“In prose,” scolded George Orwell in his masterful essay “Politics and the English Language,” “the worst thing you can do with words is to surrender them.” Considering the news lately, one wonders if we’ve taken this instruction a bit too literally.
Last month, the internet descended en masse to mock Ohio State University after it was revealed that the school sought to trademark the word “the.” Thanks to Josh Gerben, a sharp-eyed trademark lawyer in Washington, D.C., who spotted and publicized the trademark filing, media outlets and social media denizens took notice of the otherwise mundane goings-on at the U.S. Patent and Trademark Office. On Aug. 13, Gerben tweeted regarding Ohio State’s filing: “The university claims that the trademark is for a brand of clothing, namely t-shirts, baseball caps, and hats.”
Originally founded as the “Ohio Agricultural and Mechanical College,” the Ohio General Assembly later passed a law in 1878 officially changing the school’s name to “The Ohio State University.” Ever since, Ohio State University graduates have enjoyed the somewhat pompous pleasure of stressing the article when referencing their alma mater and the outright insufferable habit of interjecting the word when it is neglected by the uniformed or the unwilling. (They should have stuck with OAMC, if you ask me.)
Naturally, the idea of a middling public research university with a scandal–ridden football team chronically unable to win postseason games against Southeasterly opponents attempting to lay claim to, quite literally, the most commonly used word in the English language, drew some attention. Little of it was positive. The University of Michigan, for instance, lampooned their bitter rival by tweeting a graphic featuring the school’s trademark “M” logo with the word “OF” supersized behind it and the caption, “TM.”
Then, on Aug. 31, Gerben again broke the news that a company owned by NBA superstar LeBron James had filed an application with the USPTO earlier that month seeking to trademark the phrase “Taco Tuesday.” According to the filing, James indicated his intent to build off the apparent popularity of his newly acquired practice of posting about “Taco Tuesday” on social media — which, as far as I can tell, are simply semi-frequent videos of James eating tacos on Tuesday and shouting the words at increasing volumes — by branding such content and creating a podcast under the name.
Last Wednesday, the USPTO denied both OSU’s and James’ respective trademark applications, albeit for differing reasons. For Ohio State, the office issued an initial refusal of the trademark on the technical grounds that the school was not using the article in the form of a trademark (but rather as merely “ornamental”) and on the procedural grounds that Marc Jacobs had already filed an application for “the” and thus took precedence.
The reasoning for denying James & Co.’s application was somewhat different. The USPTO found the company cannot trademark “Taco Tuesday” because the phrase is “a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” Essentially, too many people in too many places use “Taco Tuesday” to denote the fact they are eating or wish to eat the titular food on Tuesday. The office further cited a portion of the application, wherein James indicated that his plan to offer “advertising and marketing” services under the phrase, as reasoning why the claim was rejected. This was due to the fact that one other trademark exists, under “Techno Taco Tuesday,” which already offers advertising and marketing services.
For all the easy, largely harmless jokes at the expense of James and Ohio State — not to mention the accompanying clicks, likes, and retweets — what, if anything, there is to learn from trademark claims such as these is often murky. Celebrity aggrandizing? Keen business sense? Something else? Do we even care?
A trademark, per the USPTO, is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others, such as brand names, slogans, and logos. And unlike patents (which apply to inventions) and copyrights (which protect original works of authorship), trademarks do not expire after a set duration. Instead, trademark rights are protected through “use” — that is, as long as you continue to use the mark in commerce and, correspondingly, protect it from infringement use by others.
While at times trademarks, and especially certain trademark applications, may seem frivolous, they are a bulwark of free enterprise. James, for instance, is only the latest in a long line of athletes, actors, and celebrities to seek such a trademark. Tom Brady was similarly mocked for his failed attempt to procure a trademark on the phrase “Tom Terrific.” Taylor Swift famously sought trademarks for certain of her song titles and lyrics, including common phrases such as “Blank Space,” “Nice to Meet You, Where You Been?” and even “1989,” with mixed success. Examples abound.
Nor is Ohio State alone. Universities, along with numerous other entities such as professional sports franchises, commonly apply for trademarks on words and phrases associated with their institution or employees. For instance, as Gerben reported last month, the University of Southern California applied to trademark “It’s Not What You Know, It’s How You Think.” Whether they will be successful in registering such “debased language,” to return to Orwell’s scolding, has yet to be determined.
But even as such a “use” determination protects intellectual property, it also necessarily allows the space for anti-competition bullying by so-called “trademark trolls” or “patent trolls.” As the name implies, these trolls exist to collect a toll from new or potential competitors, registering up trademarks for the main purpose of suing others who may come close to infringing on its use. The practice is particularly detrimental to small businesses and startups who come up against large, established companies with the relationships and resources to scare off smaller competitors or simply bleed them dry in endless, tetchy litigation. Such was the strategy of Thomas Edison, for example, who, as a keen historical irony, is a strong contender for both America’s most celebrated inventor and most thuggish monopolist.
There’s another twist in James’ case: The Wyoming-based fast-food chain Taco John’s has for 30 years held a trademark for “Taco Tuesday.” Despite the obvious commonality of the phrase, Taco John’s levies cease-and-desist warnings at restaurateurs, breweries, food trucks, and other “offenders” across the nation. Taco John’s is an exemplar of the consequence of use determination: because the USPTO granted the chain a trademark for “Taco Tuesday,” it must actively defend its trademark if it wishes it to continue. As lawyer Nikki Siesel explained to Princeonomics, “If Taco John’s is not doing a good job policing its trademark rights, it can be challenged that the mark has become generic.”
But if Taco John’s trademark rights still exist, why didn’t the USPTO deny James’s application based on the fact there is already a trademark on the phrase “Taco Tuesday?” The difference, it seems, is in intended use. By refusing to trademark the phrase because of its commonality, a spokesman for James told the New York Times last week, the federal office “essentially offered what Mr. James wanted all along: protection from liability if he used ‘Taco Tuesday’ in certain projects, like podcasts and other media.”
In other words, a central motivation for filing such a seemingly ludicrous trademark application was just to make clear James & Co. wouldn’t get sued if they continued to use the phrase as they have been. As tedious old Polonius realized, there was a method in the madness of Hamlet’s words, words, words.
There is a catch, however, that seems to have been lost in the offing. “If this opens the door for ‘Taco Tuesday’ to be open to everybody,” the spokesman told the Times, “all the better.” As ESPN reported, “James’ spokesman pointed out that the USPTO’s ruling will protect not only James but anyone else from using ‘Taco Tuesday’ for business reasons.”
Yet this is almost certainly not what was decided by the USPTO. The reason James did not run afoul of Taco John’s trademark is because his intended usage was not at the level of their business trademark. In other words, James was seeking to prove he could continue using the phrase in common speech and in social media posts as he had been previously; he was decidedly not filing a claim as a restaurant or fast-food chain, which would have certainly infringed upon Taco John’s trademark. Indeed, in the one section of the filing that James’ claim did approach a “business reason” — offering “advertising and marketing” services — the USPTO denied it on the grounds that it interfered with another business’ existing trademark.
“It is clear,” Orwell emphasized, “that the decline of a language must ultimately have political and economic causes.” Indeed, but maybe add to that the occasional well-meaning legal misunderstanding.
J. Grant Addison is a deputy editor for the Washington Examiner magazine.
