Gregory’s Restaurant and Bar (“Gregory’s”), located in New Jersey, has joined Taco John’s, a Wyoming-based fast food restaurant chain with nearly 400 restaurants in more than 20 states, in giving up the fight to defend their “Taco Tuesday” trademarks. Taco Bell filed petitions in May with the USPTO to cancel the registered trademarks for “Taco Tuesday” owned by both Taco John’s and Gregory’s, under a concurrent use agreement. Because of the widespread use of the phrase, Taco Bell raised a legitimate argument in its petition for cancellation of the trademarks to the Trademark Trial and Appeal Board (“TTAB”), that Taco Tuesday has become a “common phrase” and “should belong to everyone.”

A coined term, even if it’s initially fanciful or suggestive, can lose its trademark protection if it is a common phrase or message rather than a source identifier. It is essential for trademark owners to police their marks to avoid losing any trademark rights they have in the mark. Since their registration, Gregory’s had sent about 40 cease-and-desist letters to other restaurants, and Taco John’s has successfully petitioned cancelation of other marks for “Taco Tuesday.” Despite these efforts, the phrase “Taco Tuesday” results in more than 49 million hits on Google. Additionally, Taco Bell commissioned a survey which revealed that 86% of consumers in the U.S. believe that “Taco Tuesday” is a common name not associated with any restaurant or company. On October 24, 2023, in response to Gregory’s voluntary surrender of its federal registration, the TTAB will cancel the New Jersey registration, having previously cancelled the Taco John registration.  Third parties are now free to use the phrase anywhere in the U.S.