Can you trademark a common term? The answer is no, or at least you can’t trademark anything that the United States Patent and Trademark Office considers common. Just ask LeBron James, who tried to trademark ‘Taco Tuesday’. Even someone as well-known as LeBron can’t get past the iron rules of the USPTO. The office determined that the phrase 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.”
Why can’t you trademark a common term? Because when you get a trademark you get the right to block other people from using whatever you’ve trademarked. Just imagine if you couldn’t use ‘Taco Tuesday’ to promote an event for your party, in a restaurant, etc.
But what if he spelled it like he does on some of his t-shirts, with extra letters and backwards? Nope. The USPTO would still consider that to be too close to the original ‘Taco Tuesday’. If it was something that could be trademarked it could still be denied if your desired trademark is too close to another trademarked term. The determination would be that the mark would be ‘confusing’ in regard to the existing trademark.
But what if you really want that trademark that someone else has? There are a few things you may be able to do – trademarks are granted in classes of goods, so if someone has the trademark in one class you may be able to get it in a different class, but the classes describe how you’re using it so you can’t pick an unrelated class. You may be able to change the name enough so it’s no longer ‘confusing’ but still keeps components you want. Or you may be able to buy or license the trademark from the current owner.
LeBron has been using ‘Taco Tuesday’ in his social media (his videos are hilarious and the food looks really good). The good news for LeBron is that even though he can’t trademark ‘Taco Tuesday’, no one else can either, so he can use it freely.
His t-shirts are another story; they’re extremely creative and original.
At Gearhart Law we would strategize with LeBron on his intellectual property protections. We would probably advise him to apply for design patents for his t-shirt designs, and possibly have an artist create a logo that he could trademark.
At any rate, you can use ‘Taco Tuesday’ for your next party without fear. Yum yum.
*As with every post, this is not intended to be legal advice. If you have a question or issue contact an attorney for the advice you need.