This is the fourth part of series of posts in which I look at Office Actions that were issued for a set of trademark applications for three trademark that were filed by well-known individuals or organizations last year. The subject of this post is a trademark is the phrase “Taco Tuesday,” which was filed by the professional basketball player LeBron James.

LeBron James, through his company LBJ Trademarks, LLC., filed a trademark application on August 15, 2019. The mark was associated with various online media and advertising-related services in four different classes.

An Office Action for the application was issued on August 22, 2019. The examining attorney found two grounds for rejecting the application and noted some informalities. Each of the two grounds for rejecting the application will be discussed here.


The First Ground – Commonplace Messages

The basis for the first ground for rejecting the application was that the mark-at-issue was a commonplace message. This is a highly unusual rejection. Basically, the examining attorney was saying that consumers have become so accustomed to seeing this term or expression used in everyday speech by many different sources that they would not perceive it as a trademark.

Fortunately, the examining attorney indicated that this grounds for rejection could be overcome by amending the mark for registration on the Supplemental Register or by showing that LeBron James had developed so much goodwill in the mark that it had “acquired distinctiveness.”


The Second Ground – Likelihood of Confusion

The basis for the second ground for rejecting the application was only applied to one class of goods, Class 35. Class 35 includes various types of advertising and marketing services.

The examining attorney found that there was a likelihood of confusion between this mark and a third-party registration for this particular class of goods.

A likelihood-of-confusion rejection can be one of the most difficult to overcome. An examining attorney must consider if the factors set forth in In re E.I. du Pont Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), favors registration. In most cases, the following factors are usually the most relevant: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and the buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing; (5) the number and nature of similar marks in use on similar goods; and (6) a valid consent agreement between the applicant and the owner of the previously registered mark.

The determination of likelihood of confusion between two marks is decided on a case-by-case basis. In re Dixie Restaurants Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). An examining attorney is to apply each of the applicable factors set out in du Pont, 476 F.2d at 1361, 177 USPQ at 567. There is no mechanical test for determining likelihood of confusion, and each case must be decided on its own facts.

LeBron James could respond to the rejections on or before March 11, 2020.