The LA Lakers superstar LeBron James recently took a big “L” with the United States Patent and Trademark Office (the “USPTO”) in his attempt to trademark the phrase “Taco Tuesday.”1
James uses the phrase on his Instagram page “to let people know it is his family’s taco night,”2 and filed an application on August 15, 2019, for use on downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services.3 The application was filed under an intent-to-use basis, meaning that, even though he isn’t currently using the mark in interstate commerce, he has a bona fide intention to use the trademark in commerce in connection with his goods and/or services in the near future.4
The USPTO issued an office action on September 11, 2019. Before we go any further let’s break down that sentence a bit:
- An office action is a letter sent by the USPTO to a trademark applicant that addresses any issues the examining attorney may have found in the applicant’s application prior to registration on the Principal Register.
- The Principal Register is the official record of trademarks maintained by the USPTO.
- An office action lists any reasons found by the examining attorney that provide a basis for an initial refusal of the registration of the trademark but is not generally an immediate refusal.
- An applicant usually has a chance to respond to the issues raised in the office action in an attempt to overcome the initial refusal.
In James’ case, the examining attorney noted several issues with the application, including the failure of the phrase to function as a trademark, and the fact that, because of a previously registered mark that is the same or substantially similar to James’ proposed trademark, the registration of the mark as applied for in James’ application would cause a likelihood of confusion in the marketplace.5
In the writing the office action (and stating the obvious), the examining attorney wrote that “Taco Tuesday” is a commonplace message, citing links to various restaurants who use the term to promote events, in addition to newspaper articles demonstrating that the phrase is a widely-used message “used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.”6 The office action concluded that “Taco Tuesday” does not function as an identifier of James’ goods and/or services, but rather “merely conveys an ordinary, familiar, well-recognized concept or sentiment.”7 Accordingly, the examining attorney used the fact that the phrase was common-place to initially refuse the registration of the trademark by concluding that it was incapable of functioning as a trademark (The examiner neglected to reference the cafeteria menus of elementary and middle schools everywhere in the communication.)
The office action also noted that James’ proposed trademark is “confusingly similar” to a mark that was registered in 2018 for “Techno Taco Tuesday,” for use on advertising, marketing, and promotion services.8 The USPTO will refuse registration of any trademark that is so similar to an already registered trademark that it is likely “consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.”9 Therefore, the examining attorney cited the potential of consumer confusion as an additional basis to initially refuse the registration of the mark.
Although not noted in the office action, the phrase “Taco Tuesday” has been registered with the USPTO for use in connection with restaurant services since 1989.10 The LA Times reported that Taco John’s “committed the culinary version of Columbusing” by trademarking the phrase and that the company is known to send cease-and-desist letters to anyone who uses it to “promote the simple act of offering a special on tacos on the second day of the week.”11
Generally, receiving an office action from the USPTO does not mean the game is over for a trademark application. James and his attorneys have six (6) months to respond to the office action if they want to challenge the examining attorney’s decision. However, the office action brought to light a few different claims that will be difficult to overcome, including the fact that, notwithstanding the previously registered trademarks, the phrase “Taco Tuesday” is so commonly used that it is incapable of functioning as a trademark. Therefore, James and his legal team are going to have to come up with a solid defense if he wants to keep his trademark application in play.
- LeBron James Tried to Trademark ‘Taco Tuesday,’ but Got Swatted Away; Mihir Zaveri; The New York Times; September 11, 2019; available at: https://www.nytimes.com/2019/09/11/style/lebron-taco-tuesday-trademark.html
- LeBron James Tried to Trademark ‘Taco Tuesday,’ but Got Swatted Away, supra
- TACO TUESDAY, Serial Number 88579771
- 15 U.S. Code § 1051(b)
- USPTO Official Office Action September 11, 2019, Serial Number 88579771
- TECHNO TACO TUESDAY, Registration Number 87547212
- 15 U.S.C. §1052(d)
- TACO TUESDAY, Registration Number 73788518
- Why LeBron James should free ‘Taco Tuesday’ from its trademark shackles; Gustavo Arellano; The Los Angeles Times; September 3, 2019; available at: https://www.latimes.com/food/story/2019-09-03/lebron-james-taco-tuesday-trademark-taco-johns