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Messing with Texas’ Trademark

Messing with Texas’ Trademark

Contrary to popular belief, the phrase “Don’t Mess With Texas” wasn’t coined by Davy Crockett or Jim Bowie at the Alamo. Rather, it was created in 1986 as part of an anti-littering campaign by the Texas Department of Transportation. It’s also a registered trademark. Recently, some controversy has arisen over the authorized uses of the phrase. Read on to find out what the mess is all about.

The New York Times (every Texan’s favorite news source) recently reported about the state’s efforts to protect the mark, including the following examples:

In July, a Montana company that makes Western-themed accessories stopped selling a “Don’t Mess With Texas” belt buckle after the Texas Department of Transportation, which owns the federally registered trademark on the phrase, threatened legal action and told the firm to ship the offending merchandise to Austin.

The author of a romance novel titled “Don’t Mess With Texas,” “a thrill ride of hunky heroes, hilarious high jinks and heartwarming romance,” found herself in a legal battle with the state after it filed a lawsuit in a federal court in Austin alleging trademark infringement.

Following a brief trip to the Alamo, the Times’ story continued:

Texas officials say they want to prevent “Don’t Mess With Texas” from losing its original antilittering [sic] message and protect the authorized use of its trademark. But others say that the state has been overzealous and that it is seeking to control a phrase so popular and well worn that people now associate it more with tough Texans than with litterbugs.

Jacquielynn Floyd, writing in the Dallas News, had some fun with the Times story, opining:

The story is actually about TxDOT’s unyielding efforts to maintain proprietary rights to the slogan. Over the years, the deceptively simple catchphrase has been the target of attempted hijackings by everyone from bootleg T-shirt makers to a romance novelist.

But the underlying theme is the same one we in the Lone Star State have been used to hearing for generations: “How can those awful Texans be so full of themselves?”

Ms. Floyd went on to cite a few other states’ and municipalities’ less-successful anti-littering slogans (really, Oakland, “Litter Is Bad” is the best you could come up with?)

OK, we all love a good East-West rivalry, but has the state been overzealous in its efforts to protect their valuable trademark? The official Don’t Mess With Texas website – dontmesswithtexas.org – includes a “Usage” page that states, in part:

Don’t mess with Texas® is registered with the U.S. Patent & Trademark Office and cannot be used unless permission has been granted from the Texas Department of Transportation. Any unauthorized use will be in violation of trademark laws.

Well, that’s not exactly accurate. Even a Federally-registered trademark can be used by anyone in a variety of circumstances. A trademark owner can control the use of the mark in commerce in connection with similar goods and services (and also, in some circumstances, to protect against dilution of the value of a famous mark). Even then, however, a fair use defense is available in some circumstances. I’ve discussed trademark fair use before (click here for one post on the subject). There are several types of trademark fair use, including “nominative fair use.” The three factors for that defense are:

  1. The mark must not be readily identifiable in any other way.
  2. The mark can only be used to the extent necessary to identify it.
  3. The mark can’t be used in such a way as to suggest a false connection or sponsorship arrangement.

And, of course, there are countless circumstances where one wouldn’t even be using the phrase as a trademark. If Texas Governor Rick Perry drops “Don’t Mess With Texas” into one of his speeches, he’s not using the mark to identify the source of goods or services – he’s just using a set of words in a completely separate context. That is fair game in almost any situation.

When can the Texas Department of Transportation enforce its rights? Whenever someone attempts to use the mark on competing goods or services – and the list of goods identified by the TxDOT in its trademark registrations is daunting – there is a potential infringement. While that list of goods doesn’t include books or belt buckles (how could Texas have missed filing for belt buckles?), there are enough arguably similar products that Texas may have been within its rights in going after those uses. But it’s not accurate to say that you need Texas’ permission to use the phrase in any context whatsoever.

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