FREE TACOS! LEBRON’S ATTEMPT TO TRADEMARK “TACO TUESDAY” FAILS
Here at Martin IP Law Group we love tacos so much that we celebrated Katlyn’s last day of work with our firm by hosting a taco bar, on a Tuesday no less! Thanks to the U.S. Trademark Office, we were able to use the name “Taco Tuesday” without fear of stepping on LeBron’s rather large feet.
In August, LBJ Trademarks, LLC, owned by LA Laker’s superstar LeBron James filed a U.S. Trademark Application attempting to register the phrase “Taco Tuesday” for a number of goods and services including downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services. On September 11, 2019, the USPTO rejected LeBron’s application to register “Taco Tuesday” on two separate grounds.
The primary grounds for refusal was that the phrase is a commonplace message that cannot function as a trademark or service mark to indicate the source of LBJ’s goods or services and differentiate them from the goods and services of others. The trademark examiner cited a variety of sources where “Taco Tuesday” was used to convey an “ordinary, familiar, well-recognized concept or sentiment.” Among the sources cited were several restaurants that used the phrase, and numerous newspaper articles showing wide usage of the phrase Taco Tuesday by various parties to express enthusiasm for tacos. In the end, the examiner concluded, correctly in my opinion, that Taco Tuesday conveys an informational message and would not be perceived by consumers as representing a particular party’s goods or services.
Registration was also refused based on the likelihood of confusion with U.S. Trademark Registration No. 5,505,122 for TECHNO TACO TUESDAY. In the refusal, the examiner referred to the two primary considerations for likelihood of confusion – the similarity of the marks and the similarity of the goods/services. Other than the omission of the word “Techno”, the marks are identical. The examiner concluded that, notwithstanding this difference, LBJ’s mark was “highly similar to the registered mark.” Further, the registered mark TECHNO TACO TUESDAY is registered for use in connection with a number of services including “advertising, marketing and promotion services”. As with the mark itself, the good/services need not be identical to find a likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods or services emanate from the same source.” Here, the examiner concluded that LBJ’s services are “highly similar” to the registrant’s services.
It’s also interesting to note that US Trademark Registration No. 1,572,589 for TACO TUESDAY used in connection with restaurant services was issued in 1989 to Taco John’s and is still a registered mark today. One has to wonder if, given the comments of the examiner in LBJ’s trademark application, that registration has succumbed to genericide (see our X/x/x blog post for further description on that issue).
The ball is now in LeBron’s court. He has until March 11, 2020 to respond to the refusal to register Taco Tuesday. Maybe if he spent a little more time on the court, rather than looking for ways to get into court, he could lead the talented Lakers to another NBA title.
Do you have a phrase or slogan that is of value to you or your company? If so, it might be registrable as a federal trademark which gives you several competitive advantages. Contact us to see if your phrase or slogan is appropriate for protection.
