Last week we wrote a post about LeBron James’s failed attempt to register Taco Tuesday trademark. The USPTO rejected LeBron’s application based on a finding that “Taco Tuesday” is a “commonplace message.” Despite this rejection, a spokesman for Mr. James described this stint as a win. ESPN reported that the spokesman said that “finding ‘Taco Tuesday’ as commonplace achieves precisely what the intended outcome was, which was getting the U.S. government to recognize that someone cannot be sued for its use.” This statement is legally wrong. Especially with respect to existing Taco Tuesday trademarks that have achieved the status of “incontestability.”
What is an Incontestable Trademark Registration?
When a trademark registration first issues, it can be quite vulnerable during its infancy. Any damaged party can petition the USPTO to cancel a newly-issued trademark registration for a variety of reasons. Most effective grounds for cancellation usually include prior use of a similar trademark by another party or the registered trademark being merely descriptive, invoking a name of a particular living individual (for example, DJ Khaled’s son Ashad), or being a commonplace message.
Trademark registrations can become immune to these challenges after five years of registration. To achieve this immunity, the trademark owner simply has to file a signed statement confirming continued use of the trademark for at least five years. At that point, the USPTO bestows the “incontestability” status on the trademark registration.
TACO TUESDAY Registrations for Restaurant Services are Incontestable
We previously wrote a post about the origins of Taco Tuesday. Two restaurants–Gregory’s and Taco John’s–own concurrent-use trademark registrations for this phrase for restaurant services. Gregory’s registration covers the State of New Jersey, while Taco John’s registration covers the rest of the United States. Given the popularity of the phrase “Taco Tuesday,” these trademark registrations are potentially extremely valuable. Taco John’s and Gregory’s are the only two restaurants in the country that can use this phrase. Sounds crazy, but it is true. And, because both of these trademark registrations have become “incontestable,” they cannot be challenged on the ground that Taco Tuesday is a commonly used phrase.
Thus, LeBron James’s spokesman is wrong–any restaurant that uses the phrase Taco Tuesday does so at its own peril. I would not be surprised to see Taco John’s and Gregory’s going on a crusade against Taco Tuesday trademark infringers.