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The Texas Department of Transportation recently warned businesses to stop messing with its slogan “Don’t Mess With Texas” � even though the department isn’t the first to register the slogan as a trademark. South Carolinian Richard Tucker has had “Don’t Mess With Texas” registered as a federal trademark for his Richmar Fashions since 1994. TXDOT didn’t seek registration of the slogan for its litter prevention campaign until 2000, according to the U.S. Patent and Trademark Office’s Web site. But Darah Waldrip, the TXDOT litter prevention program coordinator, says the department first used the slogan in 1986. The late blues guitarist Stevie Ray Vaughan appeared in the first TXDOT commercial featuring the slogan, according to Waldrip, and other celebrities, including Willie Nelson, have appeared in similar ads over the years. And now TXDOT wants to stop others from using the catchy phrase. Jennifer Soldano, the department’s associate general counsel, says TXDOT has sent cease-and-desist letters to more than 20 entities in the past year. Several entities have been reported to the Texas Office of the Attorney General for further action, she says. As for Richmar Fashions, the department is trying to reach a settlement with Tucker, who continues to advertise his line of men’s and women’s clothes on his Web site as “Don’t Mess With Texas” Richmar Fashions. T-SHIRT TUSSLE Normally, more than one person or entity can register a mark as long as there is no likelihood that the public will be confused, says Cherry Hearn, a Dallas solo who teaches trademark law at Texas Wesleyan University School of Law in Fort Worth. Whether the use of the trademark dilutes TXDOT’s message is another question, says Dallas patent and trademark attorney Ted Stevenson, a partner in McKool Smith. “You can prevent someone from using your mark if [that use] would tarnish your mark,” he says. According to the PTO Web site, Tucker registered the “Don’t Mess With Texas” slogan as a mark for items of apparel. TXDOT originally registered the mark for printed materials and paper products to be used in its anti-litter campaign, but since November 2000 has had a pending application to register the mark for T-shirts and other items of apparel, the Web site shows. In August 2000, TXDOT initiated an action to cancel Tucker’s registration with the Trademark Trial and Appeal Board, according to the PTO site. Austin attorney Christopher Graff, of Trop, Pruner & Hu, represents the department in Texas Department of Transportation v. Tucker. Graff contends that the department had a common-law right to the slogan before Tucker registered it. The PTO Web site shows that TXDOT has used the slogan since 1986; Tucker began using it in 1993. Xuan-Thao Nguyen, an associate professor teaching intellectual property law at the Southern Methodist University Dedman School of Law in Dallas, says the fact that TXDOT used the slogan first means that it accumulated a right in the slogan. A provision in the Lanham Act authorizes a cause of action if one person’s use of a word, name, term, or symbol causes confusion that the person’s goods or services are somehow affiliated or approved by another person, says Nguyen. That provision does not require the person who owns the word, name, term, or symbol to register it to bring a cause of action, she says. Nguyen adds, “Most trademark attorneys advise their clients that it’s better to get a trademark registration.” By registering a mark, the owner gains an additional potential cause of action and the possibility of collecting up to treble damages if the mark is violated. APPAREL CONFUSION TXDOT alleges in its petition in the Tucker case that anyone familiar with the anti-litter campaign slogan would be likely to think that Tucker’s clothing line was sponsored or affiliated with the department. The department also alleges that Tucker obtained the registration “fraudulently” by stating in his application that he owned the mark, even though he knew the department used it. Richardson, Texas, solo practitioner Lee Craig, who represents Tucker, declines comment. But Tucker denies all the allegations in an answer filed with the Trademark Trial and Appeal Board: He alleges that the department never has been engaged in manufacturing and selling clothing and that no rational member of the public would associate a “Don’t Mess With Texas” T-shirt with a highway agency. Graff contends, however, that the department has prior rights to the trademark in connection with its use on clothing. As evidence of his contention, Graff cites the Jan. 19, 1987, issue of Time magazine, featuring a photo of then-Dallas Cowboys Randy White and Ed “Too-Tall” Jones wearing T-shirts with the “Don’t Mess With Texas” slogan for an article on the anti-litter campaign. The cancellation proceeding has been on hold since last fall. Acting on a motion by Tucker, the board suspended proceedings in September 2003 so the parties could negotiate. Mary Alice Robbins is a senior reporter at Texas Lawyer , an American Lawyer Media newspaper. She can be reached at [email protected].

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