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Why LeBron James 'probably can't' trademark Taco Tuesdays

In case you didn’t know, LeBron James really loves Taco Tuesdays — so much that he’s pushing to trademark the phrase.

On August 15, LBJ Trademarks LLC, a company owned by the basketball star, filed a “taco Tuesday” trademark request. The move seeks to capitalize on James’ already viral social media posts about the universally loved dish.

However, at least one person thinks it won’t be that easy.

Recently, trademark attorney David Leichtman explained to Yahoo Finance that restaurant chain Taco John’s actually owns the trademark registration on “taco Tuesday.”

And since first filing in 1989, they’ve been aggressively trying to halt others from using the phrase.

Since a trademark can exist for the same property across different industries, James will most likely be able to use the popular expression, the attorney told YFi PM. But his celebrity power won’t fully keep others following suit.

“Taco Tuesday is a ubiquitous term — when you have multiple outlets all trying to use the same mark in a very crowded field, it's very difficult to get the Trademark Office to give you that protection and even if they [do] it’s going to be very thin protection,” he stated.

LeBron James' files to trademark 'taco Tueday'. (AP Photo/Mark J. Terrill)

According to paperwork filed by the United States Patent and Trademark Office, LeBron’s “taco Tuesday” application is taking a different route than Taco John.

James’ proposed trademark includes classifications like “podcasting services” as well as “online entertainment services... and social media posts in the field of sports, entertainment, current events and popular culture.”

“[Taco John’s] registration is limited to the restaurant area… what LeBron James is trying to do is slightly different,” Leichtman told YFi PM.

The attorney added that despite the differences in classification, companies that own trademarks are still allowed to stretch into the zone of natural expansion. The doctrine can be used to extend a trademark's prior rights into a new geographical area or product line.

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Nowadays, restaurants promote themselves “on social media, blogs, audio visual entertainment — including Taco John’s owned-television advertising,” Leichtman said, “which falls right within the spot that LeBron James is trying to take.”

So are LeBron’s “taco Tuesday” dreams officially shattered?

“He can probably use it, but what he probably can’t do is protect against other people from also using it, or from using similar things,” Leichtman said.

“So he may not get a federal trademark registration, but if Taco John’s were to sue him they probably wouldn't be successful.”

Taco John’s did not immediately respond to Yahoo Finance’s request for comment.

Alexandra Canal is a Producer at Yahoo Finance.

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