There’s been talk in the media lately about basketball star, Lebron James, trying to register the phrase “Taco Tuesday”. Most recently the news is all about the USPTO (US Patent and Trademark Office) denied his trademark registration. While all of the headlines about it are somewhat true, it is a bit misleading and if you do some digging it’s more interesting.
So let’s talk about the trademark application and why it got “denied” by the USPTO.
LeBron will not “own” the phrase Taco Tuesday.
First, let me clear up some common misconceptions about trademarks. I hear a lot of people freaking out saying, “So I won’t be able to say Taco Tuesday anymore because Lebron James owns it?” No. A trademark doesn’t mean you “own” the word. Trademarks are specific to the goods and services with which they are registered. So unless Lebron is getting the trademark to use with his new Mexican restaurant, the local Mexican joint down the street can still use the phrase for their taco specials. There’s no trademark that can prevent you from using a word in your day to day life.
If you take a look at the trademark application, you can see that Lebron is intending to use the phrase in connection with advertising and marketing services, podcasting services, and online entertainment. So if it gets registered, his trademark will only apply to those services and related services.
Headlines are saying, “Lebron James Taco Tuesday trademark denied!” and “USPTO says Lebron can’t trademark Taco Tuesday!” Well, not to say all those people are all completely wrong and spreading false information, but those people are kind of wrong and spreading misleading information.
LeBron’s application was denied, but he’s still got some options.
The USPTO issued an office action for the trademark. Yes, an office action is a technically a sort of preliminary denial or rejection of the registration, but it doesn’t mean the registration is completely dead. It doesn’t mean that Lebron is completely out of luck. Probably at least half the trademarks I have worked on have received an office action similar to his and the majority of them have gotten registered anyway. I mean I am really good *pats self on back* but the point is the office action isn’t the end of the line. Lebron, or rather his attorneys, have six months to respond to the office action and try to overturn the rejection. If they do that and the USPTO doesn’t accept that response, then they will issues another action, a final office action, and Lebron will still have an opportunity to appeal to that. So this is not the end of the story for Taco Tuesday.
TACO TUESDAY fails to function as a trademark
The first reason the office action is being denied is that the USPTO says it doesn’t function as a trademark because it’s a common placed term that is widely used and it merely conveys an informational message. It’s a “widely used message used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.” Due to that, they don’t really consider it a trademark. That portion of the denial of the office action is what most outlets seem to be focusing on. But there’s more to the story…
The USPTO also based the denial on a likelihood of confusion with another trademark, TECHNO TACO TUESDAY for advertising, marketing, and promotional services, and live parties and events. The USPTO believes since the services are so closely related, that consumers may perceive “Taco Tuesday” as just being a shortened form of “Techno Taco Tuesday” and would confuse the two.
Back to the issue of it not functioning as a trademark. The USPTO argues that the phrase is merely informational: if consumers are accustomed to seeing a phrase used in connection with goods and services from many different sources, then it’s probably not going to function as a trademark. So that means nobody can trademark Taco Tuesday then, right?
Ha! Wrong. There are actually FOUR registered trademarks for Taco Tuesday and FIVE pending registrations that have all gotten further along than Lebron’s. I checked, and none of them have received an office action with this same kind of refusal similar to how Lebron did. So how in the world can all those trademarks be allowed but Lebron’s is denied? Well…that’s just part of the fun of trademarks. Identical trademarks can have completely opposite results.
If I had to guess, I think Lebron is going to end up getting the trademark registered. If he wants to continue to fight for it. The fact that there are other registered trademarks out there for TACO TUESDAY certainly supports that the USPTO’s refusal should be reversed. While all of us use the phrase “Taco Tuesday” to express our joy and love for tacos and Tuesday’s, I’m venturing to guess that Lebron’s business ventures aren’t going to have anything to do with actual tacos or Taco Tuesdays as we think of it when we say “Taco Tuesday.” In that sense, Lebron’s team could make an argument that Taco Tuesday isn’t a commonplace term or that it isn’t merely informational as it relates to the services that Lebron will use it for.
Even though the USPTO thinks TECHNO TACO TUESDAY and TACO TUESDAY are pretty much the same thing, there are strong arguments to be made to support that the addition of the word “techno” being in there is strong enough to differentiate the two. Also, Techno Taco Tuesday is apparently used for techno-specific events. Again, I don’t know Lebron but I’m going to guess that his content won’t be focused on techno. So there are some arguments to be made there, too.
Maybe they just hate LeBron?
The last thing I want to point out is something I find very interesting: the application was filed on August 15. The office action was issued on September 11. The USPTO issued the office action not even a month after the application was filed.
The standard USPTO procedure is that an examining attorney will be assigned to your trademark within about 3 months or so. I have filed close to a hundred trademark applications. Never have I heard anything back in less than 3 months. Maybe an examining attorney has something out for him or doesn’t like the Lakers? Who knows, but I am NOT happy about it.
Despite what you may have heard, this is not the end of the road for Lebron and Taco Tuesday. He has 6 months to respond to the office action. So by March 11th, we’ll know if Lebron threw in the towel or pursued his taco fight. So tune in to my YouTube channel around that time and/or check out my blog because I will be talking about it! In reality, Lebron will win this fight either way. If he gets the trademark then that’s great. Though even if he doesn’t, it’s an official opinion that Taco Tuesday is a commonplace term that can’t function as a trademark. The USPTO said so. So that means Lebron can’t be sued for trademark infringement for using it. So, in the end, a trademark will be beneficial for him and he’s probably not going to have to stop using Taco Tuesday.
Got your own version of Taco Tuesday that you want to protect? Then check out Brand Bombshell, our all-inclusive trademark registration package.