What’s With All These Celebrity Trademark Filings?

Looking at Recent Rejections for “Taco Tuesday,” “Tom Terrific,” and “THE”

By Scott Brown and Omar Hazimah

Federal trademark registration is highly valuable because it gives the owner exclusive rights to use the trademark with the associated goods or services. However, obtaining registration can be difficult as the mark must qualify for registration and can’t be too similar to another registration. Because of the value of a registered trademark, there has been a recent uptick in the number of notable filings by celebrities or other famous organizations.

However, many of these filings are head-scratchers and leave people wondering why the celebrity or organization even tried to get them in the first place. But the reality is that for most of these filings the benefits far outweigh any risks. While these marks were long shots to be registered, the cost of filing for registration is fairly low and the filer might just be just taking a shot to see what happens.

Here some of the most recent notable trademark registration that have been rejected:

TACO TUESDAY

LeBron James isn’t a businessman, he is a BUSINESS, man! The business mogul filed for trademark registration for “Taco Tuesday” after his social media videos went viral:

You can imagine why he would want to file for a trademark as the popularity of the videos at the time was incredibly high and LeBron hoped to capitalize. The proposed mark was filed under downloadable audio/visual works, advertising and marking services specifically social media, podcasting services, and online entertainment services. The intention was to have exclusive rights to the name in the realm of social media and podcasting.

Why was it rejected?

The USPTO rejected LeBron’s mark because it is commonly used phrase. Commonly used phrases are barred it from trademark rights. This is the case because these words and sayings have become embedded in common culture making it impossible to give exclusive use to one individual or company.  Additionally, the mark also conflicted with a similar mark, TECHNO TACO TUESDAY in the same class as the proposed mark. When a mark is filed, it is likely to be rejected by the examining attorney if there is conflict with another mark that is too similar because it may be confused with the existing mark. Allowing a mark that is in conflict with an existing mark blurs the lines between the two causing confusion.  

TOM TERRIFIC

Tom Brady is another celebrity athlete who recently filed for trademark registration for TOM TERRIFIC for use with trading cards and photographs. The name was a nickname that was often used by the media to describe Tom’s excellence on the field. Supposedly, the 6th round draft pick was tired of the nickname and filed the trademark in order for the media and other outlets to stop using the name.

Why was it rejected?

This mark, like Lebron’s filing, was rejected by the USPTO, but the reasoning for the rejection was a bit different. The nickname “Tom Terrific” was already associated with another famous athlete, Tom Seaver, a legendary baseball pitcher.  The USPTO rejected Brady’s filing because it conjured the image of a living individual who did not provide consent for Brady to use the nickname. Again, this is based on the concept of a likelihood of confusion.

THE

The Ohio State University recently filed for trademark registration for “The” in association with their merchandise products that date back to 2005. NFL fans are well aware of the use of Ohio State’s use of “The,” especially with Ohio State-alums emphasizing “The” when saying their school name on Sunday Night Football.

Why was it rejected?

THE was rejected for two reasons. First, Marc Jacobs has a pending filing for THE for clothing, which was filed before Ohio State’s filing and has priority. Second, Ohio State’s specimen was considered to show the mark in an ornamental fashion rather than as a source of goods.  However, it was not rejected for descriptiveness or otherwise common use.

While Ohio State has taken quite a bit of heat for this filing, of the three trademark filings in this post, this is the one that makes the most sense to us. While we are based in Columbus, this mark has definite value and the goods and services were limited in a way that trademark law allows for. It will be interesting to see if Ohio State responds to the rejection, which it has until March to do so.

Conclusion

Obtaining a trademark is extremely beneficial to building a brand and a business but not every word or brand can attain trademark rights. It is important to properly vet and assess the risk for registration to see if the mark is available and if it is strong enough on the spectrum to receive rights.  Additionally, filing for trademark registration for every term is not wise or beneficial and is a poor use of one’s resources. As you can see from the examples, even the biggest names get denied so it is important to build your brand and register under the proper class and description in order to receive rights. 

If you need help with your trademark in regard to its vetting, assessment, or registration, contact Scott Brown at 614-340-0011.

Click here for more on trademark registrations.