Last month LeBron James, under the company LBJ Trademarks, LLC, filed a trademark registration for “Taco Tuesday” for downloadable audio/visual works, advertising and marketing, podcasting, and online entertainment. Last week the United States Patent and Trademark Office (USPTO) issued an office action in response to James’ registration.
The USPTO sent this response partly because it considers “Taco Tuesday” to be a “commonplace term, message, or expression widely used” that “merely conveys an ordinary, familiar, well-recognized concept or sentiment” and is “an informal message.”
Why couldn’t LeBron James trademark “Taco Tuesday” if he plans to use it for podcasting and entertainment? This question hits upon a common confusion about the purpose of trademarks. The key is that the mark can’t be generic for the products and services that it’s being registered for.
James wanted to trademark “Taco Tuesday” because he wanted to take advantage of the benefits that trademarks offer. Trademarks are important because they protect the use of a word or phrase for goods or services. They also help clients and customers recognize goods or services from the crowd. By using a trademark, a business owner can also connect a positive brand reputation with his goods or services.
The trademark system isn’t designed so that someone can register, and then own all use of, a word or phrase. For a word or phrase to be eligible for federal trademark protection through the USPTO, the mark be unique for the specific types of products and services. In this case, James’ use of “Taco Tuesday” is certainly unique for his intended uses and by no means generic for podcasting and online entertainment.
For a little background, “Taco Tuesday” has been on the USPTO’s register since 1989 when Taco John’s, a large Mexican restaurant chain, trademarked the now-infamous phrase for restaurant services. Taco John’s uses its “Taco Tuesday” trademark to identify its goods: a taco promotion on Tuesdays. The restaurant has also continued to use the phrase in commerce since initial registration, another trademark requirement.
Unlike Taco John’s, James is attempting to use the phrase “Taco Tuesday” in connection with podcasts and entertainment, not restaurants and food. James is looking to use the phrase for an entirely different purpose than Taco John’s and other restaurants use it for. Because James wants to use “Taco Tuesday” for reasons entirely unrelated to food, the phrase isn’t generic for the products and services he wants to register it for.
Given the publicity around James’ trademark application for “Taco Tuesday,” it’s no surprise that he received an office action due to the public scrutiny that the USPTO is under. However, with a great lawyer and a solid office action response, James should come out on top.