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Wing Wednesday, Yes, But No Taco Tuesday

March 12, 2020

Richard Caira - Information Technology Attorney - Lawyer Raleigh NC
Morningstar Law Group Partner Richard Caira

Last year, shortly after news broke of Tom Brady’s unsuccessful attempt to register the trademark “Tom Terrific” (see my article about that here), there were reports of a few other intriguing, high-profile sports-related trademark matters that seemed deserving of some additional commentary.  

Possibly not coincidentally, given Brady’s historic distaste for the State of Ohio (or at least THE Ohio State University), both of these other cases relate to that state. The first was LeBron James’ attempt through his Akron-based company LBJ Trademarks, LLC in mid-August 2019 to register the mark TACO TUESDAY for use with a host of different goods and services, including “downloadable audio/visual works” (presumably to address the ability of users to view archives of his Instagram and other social media posts in which he uses the phrase “Taco Tuesday”) and “advertising and marketing services provided by …social media, search engine marketing … [etc.],” among others. See http://bit.ly/lebron_filing_denied.

Apparently, James generally records videos for his social media posts on Tuesdays at the James household, when tacos are regularly served for dinner, and which is all well and good. However, as in Brady’s case, LeBron’s stated justification for his desire to register TACO TUESDAY as a trademark seems pretty suspect. 

In this case, the United States Patent and Trademark Office rejected James’ application to register the “Taco Tuesday” mark on the grounds that the phrase at issue is so commonplace that it “does not function as a trademark or service mark to indicate the source of [James’] goods and/or services and to identify and distinguish them from others.” This reason for rejection supports the principle that terms and expressions merely conveying an informational message aren’t capable of being registered.  

Why on earth, you may ask, would LBJ, arguably one of, if not THE (pronounced “thee,” as in THE Ohio State University) greatest basketball players of all time try to register the mark TACO TUESDAY? Upon receiving the USPTO’s rejection, James revealed through a spokesman (unlike Brady, who directly commented himself but should probably also consider hiring a spokesman for such purposes) that he actually accomplished his ultimate goal of underscoring the fact that the phrase “Taco Tuesday” is, in fact, incapable of being registered as a trademark or service mark, and thereby rendering illegitimate the possibility of anyone suing him for trademark infringement based on his use of that phrase in his Instagram posts. Go figure. This alleged and very proactive approach to apparently cut off at the pass those who may contemplate suing James in the future for trademark infringement was either genius or a convenient excuse that doesn’t make him look dumb for submitting the application to register the mark in the first place. 

Nevertheless, James’ lawyers and the USPTO are probably both right in that the phrase “Taco Tuesday” is incapable of serving as a trademark or service mark given the commonplace and descriptive nature of the phrase, which no one should be able to have the exclusive right to use and thereby prevent others from using in order to describe their own goods or services. Note, however, that this is absent the possibility of the long use of a mark by an applicant with certain goods or services which the applicant may be able to argue serves as evidence of the mark’s acquired distinctiveness over time. I suspect this potential argument wasn’t actually the case at the time James’ lawyers actually submitted the application to register the mark, however. My guess is that James initially thought it would be a good idea to try and register the phrase as a mark given his actual “use” of it in his self-filmed Instagram videos despite what trademark law declares is legitimate use as an actual trademark or service mark (namely, to indicate the source of goods or services), and that when the application was rejected by the USPTO for the reasons stated above, he probably justifiably estimated that it would be a losing fight to try and argue otherwise to the USPTO and simply conceded the legitimacy of the USPTO’s argument and then twisted that argument into what he thought might reflect some good press. Or at least some press. Call me a skeptic.

Interestingly, and perhaps serving as potential corroborating material for James’ lawyers to cite if they decided to respond to the USPTO’s rejection instead of simply rolling per James’ comments to the media (their response was due yesterday – March 11 – so it will be interesting to see in the coming weeks if they did, in fact, respond), back in 2010 Pizza Hut successfully registered the mark WING WEDNESDAY for use with “cooked and prepared chicken for consumption on or off the premises” and for “restaurant services.” The file for that mark indicates that the USPTO initially rejected registration of the mark on the Principal Register on the basis that the mark was “merely descriptive” of the goods and services Pizza Hut included in the application, but generously indicated that Pizza Hut could amend its application so that the mark would register instead on the Supplemental Register.  Pizza Hut did just that, giving it the benefit of a federal trademark registration (albeit with less substantive rights had the mark registered on the principal register), which includes the right to use the ® symbol with the mark, as well as giving it the opportunity to continue to use the mark with the goods and services listed in the registration such that Pizza Hut could argue at some point in the future in connection with a new application to register its mark on the Principal Register (by submitting supporting evidence), that the mark has “acquired distinctiveness” given Pizza Hut’s continued use of the mark over time with those goods and services.  Smart move, Pizza Hut. 

Like the Brady “Tom Terrific” case, this case also begs the question about utilizing the federal trademark registration process as a stated proxy for accomplishing what could arguably instead be accomplished in a quicker and more practical manner given the unbridled access to the media these two sports icons have. Or it underscores the debatable credibility of both James’ and Brady’s excuses upon learning of the respective rejections by the USPTO to register each of their marks.

Finally, as an intriguing postscript and in what was perhaps an additional brilliant positive self-marketing move in the face of a very negative situation, on (Taco) Tuesday, October 29, LeBron sent a taco truck to firefighters responding to the October 2019 Getty Fire in southern California (which actually ended up forcing James and his family to evacuate their home). I don’t think that qualifies as evidence of use, though.