Lebron James doesn’t miss often, but he missed in his attempt to trademark the phrase “Taco Tuesday.” This off season Lebron has been posting stories on social media about enjoying tacos on Tuesday nights with family and friends. These stories, with Lebron doing his now trademark “Tacooooooo Tueeeeeessssday” yell, have been a huge hit, generating millions of views. Lebron’s company LBJ Trademarks, LLC filed the trademark application for “Taco Tuesday” on August 15, 2019; it was denied less than a month later.
The United States Patent and Trademark Office (USPTO) denied the application in whole and in part. It was denied in whole because according to the USPTO, the phrase 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.” In other words, lots of people use the phrase “Taco Tuesday” to describe themselves eating tacos on Tuesday. Additionally, a portion of the application, which indicated that Lebron would be offering advertising and marketing services in connection with the phrase “Taco Tuesday,” was blocked because there is a registration for “Techno Taco Tuesday” offering advertising and marketing services. This type of denial is a Section 2(d) Refusal – Likelihood of Confusion.
Lebron joins a host of other athletes and celebrities that lack the aegis of the USPTO. Cardi B’s application for “Okurrr,” Tom Brady’s application for “Tom Terrific,” Charlie Sheen’s application for “I’m not bipolar – I’m bi-winning,” and Alabama’s own Minkah Fitzpatrick’s application for “Fitzmagic” were all denied by the USPTO, just to name a few.
Lest you think that the USPTO dislikes celebrities holding trademark rights, there are many successful celebrity trademark applicants. In 2002, rapper and businessman 50 Cent, whose legal name is Curtis Jackson, trademarked “50 Cent” in connection with both goods and services, such as pre-recorded audio and video performances, clothing and apparel, and live entertainment services. In typical where’s-my-money 50 Cent fashion, he was successful in a suit against Taco Bell in enforcing rights to this mark. In 1992, boxing announcer Michael Buffer trademarked the phrase “Let’s get ready to rumble.” He has made hundreds of millions of dollars licensing the phrase for use in movies and video games. And in 2015, the USPTO found no bad blood in singer Taylor Swift’s trademark applications for “This Sick Beat” and “Party Like It’s 1989.”
Be prudent in filing applications for trademarks you think an athlete or celebrity might want, especially if you have hopes of selling or licensing the mark to them should it be approved. Frivolous filings are proscribed; in order to file, you must have a bonafide intent to use in commerce, which is called a Section 1(b) intent to use application, or already be using the mark in commerce, which is called a Section 1(a) actual use application. If you cannot meet either Section 1(a) or Section 1(b) requirement, you’ll be lucky if your application is simply denied. Such a denial happened to a woman who filed a trademark application for “Zion Williamson,” which just so happened to also be the name of the first pick in this year’s (2019) NBA draft. Simply stated you cannot file a trademark as a means from to prevent someone else from using the mark. That doesn’t stop people from attempting to do so, though. So if potentially getting sued and breaking the law is your cup of tea, quaff away.
While you cannot use a trademark as a means to prevent others from using the mark, that doesn’t mean you can’t use a trademark application for purposes less clear than that which are claimed on the application. For example, you can file a trademark with the expectation that it will be denied as a strategic maneuver to potentially avoid future litigation while still not running afoul of the actual use or intent to use requirements for filing. This is precisely the outcome James (read- his legal team) may have wanted with “Taco Tuesday.” By the USPTO declaring “Taco Tuesday” commonplace, this reduces the likelihood a potential plaintiff could prevail on a claim against James and or his companies for damages from alleged illegal use of the phrase in conjunction with profits James has made. Was this the real intent behind James’ filing? Maybe he didn’t miss after all.