New York (CNN) 鈥� The trademark is getting spicy.
Taco John鈥檚, a regional chain, has responded to Taco Bell鈥檚 effort to liberate the phrase so that anyone can use it.
In a Friday, responding to Taco Bell鈥檚 petition to 鈥渃ancel鈥� the trademark, Taco John鈥檚 parent company Spicy Seasonings denied there is 鈥渁nything 鈥榥ot cool鈥� about鈥� obtaining a trademark for the phrase. The Wyoming-based company said Taco Bell鈥檚 lawsuit is filled with 鈥渟tatements of opinion to which no response is required, including that Tuesday is a mediocre day of the week.鈥�
Last month, with the US Patent and Trademark office to cancel the trademark owned by rival Taco John鈥檚 for 34 years because Taco Bell claims the commonly used phrase 鈥渟hould be freely available to all who make, sell, eat and celebrate tacos.鈥� Since Taco John鈥檚 holds the trademark, other restaurants and companies must seek permission to use 鈥淭aco Tuesday鈥� in branding and advertising.
The use of the phrase 鈥減otentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say 鈥楾aco Tuesday鈥� without express permission from [Taco John鈥檚] 鈥� simply for pursuing happiness on a Tuesday,鈥� the original filing said.
In response, Taco John鈥檚 said it 鈥渉as the right to enforce its trademark rights against infringers and those who want to infringe, including Taco Bell,鈥� adding that it 鈥渄enies that enforcing its trademark rights against infringers who seek to profit from the goodwill that Spicy Seasonings and its licensees 鈥� have created over the last forty-four years violates any American ideal.鈥�
The case, according to , now 鈥済ets real鈥� after Taco Bell 鈥渟cored an early press relations victory by the well-coordinated roll-out of the cancellation actions,鈥� he told CNN.
The next step in the legal process is the discovery portion and a likely move by Taco Bell to 鈥渃onduct a survey to determine what portion of the American public associated Taco Tuesday鈥� with either Taco John鈥檚 or Gregory Hotel, the trademark鈥檚 owner in New Jersey, 鈥渧ersus the phrase being a more of a general custom associated with eating tacos on Tuesdays,鈥� he said.
Gerben expects that Taco John鈥檚 and Gregory Hotel will likely conduct their own investigation as to whether or not Taco Bell has been 鈥渁ttempting to assist other restaurants or celebrities to use Taco Tuesday in an attempt to invalidate their trademark rights,鈥� perhaps with a similar customer survey.
Regardless, a resolution is far from close since Gerben doesn鈥檛 expect a settlement and said the legal process could take about two years.
鈥淭his is not going to be something where Taco Bell is going to be able to declare victory anytime soon,鈥� he said.
The-CNN-Wire
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