Who doesn’t love a good taco? I mean there’s an entire day dedicated to it! Apparently superstar NBA champion, LeBron James is also a huge fan! This summer, in addition to his work with his charter school, IPromise and getting ready for this year’s basketball season, Lebron has spent Tuesdays declaring his appreciation for Taco Tuesday.
James loves Taco Tuesday so much that on August 15th he filed a trademark for the phrase. We know that Lebron is much more than just an athlete, he’s a businessman *in my Jay-Z voice*. Not since he took his talents to South Beach has there been so many questions.
- He didn’t create the phrase, how can he trademark it?
- There’s already a trademark for Taco Tuesday, doesn’t this mean his application will be denied?
- Does this mean I can’t use the phrase “Taco Tuesday” anymore?
He didn’t create the phrase, how can he trademark it?
Trademarks protect brand identifiers, those things that help consumers identify the source of a good or service. Names, logos, and tag lines are common examples of brand identifiers. Common words and phrases are often used by businesses as trademarks. The key is using the word or phrase in a unique manner that is not similar to anyone else providing the same or similar product/service as you. According to his application, King James intends to use the mark in association with:`
- Downloadable audio/visual works
- Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels
- Podcasting services
- Providing a website featuring non-downloadable videos, and social media posts in the field of sports, entertainment, current events and popular culture
Because these uses have nothing to do with food, the mark could be considered an arbitrary mark thus registerable with the United States Patent and Trademark Office. (Think Apple, the computers not the fruit)
Click here to learn more about the different types of trademarks.
There’s already a trademark for Taco Tuesday, doesn’t this mean his application will be denied?
This question is a little trickier. One misconception about trademarks is that having a federal trademark gives the owner the right to exclude everyone in all situations from using the mark. This is not true. Federal trademarks give the owner the right to exclude other businesses doing business in the United States in the same or related field from using the same or similar mark.
This means a previously registered trademark isn’t an automatic denial for a new application. In these situations, the USPTO has to decide whether consumers are likely to confuse the new application for the already registered mark. Also, it is possible for the USPTO’s examining attorney not to find any conflicting marks that would prevent registration and the new application still not approved.
For example, there is a pending application for Taco Tuesday in connection with handbags and wallets. After the application was approved for publication by the examining attorney, Taco John Seasonings, LTD, who has held a registered trademark for Taco Tuesday since 1989, filed an objection to block registration. Taco John has filed several objections in the past to prevent other applicants from registering Taco Tuesday.
Click here to learn more about objections and the trademark process.
Does this mean I can’t use the phrase “Taco Tuesday” anymore?
Let’s set this straight right now. If LeBron’s application is approved it won’t stop the world in general from celebrating Taco Tuesday or using the phrase. It would, however, prevent people from creating podcast or websites with content relating to sports, entertainment, current events or popular culture of the same or related name.
People had the same outrage when they learn Prince’s estate filed a trademark for the color purple. Watch the video below to hear my response.
I know that a lot of people are not fans of LeBron’s latest move but I believe it’s the perfect example of what to do when something you do becomes a viral success. Watch the video below to learn more.
Do you have questions about trademarks and how they work in your business? Schedule an appointment so we can talk.