Taco Tuesday Trademark Failure Results in a Win
In August, LeBron James applied to trademark the phrase “Taco Tuesday” after he began to post weekly videos on social media with his family eating tacos on Tuesdays.[1]
James stated that his application was not intended to stop others from using the term; he simply wanted to protect his company, LBJ Trademarks LLC, from potential lawsuits if the company decided to pursue ideas.[2] James is not alone in his quest to trademark the term—twenty-five filings to trademark it are either pending or dead.[3]
While the origins of the term are unknown, it was first trademarked in New Jersey in 1982, and in 1989, a Wyoming restaurant chain named Taco John’s filed for a trademark of the term.[4] Today, the trademark is not very strong because Taco John’s has not sufficiently defended its argument that the phrase is unique to its restaurant.[5] Taco John’s does try to protect its trademark by sending cease and desist letters to anyone who uses the phrase to promote their business.[6] This defense, however, is increasingly difficult due to the wide popularity of the phrase by restaurants and bars across the country.[7]
The purpose of a trademark is so that a name or phrase can be uniquely distinguishable from others.[8] This then begs the question: why would LeBron James, a famous basketball player, want to trademark “Taco Tuesday?” Additionally, if an actual taco restaurant were not successful in trademarking the term, what makes his claim any different?[9] The USPTO concluded that James’ claim was not different and rejected his request to trademark the phrase because it is a commonplace term.[10] James did not state his plans for the trademark but wanted to “keep his options open”[11] for future business ventures after his Taco Tuesday videos went viral on social media platforms. However, because it was determined to be a commonplace term, this also means someone cannot be sued for its use.[12] After James’ request was denied, attorney Josh Gerben disclosed the filing and stated that James intended to continue posting on social media and create a “Taco Tuesday” podcast.[13]
James’ spokesman stated that the filing intended was simply to certify that James could not be sued for the use of the phrase and the failed result was the intended outcome.[14] This strategic move seems to have been motivated by the possibility of people attempting to sue James over his use of the phrase in hopes of a cash settlement. James, a multimillionaire, could be a potential target for frivolous suits if he continued to use the phrase and did not have the protection of this outcome. This ruling serves as automatic dismissal of potential litigation over his use of the phrase. Thus, if James chooses to pursue his podcast plan—or any other activities that involve his use of the phrase—he will be protected from being sued.[15]
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