Don’t Mess With “Don’t Mess With Texas”

I first encountered the phrase “Don’t Mess With Texas” on t-shirts and stickers sometime in the 1990s. At the time, I thought it was just a generic expression of Texan bravado — it took a few years for me to find out that it was actually an anti-littering slogan adopted by the Texas Department of Transportation (TxDOT).

Apparently I’m not the only one who thought the slogan was free for the taking. In a recent case, Texas Department of Transportation v. Richard Tucker, TxDOT was forced to lay the smackdown on an interloper for messing with “Don’t Mess With Texas.”

Tucker, a businessman, attempted to register “Don’t Mess With Texas” with the United States Patent and Trademark Office for use on two different categories of articles of clothing in 1995 and 2000, claiming first use in 1993 and 1999, respectively. TxDOT filed a petition to cancel with the Trademark Trial and Appeal Board in 2000 and an opposition to trademark renewal in 2004, claiming prior use going back as far as 1985. Interestingly, TxDOT did not actually file its first trademark registration for the slogan until 2000.

Tucker argued, among other things, that TxDOT did not use its slogan outside Texas, but TxDOT presented plenty of evidence of prior use of the mark, including use on t-shirts, and evidence that the mark is a famous mark due to its use in a “massive and far-reaching publicity campaign.” Worse for Tucker, he admitted in his own filing that TxDOT had actually used the slogan first.

The TTAB’s likelihood of confusion analysis focused on the similarity of the marks and relatedness of the goods, factors it called “dispositive” under the well-known du Pont likelihood of confusion test. Finding that the marks were highly similar and that slogans used in publicity campaigns like “Don’t Mess With Texas” were often printed on t-shirts and/or collaterally licensed for apparel, the TTAB concluded that a likelihood of confusion existed.

After seeing the turn and the river, it was clear that TxDOT would prevail, and indeed, they raked in the pot. The TTAB granted TxDOT’s summary judgment motion, cancelling Tucker’s existing registration and refusing his pending registration.

The TTABlog has the story here. The TTAB opinion is available here.

At McSweeney’s, Colin Perkins offers “State Rules” for the other 49 states, including “Don’t make Arkansas turn this car around.”