You may not be aware that the Texas Department of Transportation (“TXDOT”) owns several U.S. Trademark Registrations stemming from its 1986 anti-littering campaign for the mark DON’T MESS WITH TEXAS, including:
- No. 2616831 for services identified as “promoting the beautification of Texas highways and the public awareness of the need for litter prevention and litter cleanup through the development and dissemination of educational materials and public service,” in International Class 42; (the “831 Registration”);
- No. 2627196 for goods including “paper food containers, paper bags” in International Class 16 (the “196 Registration”);
- No. 3149283 for “Beverage containers, namely mugs and cups,” in International Class 21 (the “283 Registration”).
Earlier this year, TXDOT prevailed in a dispute before the U.S. Trademark Trial and Appeal Board (“TTAB”) over an application filed by the owners of the popular Baytown, Texas, chain of El Toro Mexican restaurants to register DON’T MESS WITH TEX-MEX (standard characters) for “Restaurant Services” in International Class 43. TXDOT’s claim was that the registration should be refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), because El Toro’s mark was “likely to cause consumer confusion in view of [TXDOT’s] mark.”
In analyzing the likelihood of confusion, the TTAB reviewed the evidence based on the factors listed in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Starting with the first factor—”similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression—the TTAB found that while the marks are not identical, they are “highly similar overall.” The TTAB then turned to the second, third, and fourth factors—comparison of the goods, trade channels, and classes of customers. The TTAB noted that TXDOT’s 196 Registration covers “paper food containers, paper bags,” and its 283 Registration lists “cups,” which the TTAB noted were comparable with restaurant services and it took judicial notice that restaurants frequently provide their patrons with paper food containers and paper bags for take-out orders, cups for beverages, and that these containers commonly bear the restaurant’s mark and/or logo. The TTAB reviewed a cup from El Toro that had its logo, and the slogan DON’T MESS WITH TEX-MEX printed on it. The TTAB concluded that TXDOT’s paper food containers, paper bags, and cups are related to restaurant services, and the trade channels and classes of customers overlap because the goods and services are provided to restaurant patrons, thus supporting a conclusion that confusion is likely.
The TTAB next weighed the degree of strength of the TXDOT’s marks sales, advertising, and length of use. TXDOT argued that its mark was quite famous and presented a market survey in support that asked a number of questions including: “have you ever seen, read, or heard of ‘Don’t mess with Texas’, and “what message does ‘Don’t mess with Texas communicate?” The TTAB chastised the survey for several reasons including its use of strongly disfavored “aided awareness questions.” Ironically, with respect to the second question, only 21% of respondents indicated that the phrase was associated with an anti-liter campaign, while 67% indicated that the phrase was simply an expression of Texas pride, which TTAB said cut against TXDOT’s argument that the mark was in fact famous. While the TTAB found TXDOT’s mark to be conceptually strong, it said there was no evidence it has a significant degree of commercial strength as to the restaurant services products at issue. Weighing the DuPont factors, the TTAB concluded that they tilted slightly in favor of TXDOT, sustained the opposition, and denied El Toro’s application. The complete opinion can be found here.
The takeaway for business owners and trademark practitioners should be to tread carefully when borrowing well-established phrases and slogans as the conceptual strength of the original mark will be given significant weight by the TTAB, even if most people actually do not know the original mark’s original meaning.