LeBron James attempts to trademark phrase TACO TUESDAY.

A trademark is something that the producer of a product brands products with to distinguish its products from competitor’s products in the marketplace. In the United States using a trademark to brand products is the event that creates a claim to a trademark. The rights associated with a trademark can be further strengthened by registering the trademark with the United States Patent and Trademark Office. A trademark user can register their trademark with the United States Patent and Trademark Office by filing an application for registration. Trademark applications are scrutinized by the United States Patent and Trademark Office to ensure that the applied for trademark meets the requirements for registration and that the trademark is not confusingly similar to another trademark which is already registered.

LeBron James is an internationally known basketball player. He curates an active presence on several popular social media websites. On Tuesdays his family enjoys tacos dinners and Mr. James posts videos of his family eating tacos on his social media accounts. Mr. James has an entrepreneurial spirit and thought it would be a good idea to trademark the phrase TACO TUESDAY. Aug. 15, 2019 a trademark application was filed by Mr. James’ holding company LBJ Trademarks, LLC for the phrase TACO TUESDAY.

Sep. 11, 2019 the United States Patent and Trademark Office issued a non-final office action rejecting the trademark application. The application was rejected on two grounds (1) that the phrase TACO TUESDAY fails to function as a trademark because it is a common place message and (2) because of a likelihood of confusion with another registered trademark.

With respect to the phrase being a common place message, registration was refused because the applied-for mark is a slogan or term that does not function as a trademark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. In this case, 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.

The United States Patent and Trademark Office then listed several websites which demonstrate that other people have been using the phrase TACO TUESDAY long before the application was filed.

With respect to the phrase being likely to be confused with another trademark, the United States Patent and Trademark Office cited ‘TECHNO TACO TUESDAY’ which is registered for advertising and promotional services. United States Patent and Trademark Office fees that the applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. Applicant’s mark creates a commercial impression highly similar to the commercial impression created by the registered mark.

At this point Mr. James has few options. The United States Patent and Trademark Office says that the refusal may not be overcome by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).

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