As we reported in May, Taco Bell filed a petition with the US Patent and Trademark Office (USPTO) to cancel a trademark for Taco Tuesday that rival chain Taco John’s had held since 1989. Along with the petition, Taco Bell launched a nationwide public relations campaign for the cancelation of the trademark which featured a cheeky add starring LeBron James. In a commercial, LeBron repeatedly attempts to say the phrase “Taco Tuesday,” with the “Tuesday” bleeped out. By the end of the commercial, after stating that Taco Bell wants to free Taco Tuesday for all, LeBron states “no more trademark, no more bleeping starting right now” and freely shouts the un-censored phrase. Taco Bell asserted that Taco Tuesday is a common phrase that the public should be able to freely use without the possibility of legal action.

Last week Taco John’s conceded saying they are “lovers, not fighters.”

Taco John’s stated that it’s not worth the amount of money it would take to defend the mark. Instead, Taco John’s would be donating money otherwise spent on legal fees to the Children of Restaurant Employees (CORE) nonprofit. Taco John’s has also challenged Taco Bell to match its $100-per-restaurant donation to CORE and has urged LeBron James to donate the money he received from being a Taco Bell spokesperson to CORE.

Taco John’s has held the trademark for Taco Tuesday since 1989, in all U.S. states except New Jersey. In New Jersey, Gregory Hotel, Inc. holds the Taco Tuesday trademark. Taco John’s and Gregory Hotel long ago settled a trademark dispute with geographical restrictions. Gregory Hotel limited their registration to New Jersey as their business is local to that state with no plans for expansion. Taco Bell petitioned for the cancellation of Gregory Hotel’s registration as well, and so far Gregory Hotel has indicated an intention to fight for its trademark.

Julie L. Spieker is an Intellectual Property Attorney in the MVS Biotechnology & Chemical Practice Group as well as the Mechanical and Electrical Practice Group. To learn more, visit our MVS website , or contact Julie directly via email.