As anyone who follows LeBron James on social media knows, he is a huge fan of tacos.  Nearly every Tuesday, he posts videos on his Instagram featuring him, his family, and friends sitting down to eat tacos.

This summer, James sought to capitalize on the popularity of his posts by filing an application to register the trademark “Taco Tuesday” in connection with (1) downloadable audio/visual works; (2) advertising and marketing services provided via specific marketing communication means, such as social media; (3) podcast services; and (4) online entertainment services in the field of sports, entertainment, current events and popular culture.

USPTO Rejects Taco Tuesday Trademark Registration

Unfortunately for LeBron, it appears unlikely he will receive the trademark registration.  After being mocked in the media for his trademark application, on September 11, 2019, the USPTO also initially rejected James’ application.  “The applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment message,” the USPTO wrote.

The rejection is not particularly surprising. The USPTO routinely rejects the registration of widely used messages: “Messages that merely convey ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace are considered commonplace.”  See the USPTO’s Trademark Manual of Examining Procedure, § 1202.04(b). “The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services.”

In support of its denial, the USPTO cited examples of several restaurants that use “Taco Tuesday” in their advertising, as well as articles demonstrating that “Taco Tuesday” is a “widely used message used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.”

According to a spokesman for James, he never expected to be able to register the term, but rather wanted to help ensure that he could not be sued for using it. “Finding ‘Taco Tuesday’ as commonplace achieves precisely what the intended outcome was, which was getting the U.S. government to recognize that someone cannot be sued for its use,” the spokesman told ESPN.

James likely believed legal protection may be necessary because Wyoming-based restaurant Taco John’s already holds a trademark registration for “Taco Tuesday.” The Mexican fast-food chain also aggressively protects its intellectual property, with a history of sending cease-and-desist letters to taco sellers that use the phrase.  The trademark applies nationwide, with the exception of New Jersey, where another restaurant had previously secured the right to “Taco Tuesday.”

Trademark Cancellation

While the USPTO’s rejection does serve as evidence that “Taco Tuesday” has become commonplace, the most effective strategy would be to seek the cancellation of Taco John’s registration.  Trademarks that were not generic at the time of registration may later be cancelled if they have subsequently become generic.

Although it is rare for a trademark to become generic, it has happened with enough frequency that it even has a name.  The term “genericide” refers to when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source.  Well-known examples of trademarks that have been deemed generic include aspirin, escalator, thermos, and zipper.

The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic.  Rather, a trademark only becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of good or service irrespective of its source.  Ty Inc. v. Softbelly’s Inc., 353 F.3d 528, 531 (7th Cir. 2003).  In the case of “Taco Tuesday,” James and other users of the phrase can argue that it is no longer linked with Taco John’s, but rather, is a commonly-used phrase for tacos.

For assistance registering your marks, maintaining them, and ensuring their continued protection, we encourage you to contact a member of the Scarinci Hollenbeck Intellectual Property Group.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Nicholas Pellegrino, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.