Sorry, Bron. “Taco Tuesday” Not Yours to Trademark.

I’ve got to be honest. When I first heard that Los Angeles Laker LeBron James was trying to trademark the term “Taco Tuesday,” I had to roll my eyes a few times. I realize he is a King, building his empire of business, media, and entertainment pursuits, and conquering the game of basketball one NBA Final at a time. But not this. “Taco Tuesday” is not yours for the taking.  

James began sharing social media videos during the off-season of his family at the dinner table and, on occasion, high-profile friends, having tacos on Tuesdays. “It’s Taco Tuesday,” James would exclaim. And then he made T-shirts with the slogan, as one does. Thus, the idea to trademark “Taco Tuesday” was born.

Let’s put aside the problematic nature of James’ attempted Mexican accent and “that grito at the end [that] made my racial spidey sense activate like it did when I watched Speedy Gonzales cartoons” as Erick Galindo of L.A. Taco heroically describes. Trademark law alone is enough to explain why he couldn’t claim the term “Taco Tuesday.”

Trademark law applies to the use of words, phrases, symbols, designs, or a combination of these marks, that identifies and distinguishes the source of the goods of one party from those of others. Trademark law’s primary purpose is to protect consumers from confusion in making purchasing decisions. In theory, a trademark helps consumers identify the source of a good and ascertain the quality of products, thus reducing consumer search costs. The idea is that even if you know a lot about a particular distribution of sellers, when you don’t have good information about the quality of a product, the market tends to unravel. Trademark is a solution for this problem.

By these principles, here’s how James’ application to the United States Patent and Trademark Office (USPTO) went down:

Bron: I have a ton of people watching my “Taco Tuesday” videos so I want to trademark the phrase “Taco Tuesday” so nobody is confused about the source of the content the next time they see a “Taco Tuesday” video.

USPTO: “Taco Tuesday”? As in one of America’s most satisfying similarly syllabic alliterations?  Not unlike Froyo Friday, Sunday Funday, and Caturday Saturday[1]? Please explain your goods/services.

Bron: Well I want to use it to make online media and podcasts and stuff.[2] And I have a bona fide intention, and entitlement, to use “Taco Tuesday” in commerce on or in connection with the identified goods/services.

USPTO: For a strong guy like you, that’s pretty weak.

In their denial of the application, the USPTO explained “[‘Taco Tuesday’] 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.”

To boot, the USPTO cited a 2014 blog post entitled “Taco Tuesdays: 10 Mexican Spots To Get Your Fix In NYC,” the promotional menu of a brewery and restaurant founded in Delaware with locations nationwide, and the Happy Hour events page of an upscale hotel in Newport Beach, CA.

Included in the rejection letter were hyperlinks to eight articles from U.S. newspapers showing that “the wording 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.”

But here’s a plot twist: It’s Taco John I have the real qualm with. He has been sending cease-and-desist letters to small restaurants since 1989 when he successfully registered the “Taco Tuesday” trademark for restaurant services. [3] Those of us who grew up on the East Coast have likely never even heard of Taco John’s, which describes itself as “one of the largest Mexican quick-service restaurant brands in America” and was founded 40 years ago by a man named John from Wyoming (please draw your own cultural-appropriation conclusions). It is a relatively small brand as far as fast-food chains go with just 400 restaurants in 23 states, none of which are in California, Texas, or Arizona (the three U.S. states with the highest Mexican American populations), nor anywhere in the tri-state area (unless you count the one in JFK Airport). On its website, Taco John’s claims, “Ever hear of Taco Tuesday®? We started it!”

The tumultuous history of trademarking “Taco Tuesday” is nuanced and the jury is out as to whether or not the USPTO should have ever granted Taco John’s the trademark in the first place. But the bottom line is that “Taco Tuesday” has committed genericide. That is, just because there is a trademark for a phrase does not stop it from becoming commonly known and casually used in everyday expression. When a term becomes “generic” it cannot serve as a trademark. Terms can either be born generic ab initio (which explains why booking.com has been fighting a battle to trademark its generic name all the way to the Supreme Court) or terms can be become generic from casual use (this is what happened to words like asprin, chapstick, kleenex, and frisbee).

From a moral standpoint, “Taco Tuesday” may belong to first-generation Mexican American millennials who created the modern taco craze “in the streets and online, where taco memes became as ubiquitous as the racism against [them].” Or as Gustavo Arellano writing for the L.A. Times puts it, “Taco Tuesday is part of America’s culinary patrimony, a brilliant mix of commerce, culture and comida encapsulated in an alliterative aphorism.”

From the perspective of trademark law, Taco Tuesday is everybody’s. It turns out, James’ application to the USPTO actually went something like this: 

Bron: Taco Tuesdays is everybody’s.

USPTO: True. Carry on.

Following the denial, a spokesperson for James commented that in refusing to trademark “Taco Tuesday,” the USPTO essentially gave James what he wanted all along: protection from liability when he uses the term. “If this opens the door for ‘Taco Tuesday’ to be open to everybody, all the better,” the spokesman said, “the entire purpose of this is to protect Lebron and subsequently everybody else.”

Before James took action, millions of small restauranteurs were liable to Taco John’s for using the phrase “Taco Tuesday.” Presuming most either lacked the resources to file a petition with the USPTO to cancel Taco John’s ownership of the mark, or lacked legal understanding of the grounds for cancellation, there is reason to celebrate the King once again. This is a victory for all who enthusiastically celebrate tacos but especially for restaurants in California where Latinos are over 39% of the population, the largest racial or ethnic group, and surely their cuisine reflects as much.

Admittedly, for an athlete who has vowed not to “shut up and dribble,” showing a willingness to speak out on social justice issues, the microaggressions towards Mexicans and the Latinx community were a misstep on his path to wokeness royalty.

Only time will tell if Latinidad will forgive him, or if Los Angeles will declare him the most loved Laker since Mark Madsen.[1]

[1] A popular but little-used reserve player who spoke to a crowd of nearly 550,000 fans celebrating the Lakers’ second consecutive championship outside the Staples Center in 2001: Les agradecemos y les decimos que el ano que viene lo haremos otra vez. (Translation: We thank you, and we tell you that next year we’ll do it again.) https://www.latimes.com/la-mag-mar052009-goodsport-story.html.

[1] Anyone?

[2] According to the application, the good and/or service was “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels,” in addition to “Online entertainment services, namely, providing a website featuring non-downloadable videos, and social media posts in the field of sports, entertainment, current events and popular culture” and “Downloadable audio/visual works.”

[3] Registration No. 73,788,518