Ohio State was denied the trademark registration to “THE” and LeBron James lost in an attempt to register “TACO TUESDAY.”
Neither outcome should be shocking, whether you are a trademark attorney or not.
Ohio State filed an application to register “THE” in connection with clothing. A month after filing, the examining attorney shot it down because of (1) a prior filed application and (2) it fails to function as a trademark.
Focusing on point 2, the examining attorney said that consumers would view the mark as a decorative or ornamental feature of the goods instead of as a trademark to indicate the source of goods and distinguish them from others.
This was the right conclusion.
Moving on to LeBron. He filed an application to register “TACO TUESDAY” in connection with a variety of goods/services including social media marketing, podcasting and downloadable audio/visual works.
Again, a month after filing, the examining attorney said, not happening, also because it fails to function as a trademark. Here, it was deemed that “TACO TUESDAY” is a commonplace message.
The examining attorney said that “TACO TUESDAY” is an expression used by a variety of sources that conveys an ordinary and well-recognized concept. Terms that convey informational messages are not registrable.
LeBron and his advisors tried to backtrack after receiving the disappointing news and told sports business reporter Darren Rovell that LeBron “wasn’t trying to trademark Taco Tuesday so he could wholly own it. His team was trying to trademark it to legally protect him from being sued if he used phrase in future projects. Refusal isn’t end, team will seek further clarification.”
While the “insider” who spoke with Rovell is technically correct, the initial refusal is not the end of the road for the trademark application and LeBron has 6 months to respond to the Office Action, this application was destined for failure from the start. The justification for filing also does not make sense whatsoever.
People do not receive registrations as a defensive measure based on possible future use. In reality, LeBron should have withdrawn the application after filing it. That said, he has paid a small price by way of an application fee with the U.S. Patent and Trademark Office in exchange for a lot of press surrounding his use of “TACO TUESDAY.” It really is not what I would consider to be “bad press.” No one is going to stop cheering for LeBron just because he may not succeed with a trademark filing.