LeBron James is arguably one of the greatest basketball players of all time. However, this did not seem to be of any help when he attempted to register the phrase ‘Taco Tuesdays’ with the US Patent and Trade Mark Office. ‘Taco Tuesdays’ is a form of customary language that is used by many in America. It depicts a tradition of going out and eating tacos or Mexican food on a Tuesday, and it is run similarly to happy hour.
The US Patent and Trade Mark Office rejected LeBron James’ application because the phrase was commonplace in the US and no one individual can trade mark such a phrase. LeBron James’ legal team responded stating that the trade mark application to the US Patent and Trade Mark Office was an exercise to see if customary language could be protected by an individual. As the basketball star is becoming known for using the phrase, he wanted to ensure that no one could bring legal proceedings against him regarding and infringement of intellectual property rights.
UK law explicitly states in the Trade Mark Act 1994 (‘the Act’) that a trade mark will not be registered if ‘…it consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of trade’ (section 3(1)(d) of the Act). However, if a mark has acquired distinctiveness overtime, a trade mark can be registered regardless of it being made of customary language (section 3(1)(d) of the Act). Nevertheless, the requirement to prove that a mark consisting of a long-standing customary language is likely to be very high and difficult.
Nevertheless, one has to wonder why LeBron did not just seek the advice of an American solicitor instead of wasting money on this exercise?