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LeBron James’ Trademark Application for Taco Tuesday Denied

Orange County – Taco Tuesday is a day that many look forward to. LeBron James in particular has been very enthusiastic about Taco Tuesday in recent months. LeBron often uses the term on Instagram to share with his followers when it is his family’s designated taco night. LeBron seems to enjoy the day so much that on August 15, 2019 he filed a trademark application for Taco Tuesday. However, on September 11, 2019, the United States Patent and Trademark office (USPTO) issued an office action refusing the application.

LeBron filed the trademark application through a company called LBJ Trademarks, LLC. The application seeks protection for the use of the phrase in different platforms, such as downloadable audio content, visual projects, podcasts, entertainment services, and posts on social media.

The USPTO has denied the application by claiming that Taco Tuesday fails to function as a trademark because Taco Tuesday is a commonplace expression that merely conveys a well-recognized event. In the office action, the USPTO presented several articles that use the term as describing an event rather than denoting a trademark. In other words, the USPTO has claimed that Taco Tuesday is commonly used to express the enthusiasm that people have for tacos by celebrating them on a dedicated weekday.

Apart from the failure to function refusal, the office action also refuses registration of the trademark in Class 035 for marketing services because of a pre-existing Techno Taco Tuesday trademark registration in that class. The Techno Taco Tuesday trademark registration is owned by an entertainment company in Las Vegas.

A spokesman for LeBron made statements about the denial of the trademark application saying that LeBron only wanted to trademark the phrase to protect himself from liability if he uses it in projects and media publications. This sort of reasoning is not valid however, because owning a trademark registration does not mean that you cannot be liable for trademark infringement.

Complicating matters further for LeBron is the fact that Taco Tuesday is already a registered trademark owned by Taco John’s Seasonings Limited Partnership for use in Class 042 in relation to restaurant services. LeBron’s trademark application does not include this class which is why the office action did not cite this pre-existing registration. However, it does appear that Taco John’s could assert that consumers are likely to be confused between the two uses. In fact, Taco John’s has a history of opposing any use of Taco Tuesday by other companies especially those filing trademark applications. So, a trademark battle may be brewing.

LeBron has six months to respond to the office action and if it is approved and published for opposition, Taco John’s will then have 30 days to file an Opposition.

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