LeBron James Recently Sought to Capitalize on the Popularity of his Social Media Posts by Filing an Application to Register the Trademark “Taco Tuesday”
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.
If you have any questions or if you would like to discuss the matter further, please contact Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.
BESS Project Agreements: Allocating Risk Among Developers, EPC Contractors, and Equipment Suppliers
Developers, engineering, procurement, and construction (EPC) contractors, and equipment suppliers each play a critical role in completing a BESS project. However, when equipment costs rise, deliveries are delayed, or regulations change, determining who bears the financial consequences can become contentious. Well-drafted project agreements are essential to sound risk allocation. Key Takeaways This article is Part […]
IP Infringement: What Steps Can You Take If You're Affected?
IP infringement occurs when someone uses your intellectual property without your permission or beyond the scope of the permission you granted. Common examples of IP infringement include copying a product’s patented features or using a trademarked logo in a way that is likely to confuse consumers about the source or affiliation of goods or services. […]
Public Allegations, Unfinished Investigation: What New Jersey Businesses Should Do Next
When facing public allegations of wrongdoing, companies should not let the speed of the public conversation dictate the speed of an investigation. An investigation designed to confirm a preferred narrative rather than establish the facts can create serious problems later, particularly if litigation, regulatory scrutiny, or employment claims follow. Key Takeaways When public allegations surface […]
BESS Interconnection: Managing Grid, Cost, and Schedule Risk
For battery energy storage system (BESS) developers, securing equipment and site control is only part of the development equation. A project must also connect to the electric grid, and increasingly, BESS interconnection is one of the biggest sources of schedule, cost, and contractual risk. Key Takeaways This article is Part 3 of our Battery Storage […]
Navigating Director and Officer Liability in Times of Financial Distress
Director and officer liability increases sharply when a company is in financial distress. Decisions that would draw little attention in a healthy business can later be challenged by creditors, shareholders, bankruptcy trustees, and regulators as breaches of fiduciary duty, fraudulent transfers, or oversight failures. Understanding where that exposure comes from, and how to manage it, […]
Before You Buy: Managing Real Estate and Permitting Risk for BESS Projects in New York and New Jersey
For developers pursuing battery energy storage system (BESS) projects, finding the right property is only the beginning. BESS site selection is as much a legal and transactional exercise as a real estate decision, with risk analysis central to the project’s ultimate success. Key Takeaways The core questions for BESS site selection in New York and […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
