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King James and TACO TUESDAY

Bylined Articles
Sterne, Kessler, Goldstein & Fox P.L.L.C

Every Tuesday, family, friends, and coworkers gather at restaurants across the globe for the now-beloved “Taco Tuesday”; nothing says a good time like discount tacos and margarita specials!

It turns out that one of basketball’s most beloved players, LeBron “King” James, is just like the rest of us. He shares his love for the favored weekday with videos on his social media celebrating Taco Tuesday nights with his family, friends, and the occasional celebrity guest. 

In August of this year, James applied for a trademark for TACO TUESDAY in connection with downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services. News of the filing was met with mixed reactions, ranging from excitement to cries of cultural appropriation. Mostly there were the typical articles and blog posts criticizing James’ decision to file the application proclaiming that there is no way he could succeed in registering a “widely used term” in everyday speech.

As predicted, the application received a Nonfinal Office Action on September 11, refusing registration on the basis that TACO TUESDAY is a commonly-used slogan and does not function as trademark. The Examining Attorney went on to state that consumers would not view the mark as a source identifier but “as only conveying an informational message.” The TMEP states that a mark is merely informational when consumers are accustomed to use of the mark in everyday speech by a number of sources. In support of this refusal, the Examiner provided evidence of the mark’s vast use.

Perhaps showing his PR prowess, James is now issuing statements explaining that receiving a refusal was the purpose of his filing to begin with. A spokesman for James told ESPN's Dave McMenamin that the application was filed "to ensure LeBron cannot be sued for any use of 'Taco Tuesday'.” 

The refusal is being positioned as allowing James to proceed with new ventures while protecting himself from litigious foes seeking big financial rewards in challenging his pursuits off the court. It is an interesting strategy, and one James evidently sees as a preemptive strike that will allow him to explore different ventures. James has until March 11, 2020 to respond to the Office Action, should his trademark protection strategy change.