unheard of. Do we know who invented Taco Tuesday? No, we don't know who invented Taco Tuesday. Not for certain. That's our colleague Joseph Diavola.

Taco Tuesday has been happening for a long time. One of the first and earliest examples was in classified ads that ran in the El Paso Herald Post for restaurants holding taco specials on Tuesdays in the 1930s. And after that, it kind of spread to other states. And it was in 1971 when we saw the first advertisement for a restaurant using the specific term Taco Tuesday. And this was for a restaurant in Washington State. We might not know who held the first ever Taco Tuesday, but Joseph says that Gregory's was the first to trademark the phrase in 1982.

And what does it mean to trademark a phrase like Taco Tuesday? Like, what does that, what kind of power does that give the person who has the trademark? Having a trademark for a phrase like Taco Tuesday gives the owner of that trademark the power to basically police who uses it and under what circumstances. And Gregory Gregory is serious about protecting his trademark. I have the ability to tell the bar down the street, you can't say Taco Tuesday in

your ads, which has happened hundreds of times. Do you send out letters to people, cease and desist ever? If we have to, we do send a letter out. But usually I take care of it with a call. And do you ever feel bad about it? Like, do you ever think it's unfair that you can do that and stop them from having a taco Tuesday? Well, when I think about that, then I say, why can't I serve a whopper? Or where's my egg McMuffin? So what you're saying is that we're in a culture of trademarking, right? Especially in the food industry. Everything's trademarked. You look and see everybody has it. And I'm just a little guy trying to make a living here.

Over the years, Gregory says he's sent more than 40 cease and desist letters to other businesses. And he's had to fight off bigger challenges to his trademark, too. Back in the 1980s, a taco chain called Taco John's wanted to use the phrase. And they wanted control over the trademark for the same reason that Gregory's did. It was a good marketing tool. And they eventually, you know, come into a dispute with Gregory's over the trademark. Taco John's is a much bigger business than Gregory's. Today, they have nearly 400 restaurants in more than 20 states.

Gregory's is just one restaurant. They had no intentions to ever expanding to other states. So they agreed, we're going to keep New Jersey and we will continue to have the trademark for Taco Tuesday within the state of New Jersey alone. And Taco John's took the rest of the 49 states. the state of New Jersey alone, and Taco John's took the rest of the 49 states. And for decades, that has been the status quo. Restaurants aren't supposed to use the phrase Taco Tuesday. But around the country, many places still do. It's on Taco John's and Gregory's to tell them to stop. But now, a taco titan wants to put an end to the trademark altogether. That's next. Need a great reason to get up in the morning? Well, what about two?

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Bacardi, its trade dress and the bat device are trademarks of Bacardi and Company Limited. Rum 40% alcohol by volume. We have Taco John's, we have Gregory's, but more recently, an even bigger name kind of enters the fray over trademarking Taco Tuesday. Taco Bell, owned by Yum! Brands, is one of the biggest fast food operators in the world. And they've been, you know, really good at marketing over the years. They had that advertisement for a long time with the talking chihuahua. And so what they've done recently is they've gone to the federal trademark office and said that these two trademarks, owned by Taco John's and owned by Gregory's, it's generic and that anybody should be able to use it.

And they wanted to have it canceled. Last month, Taco Bell announced the challenge in a commercial featuring basketball star LeBron James. It's taco! Why did I get bleeped? Because this is a commercial and there's a trademark on taco. I mean, how can someone own taco? Come on, man. LeBron James often posts on social media about his own Taco Tuesday nights.

And in 2019, he unsuccessfully tried to trademark the phrase himself. We're not partnering with LeBron because he's the second biggest athlete in the world, all-time NBA league scorer. We're partnering with him because he really is Taco Tuesday's biggest fan. That's Taylor Montgomery, Taco Bell's chief marketing officer. Why is Taco Bell entering the fight over Taco Tuesday? For the record, this is not for Taco Bell that own Taco Tuesday. When we win this case, we will give Taco Tuesday to who it belongs to, which is everybody that sells and celebrates tacos, not Taco Bell.

A lot of bars and restaurants already use the phrase Taco Tuesday. I'm in D.C. They have it around here. So why does it need to be liberated? I think some do, Jess, but unfortunately, others don't. And some have tried and have actually gotten legal things sent to them about it. And so I think for us, how do we make sure everyone understands and feels free to use Taco Tuesday? Because while some people do, Jess, there are a lot of people that don't. And it's not bad promotion for Taco Bell either, is it? No, no, no, it's not. But, you know, I would say that our intention is very clear and pure on why we're doing it. And of course, yes, it's great for the brand.

But more importantly, it's great for the brand because it's great for everyone in taco culture. And that's what we believe in. And that's what the most important piece is. But not everyone in the taco business is happy about this. Over at Gregory's, they're putting up a fight and rallying supporters. When our producer Rachel went to visit, she saw a sign outside the restaurant that read, Come on, LeBron. And they were selling t-shirts with the words original Taco Tuesday on them. People are asking for them, so we had to get them printed. You know what I mean? I wanted to get a shirt made with me dunking a taco over LeBron,

you know what I mean? But we didn't do that one. We're trying to keep it civil, you know what I mean? But it's silly more than anything else and the fact that taco bell is playing it up as if if you read what they say how they want to liberate taco tuesday something something sappy and what can you do to challenge it what do you need to do now well i the only way i could challenge this if I get a law firm that wants to take this on, just as a matter of fact, as a pro bono job, $2.50 basket of tacos versus giant legal fees. As the head fiduciary, I don't think I have the right to put the family through that. I don't think I have the right to put the family through that.

I put Gregory's response to Taylor Montgomery of Taco Bell. And he said that it is, quote, sappy to say that you're liberating Taco Tuesday. What do you say to that? Hmm. I would have to say to Mr. Gregory, who I haven't had the opportunity to meet, is I don't think that we've had the right dialogue then. I think that maybe we're misunderstanding each other a little bit on our intention and why we're doing this. So, Mr. Gregory, if you're out there listening, I would love to have a conversation with you about it.

Last week, the fight over Taco Tuesday intensified when Taco John's and Gregory's both filed responses to Taco Bell's challenge. The owner of Taco Johns said it had the right to enforce its trademark and that Taco Bell's allegations were, quote, opinions that didn't merit a response. So where does this fight go next? I think now it goes to the courts. Now the game begins. Our colleague Joseph says that Taco Bell has the upper hand in this case.

I've talked to some trademark experts who've said that it is going to be very difficult for Taco John's and Gregory's to defend their trademark because it is so common. And we've seen cases where terms that were originally trademarked and were unique at the time have lost that, and their trademarks were no longer enforceable. Things like the word escalator and nylon and raisin bran, these were also trademarked but are now considered generic. And so Taco Tuesday is potentially entering into this territory. What happens for Taco John's and Gregory's if Taco Bell wins, if this phrase is deemed too generic to be trademarked? They're going to lose the ability to say that we hold a trademark

for this very, very popular phrase. It's sort of their claim to fame. Now, Gregory faces a potentially long fight to defend that claim to fame. You have had this trademark for many years, decades now, and you have fought for it both sort of locally and also like nationally and now again. Is it all worth it? Has it been worth fighting for, for all these years? Yes, it's personal. It's something that I did, you know, and it's something I came up with.

So it is everywhere. And when I started, it was nowhere. Do you ever eat at Taco Bell, by the way? No. I personally don't like Mexican food. This episode has been updated. A previous version incorrectly described Taco John's as a taco

chain in the Midwest. Taco John's is headquartered in Wyoming. That's all for today, Tuesday, June 27th. The Journal is a co-production of Gimlet and The Wall Street Journal. If you like our show, follow us on Spotify or wherever you get your podcasts. We're out every weekday afternoon. Thanks for listening. See you tomorrow.