It was recently reported that on August 15 LeBron James filed an application to trademark the phrase “Taco Tuesday,” and it’s already been denied. But even before that decision was made, he had at least one challenger who hired a lawyer.
Like one of the many NBA defenders he faces during the season, a Mexican restaurant out of Wood Dale, Illinois, called Taco Tuesday, Inc. tried to block James’ trademark attempt by filing a letter of protest. The restaurant has been in business since April 2016, according to a report, and they’ve been using the name since then.
In the letter, which landed in the United States Patent and Trademark Office’s file on Sept. 9, the Midwestern eatery said they’ve spent a considerable amount of money promoting Taco Tuesday as a business as well as a brand name.
The restaurant also claimed the phrase is often used on their social media platforms as a marketing tool, and they’ve been on the show “Chicago’s Best,” which showcases some of the city’s top food spots.
But Taco Tuesday, Inc. won’t have to do any more in their attempt to stop the trademark, thanks to the USPTO who explained why they denied it.
“The applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment message,” they wrote on Wednesday.
“‘Taco Tuesday’ is a widely used message used by various parties to express enthusiasm for tacos by promoting and celebrating them on a dedicated weekday,” the USPTO continued.
A spokesman for James later spoke to ESPN and said the hoop star actually accomplished his goal with the filing of the trademark, because he didn’t want to get sued.
“[The filing was] to ensure LeBron cannot be sued for any use of ‘Taco Tuesday,'” the spokesperson relayed. “Finding ‘Taco Tuesday’ as commonplace achieves precisely what the intended outcome was, which was getting the U.S. government to recognize that someone cannot be sued for its use.”
James, for his part, has been attached to the “Taco Tuesday” phrase ever since he began posting videos of himself and his family enjoying the Mexican dish some time ago. They also yell out the phrase and wear it on T-shirts.
If the trademark was granted, the NBA star said he planned to use it for online advertising, blogging, a podcast and “online entertainment services” that surround sports, pop culture and current events.
With Taco Tuesday, Inc., they were concerned that if James did get the trademark, they wouldn’t be allowed to use the phrase during promotions and it would’ve damaged their business.
“Protester’s company would be crippled if precluded from using its own business name in Internet marketing channels,” a document read.
Meanwhile, Taco Tuesday’s attorney said the Los Angeles Laker never had any stake in the phrase, and posting videos about how much he loves tacos never changed that.
“Presumably the owner of the Applicant company enjoys eating tacos. Tens of millions of Americans enjoy eating tacos. The quality of being a person who enjoys eating tacos (and posting to social media about one’s experience in eating tacos deemed delicious) does not give rise to a cognizable claim to trademark ownership,” the attorney stated.