How Does One Business In Australia Own The Concept Of Taco Tuesdays?

In historic Somers Point, New Jersey is a very magical place called Gregory’s Restaurant and Bar. Is the food nice? Not sure. Are the staff charming? Couldn’t tell you. Is the decor lovely? I have no idea. Is the beer ice cold? Fuck knows.

What makes Gregory’s Restaurant and Bar so magical is the fact that, within the state of New Jersey, Gregory’s Restaurant and Bar holds the trademark for the phrase ‘Taco Tuesday‘, unlike the other 49 states in the US, in which the trademark is held by ‘Mexican-inspired’ mega-chain Taco John’s.

Taco John’s applied for a nationwide trademark for the term in 1989, and would have gotten away with it too if Greg Gregory of Gregory’s (none of that was a typo) hadn’t applied for a state trademark in NJ, seven years prior in 1982. Outside of New Jersey, the genesis of the phrase is unclear: both Taco John’s and the now-closed Tortilla Flats in Laguna Beach, California claim to have begun the practice in the early 80s (Tortilla Flats applied for a state trademark in 1984 that has since lapsed).

Gregory’s, Tortilla Flats, and Taco John’s have all in the past been quite aggressive about maintaining their monopoly on the term. According to Priceonomics, Greg Gregory has spoken of “decades of phone calls and legal letters by his family to competing restaurants“. In a 1997 article, the LA Times describes Tortilla Flats owners Steve and Ellen Levinson as waging “a battle of threatening letters” in the pursuit of protecting their “Taco Tuesday exclusivity“. In 2010, Taco John’s served a cease and desist letter to Oklahoma restaurant Iguana Mexican Grill over their use of the term (there are no Taco John’s stores in Oklahoma). In 2014, the chain served a cease and desist letter to a restaurant in Madison, Wisconsin that had been doing Taco Tuesdays since 2005. In a 2016 article, Priceonomics said that “hundreds” of businesses had received similar letters from the chain in the previous two decades.

Australia‘s legal battles over the phrase, similar to our attempts at making Mexican food (we might get there one day), came much, much later, when fast-food chain Salsas Fresh Mex trademarked the term in 2011. You might have already been in possession of this little bit of Australian intellectual property law trivia, due to Salsas appearing in the news recently over serving cease and desist notices to Newcastle‘s Crown and Anchor Hotel and to Footscray‘s Reverence Hotel.

In the letter to both the Reverence Hotel and the Crown and Anchor, marketing manager Rebecca Woods said that “the Mexican-style food offered by Salsas under that trademark has become extremely well and favourably known among members of the public in Australia“, and that they assumed the venues were “unaware” that Salsas was the trademark holder.

I know that when I think of Taco Tuesday, I definitely think of a Mexican food chain that I don’t know if I’ve ever seen around Brisbane before and not, say, The Lego Movie or just the concept of eating tacos on a Tuesday. Using the magical power of searching my own Twitter account, I can trace my own usage of the term back to at least 2014, as evidenced by this horrible photo of my friend Dave and the stacked corpses of about three dozen tacos:

From what I can tell, the use of the term in a commercial sense in Brisbane dates back to at least nearly a decade before Salsas acquired the trademark, with both the former owner and a former chef from now-closed Brunswick Street institution The Alibi Room confirming to me that the bar was doing Taco Tuesdays since 2004. (And I quote: “I remember the cheese. I can still smell the seasoning“.)

When asked if Salsas originated the use of the term Taco Tuesday in Australia, a company spokesperson directed me to a statement that a) did not answer the question, and b) mirrored the same justification used by Taco John’s:

Salsas Fresh Mex is a network made up of largely small business owners.

As a franchisor, Salsas provides extensive support to its small business owners across all areas of the business, including investing in extensive marketing and defending our brands and trademarks.

The term “Taco Tuesday” was trademarked by Salsas Fresh Mex in 2011 and has since been used extensively across the brand’s marketing and promotional efforts. Legally we must defend this against companies both big and small, however this doesn’t stop these companies selling cheap tacos on a Tuesday.

We believe it is our responsibility to inform all businesses of our trademark ownership to best protect the interests of our small business owners.

Compare and contrast this with this explanation from then–chief marketing officer of Taco John’s, Billie Jo Waara, in 2016:

Over the years we’ve certainly asserted our trademark against national companies, restaurants big and small, and even pharmaceutical companies. . . We know that in these conversations around Taco Tuesdays that Taco John’s is portrayed as large out-of-state company attacking a small, local business. But we’re not an international conglomerate. We were built in small towns.

According to their website, Taco John’s comprises just shy of 400 locations in the States. Salsas reportedly had around 50 locations as of 2016, similar to the roughly 70 Mad Mex locations and about half of the number of Guzman y Gomez-es. I suspect that Taco John’s and Salsas might have taken the same route because framing this as an issue of ‘plucky small business just trying to get by’ might just be the only way they come off not sounding like big corporate bullies, but I also suspect that that might not be entirely convincing to anyone involved.

According to Paula Adamson, general manager of the Trade Marks and Designs Group at Intellectual Property Australia (the “IPA” that isn’t a kind of beer or a thinktank from which all of our worst politicians and columnists come from), Australia’s trademark system isn’t just about who gets in first:

If research shows a phrase is being used as a description or is likely to be needed as a description for goods or services, this will provide a strong basis for objections being raised under the Trade Marks Act.

Adamson says that objections to the trademark will likely be raised if their research shows that “a number of other traders in the same business are clearly using it as a description in relation to the same goods or services“. Given that Salsas was granted the trademark and they very much still hold it, it would appear that IP Australia’s research did not show that to a significant enough extent.

Of the questions I asked, there was one that Salsas did, in fact, answer directly (well, they answered half of it). “How different does the name have to be?” didn’t get an answer, but as to whether something like ‘Tacos on Tuesday’ would be acceptable, I got an economically succinct “Yes.” The Reverence has not been shy about taking the piss, ranging from calling it ‘Taco Sueday’ to going way out of their way to very conspicuously not use the two words together:

Tonight is a Tuesday. And there will be tacos on sale at The Rev for $3 each. The tacos shall be sold for a reduced price, making this a particularly special day of the week. There should be a name to communicate this special day in a succinct and memorable manner. Perhaps using clever alliteration. But alas there is no way to do so. Such a shame.

The Crown and Anchor told the Redland City Bulletin that they would “play it by ear” before making changes to their advertising, with the posters on the website and a post from last week still calling it Taco Tuesday, but their most recent post referring to it as “TUESDAY TWO DOLLAR TACO TIME” (enthusiastic emphasis entirely theirs).

The use of the term is obviously still quite pervasive. Brisbane bar Tippler’s Tap (they agreed to go on the record, I promise I’m not a snitch) told me that they’ve been doing Taco Tuesdays since they opened in 2012 and have yet to be served a cease and desist. Apparently, a customer told them “a while ago” about the trademark but they “didn’t think it was real and take it too seriously”.

In response to learning the information that the trademark thing is very, very real, they said that it’s “absurd to think someone can own what is such a common thing and will always be a thing” and that they will “continue keeping [their] customers happy with cheap tacos“.

Taco on, you brave heroes who are almost definitely about to be served a cease and desist letter.