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| Photo by Christine Siracusa on Unsplash |
On
August 15, King James’ company LBJ Trademarks, LLC has filed for a Federal
trademark for “Taco Tuesday” within four different classifications of goods and
services. Looks like there’s a plan in the works for a podcast, “downloadable audio/visual
works” as well as “a website featuring non-downloadable videos, and social
media posts in the field of sports, entertainment, current events and popular
culture.”
There’s
been some public debate about whether or not a
trademark is even possible for that phrase. But that’s already been decided and
the answer was, yes. Taco John’s filed for Taco Tuesday for restaurant services
in 1989 and has maintained the registration since then. They’ve even made some waves sending out cease and
desist letters “for over two decades.”
But
that’s not the potential hiccup for James’ new filing. Research of the USPTO
Trademark database shows that there’s a registered mark out there that could
prove to be problematic.
There
are some services listed that could conflict with an already registered
trademark, Techno Taco Tuesday. LeBron James’ trademark
also filed for “advertising and marketing services…;” however, MNTRA
Entertainment LLC of Las Vegas has had Techno Taco Tuesday trademarked since June
26, 2018 for “advertising, marketing and promotion services” among other
related services. Their first use date for these services is May 20, 2014.
All
of this could prove to be an issue for the basketball player’s filing in that
(1) the marks are similar in Sound & Appearance, (2) the International
Classification is the same, 35, (3) the Services are related, and (4) MNTRA’s
usage has been in use for 5+ years whereas James’ filing was an Intent to Use,
meaning use is not yet being claimed.
In
fact, the USPTO has already refused two other Taco Tuesday marks (same owner)
because of Techno Taco Tuesday’s registration. Here’s what they had to
say:
“In this case,
applicant’s mark TACO TUESDAY is confusingly similar to the
mark TECHNO TACO TUESDAY in Registration No. 5505122.
Specifically, TACO TUESDAY in applicant’s mark is highly
similar in sound and appearance to the TACO TUESDAY in
registrant’s mark in Registration No. 5505122…
Moreover, the applicant’s
mark TACO TUESDAY is wholly encompassed within the
registrant’s mark TECHNO TACO TUESDAY in Registration No.
5505122, thus, purchasers are likely to believe that registrant’s mark merely
identifies an additional line of advertising, marketing and promotional
services. Specifically, purchasers are likely to believe that the mark TECHNO
TACO TUESDAY in Registration No. 5505122 identifies a new line of
advertising, marketing and promotional services offered under the TACO
TUESDAY line of advertising and promotional services. Incorporating the entirety of one mark
within another does not obviate the similarity between the compared marks, as
in the present case, nor does it overcome a likelihood of confusion under Section
2(d)…
In summary, because of the
contemporaneous use of the distinctive phrase TACO TUESDAY, it
follows that purchasers are likely to believe that the marks identify the same
source for advertising and promotional services and advertising, marketing and
promotional services. Thus, the marks are confusingly similar.”
The applicant
for Taco Tuesday didn’t reply to the refusals in a timely manner so it remains
to be seen if there’s a persuasive enough argument out there for the USPTO. And
given this precedence, it seems fairly likely that James’ filing should receive
a similar refusal for the advertising related services.
Comprehensive trademark research will make you aware of any potential problems before you file so you can make an informed decision about your brand.
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