Taco Tuesday is a phrase that many companies would love to trademark. LeBron James has recently made this phrase famous through his social media videos of his family enjoying tacos every Tuesday. In 2019, LeBron James was unsuccessful in registering “Taco Tuesday” as a trademark and was denied by the United States Patent and Trademark Office (USPTO). James wanted protection from liability if he used “Taco Tuesday” in certain projects, like podcasts and other media sources.
Ultimately, the phrase has been trademarked since 1989. The phrase is owned by two entities, Taco John’s and Gregory’s Bar & Restaurant. Taco John’s owns the trademark in 49 states and Gregory’s Bar and Restaurant owns the trademark in New Jersey. Typically, a trademark is established on a first come first served basis, but it is possible to have two separate businesses own the same trademark. For example, when one company used a business name first, but another company registered the name before them. If the company can prove that they had the business name first, then they would be able to use the business name in their geographic market. The company would not be able to use the mark outside of their geographic market though. This is how Taco John’s and Gregory’s Bar & Restaurant own the “Taco Tuesday” trademark.
Recently, Lebron James teamed up with Taco Bell to pursue the revocation of the trademark. Together the pair want to “liberate the phrase for restaurants nationwide.” James said in a statement. "'Taco Tuesdays' create opportunities that bring people together in so many ways, and it's a celebration that nobody should own." The pair even created a commercial about the revocation that aired during Game 2 of the NBA Finals. In their petition, they will have to prove that the phrase “Taco Tuesday” is a commonplace message. A commonplace message can never be a trademark because the expression merely conveys an ordinary, familiar, well recognized sentiment. In other words, the more common a term or phrase is used in everyday speech, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services. On the other hand, Taco John’s and Gregory’s Bar & Restaurant will have to prove that the mark identifies their goods or services. It is how customers recognize them in the marketplace and distinguishes them from other competitors.
The case is currently before the USPTO’s Trademark Trial and Appeal Board (TTAB), which can only decide if the trademark registration should remain in place. If Taco Bell is successful then any person or restaurant in the country will be allowed to offer Taco Tuesday promotions.
Chris D'Avanzo is a 2L at Hofstra Law School and can be found on Twitter @_chrisdavanzo.
