Tag Archive for: Trademark

A New ‘Taco Tuesday’ Trademark Challenger Approaches: LeBron James

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As we’ve previously discussed, restaurant chain Taco John’s has waged at least a decades-long war to try to pretend that its trademarked term, “Taco Tuesday,” hasn’t become generic. How the chain ever got what sure looks to be a purely descriptive trademark is anyone’s guess, but armed with its trademark the company has since gone after other restaurants big and small for daring to host their own “Taco Tuesdays.” If all of this sounds depressingly stupid to you, well, you’re not wrong.

You really would think the convergence of trademarks and tacos eaten on Tuesday couldn’t get any dumber, except here comes LeBron James. Some background is probably in order. See, LeBron loves tacos. So much so, in fact, that he tends to eat them on many Tuesdays, all while Instagramming his family doing so and affecting a Hispanic accent while shouting about how much he loves Taco Tuesdays. That would have been only mildly interesting at best, except that LeBron’s company has now decided to try to trademark the phrase. Side note: The New York Times should really be better about conflating copyright and trademark law, as you will see below.

On Aug. 15, a company called LBJ Trademarks LLC filed a request with the U.S. Patent and Trademark Office on behalf of Mr. James to copyright “Taco Tuesday.” The company seeks protection for use of the phrase in a host of forums, including “downloadable audio/visual works,” podcasts, social media, online marketing and “entertainment services.” USA Today first reported on the request this weekend.

There are layers of dumb here. First, it seems unlikely that Taco John’s, wielding its own “Taco Tuesday” trademark, wouldn’t be able to claim some level infringement in at least some of these market designations, even assuming the company doesn’t have valid trademark registrations in those categories of its own. But, again, the fact that Taco John’s has those trademarks on a descriptive phrase like “Taco Tuesday” is itself stupid. And, circling back to LeBron, the idea that he would take a phrase already-coined and famous, that he then simply shouted into social media, and then lock it up in a variety of markets is compounding the stupidity.

But just to add a bit more to this, LeBron’s spokesperson basically torpedoed any chance his company has of getting this trademark approved with the following comment.

“The filing was to protect the company from potential lawsuits should we decide to pursue any ideas, nothing of which is in development,” a spokesman for Mr. James said this week on (taco) Tuesday. “It has nothing to do with stopping others from using the term.”

“Should we decide to pursue any ideas, nothing of which is in development” might as well say, “We’re not using this in commerce and don’t have any plans to.” Trademark law requires that the applied for mark be actively used or planned to be used in commerce, or else you don’t get the trademark. Defensive marks like this simply aren’t a thing. If the USPTO is made aware of the spokesperson’s comments, it would be insane to approve this mark.

Meanwhile, the whole Taco Tuesday trademark thing probably needs to just be invalidated to begin with.

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THE Ohio State University Applies For THE Stupidest Trademark In THE World

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We’ve talked ongoing about how ridiculous and aggressive many universities are becoming on trademark matters. Now colleges and universities do many, many annoying things, but their tendency towards trademark bullying certainly ranks up there near the top of the list. Not as high, of course, as Ohio State’s neverending insistence that everyone call it “THE Ohio State University.” The school likes to point out that the “the” (sigh) is actually part of the school’s legal name, when the reality is that the school is simply being haughty and pedantic.

Well, now these two worlds are colliding in what might just be the dumbest trademark application I’ve ever seen. You’ll never guess what single word OSU wants to trademark.

Application No. 88571984, filed with the U.S. Patent and Trademark Office on Thursday, was discovered and publicized Tuesday by Josh Gerben, a prominent trademark lawyer in Washington. The application seeks a trademark on the single word “THE” for use on T-shirts and baseball caps and hats.  

For years, the university’s demand that it be called “THE Ohio State University” has rankled sports fans and journalists, who’ve called it “pompous and stupid,” “ridiculous” and “arrogant.”

Partisans, including the university, point out that “the” is part of its name under state law. And Chris Davey, a spokesman for the university, told The Columbus Dispatch on Tuesday that it’s important to “vigorously protect the university’s brand and trademarks.”

This, simply, is absurd. Trademark law is written in such a way to be wide open for abuse, but even this is a bridge further than the law will allow. Trademarks require original identifiers that indicate the source of a good or service and the bar for approval by the Trademark Office goes up the shorter and less original the identifier is. The idea that someone might apply for a trademark on the single most commonly used determiner in the English language is the sort of thing reserved for jokes in our comments section. But THE Ohio State University went ahead and did it anyway.

Other schools took notice, of course, and some of them are having fun at OSU’s expense.

Michigan getting a trademark on the word “of” makes every bit as sense as OSU’s application. Fortunately, despite all of the madness we see from the USPTO on a frequent basis, nobody seems to think this application is going to be approved.

Gerben predicted on Tuesday that Ohio State was “likely to receive an initial refusal of the application.”

For a trademark to be registered for a brand of clothing, the trademark “must be used in a trademarked fashion,” he said on Twitter. “In other words, it has to be used on tagging or labeling for the products. In this case, just putting the word ‘the’ on the front of a hat or on the front of a shirt is not sufficient trademark use,” he said.

That careful analysis is almost certainly correct, but I much prefer to simply point out that this is all very, very crazy and be done with it.

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Fans, Indie Soccer Clubs Slam Liverpool FC For Trying To Trademark ‘Liverpool’

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Covering trademark nonsense, our posts tend to intersect regularly with the world of sports. It’s relatively common at this point to witness teams and even entire leagues pulling anti-fan trademark stunts, from athletes trademarking their own nicknames no matter the fallout, to leagues considering messing with the trademark applications of video game companies, up to and including iconic baseball teams managing to trademark the derisive nickname given to them by other teams. It’s all very, very stupid.

Across the pond, however, teams in the Premier League have somehow managed to get trademarks on their home-city’s names. Chelsea FC, for instance, has a trademark for “Chelsea” related specifically to football services and merch. This sort of thing is almost never allowed here in the States, but it’s become enough of a thing that Liverpool FC is attempting the same move for “Liverpool” and it’s pissing off a whole bunch of people.

As was the case with Chelsea FC, Liverpool FC insists its mark will be very narrow.

The Reds stress their application is “only in the context of football products and services”, and intended to protect both the club and the supporters “from those benefiting from inauthentic products”.

There are a couple of problems with this. For starters, the general public has apparently become educated enough on the practices of trademark abuse to want to push back on the application themselves. Given how ignorant the general public has long been on how broad trademarks can be abused, this is rather encouraging to see.

A petition has been launched on Change.org that, at the time of writing, had already gathered more than 850 signatures in the space of a few hours.

It said: “This petition is to keep [the word Liverpool] for all people of Merseyside to use without a solicitor’s letter dropping through your door. Do the right thing. Let’s stop this.”

Twitter user Azul wrote: “The club only need see how unpopular this is with its own fans to realise their greed is going too far. Not everyone has the budget for official merchandise, and there’s many making a living from this. Turn it in lads.”

Negative feedback from the public goes on from there, including from local ward Councillors. But you have to also wonder just what the granting of such a trademark would do to City of Liverpool FC, an independent club that plays in the Northern Premier League.

City of Liverpool FC, who play in the Northern Premier League, called the move “outrageous” on Twitter. A spokesman for the club told the ECHO : “Our club is one of many that will be affected by this trademark application made by Liverpool FC.  We as an ambitious and independent football club feel that we are entitled to use the name of our city in our name. We understand that LFC may not have intended to threaten the future of our club, but that is an effect of this application, but even just on a moral basis, we don’t think any private business should be able to own the word ‘Liverpool’ – it simply does not belong to them.”

Beyond any moral concerns, this is exactly why many trademark systems put such a high bar on attempts to trademark geographic terms. That term is typically more widely used than any kind of creatively inspired name or term, as is the case here. For a given industry, never mind something as popular as football in the UK, there is likely more than one player in a geographic area. Allowing any one of them to gobble up the rights to a geographic term for that entire industry, even an industry as narrow as football, is insane.

Fellow Twitter user John Furlong called for a campaign against the “ridiculous idea”, adding: “The name of the city does not belong to any one individual or group.”

Not so in the case of Chelsea, as we’ve said. But that’s a problem, not a precedent worth repeating.

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Caterpillar Now Going After All The Cats For Trademark Cancellations

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A couple of weeks back, we discussed the story of Caterpillar Inc., famous manufacturers of tractor equipment, deciding to bully Cat & Cloud Coffee, makers of you’ll-never-guess-what, all because the former had long ago trademarked “CAT” as a truncated brand. At issue specifically is Cat & Cloud’s use of the word “cat” on clothing and merchandise it sells, with Caterpillar claiming there is the potential for public confusion with its own clothing and merch lines. This is, of course, plainly ridiculous. There is no overlap in the branding and nobody is going to confuse the tractor folks with the coffee folks.

Others pointed out that there are tons of other companies out there that sell apparel and/or merch while holding trademarks that incorporate the word “cat.” If those other companies are allowed to exist, why not Cat & Cloud? Caterpillar Inc. heard you dear friends, but its response is probably not the one you were hoping for.

According to the US Patent and Trademark Office, Cat & Cloud is among 174 registered trademarks including the word “cat”. Caterpillar has filed 125 cancellation petitions so far including one to internet sensation Keyboard Cat. You may have been one of the 150-million viewers of the viral video of a feline, clad in a blue shirt, playing the piano.

Charlie Schmidt, Creator of Keyboard Cat and www.keyboardcat.com spoke to us about his ordeal.

“I’m just a poor artist trying to you know, maintain my integrity! Who wants to hurt a tractor company just by having a cat!?”

So, yeah, Caterpillar has expanded its trademark bullying out to encompass more small businesses. It is again defending its actions by saying they are only targeted for apparel trademarks, but that still isn’t good enough. It’s virtually impossible to believe that all 125 trademarks for the apparel in question comprise uses that would actually cause any real public confusion. Instead, this is obviously a corporate legal team pulling out the legal shotgun and just spraying buckshot everywhere it can.

For Cat & Cloud, at least, its story is getting some public attention.

Customers including tech titan Guy Kawasaki, former Chief Evangelist for Apple and current Chief Evangelist for Canva, is getting behind the café, leveraging his millions of online followers to join the effort.

“Sometimes you have to stand up for something. For the principal of it. And this is one of those times.”

Actress Sophia Bush has also weighed in on Instagram to help Cat & Cloud.

Now we just have to marshal forces for the hundred-plus other victims of Caterpillar’s bullying, I suppose.

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