Why might a trademark application be denied?

| Nov 8, 2019 | Firm News

LeBron James of the Los Angeles Lakers recently tried to trademark the term “Taco Tuesday.” This came after he posted several videos on social media that showed James celebrating ‘Taco Tuesday’ events with his family and friends.

However, the U.S. Patent and Trademark Office (USPTO) ultimately denied the trademark application that James’ company, LBJ Trademarks, filed. According to ESPN, USPTO denied the trademark because ‘Taco Tuesday’ is too common of a phrase.

Everyone has a right to use common words

USPTO will usually not grant a trademark for words that many people already use each day. This is because everyone has a right to use common words, and it may be difficult to prevent people from using them.

According to media reports, James knew this when submitting his trademark application and his intention all along was to ensure that individuals or businesses cannot be sued for use of the phrase. James’ actions may have targeted Taco John’s, which has had the phrase trademarked in almost every state since 1989.

Other possible causes for application denial

USPTO may deny a trademark application if the mark is too generic or is a foreign term that translates to something generic. However, it may also deny an application if the mark:

  • Could be confused with other marks
  • Is someone’s name or surname
  • Describes the product’s origins
  • Is already the title of a book or movie
  • Could be considered offensive

To avoid a possible application denial, it can be valuable to select a strong mark and complete a thorough trademark search before filing an application. Because USPTO is also likely to deny applications that include errors, it can be important to follow all instructions carefully.

Successfully navigating the trademark application process can be tricky, and there are numerous reasons USPTO may deny an application. However, intellectual property can be some of a business’s most valuable assets, which is why business owners may consider taking additional steps to help make sure their intellectual property receives the protection it deserves.