Posted: October 3rd, 2013
By: Rebeca Echevarria *
Trademark owners invest time and money to build strong brands and will often fight bitterly to protect their trademarks. Like businesses, states often possess trademarks as well to promote tourism or convey public service messages. One of the most familiar state slogans is New York’s, “I <3 NY” motto. The slogan can be found on various types of merchandise, but vendors pay New York a license fee every time they wish to use the trademark. New York actively pursues anyone it believes to be infringing its mark and has sent 350 cease-and-desist letters since 2008.
Like New York, Texas takes pride in its “Don’t Mess with Texas” slogan and will go to great lengths to protect it. In 2011, Texas won a dilution suit against the author of a romance novel titled “Don’t Mess With Texas,” arguing that the novel’s steamy plot diluted the anti-pollution message behind Texas’s slogan. Since then, Texas has successfully urged other users to abandon their use of the mark merely with cease-and-desist letters. Texas must, however, continue to take an active role to protect the mark if it does not want to see it in the public domain.
Generally, the owner of a registered trademark may prevent another party from using a trademark that he believes directly infringes on his mark under a § 1114 infringement and/or a § 1125(a) unfair competition claim when there is a likelihood of confusion between the two marks. Likelihood of confusion may include any “confusion of sponsorship, affiliation or connection” with the registered mark. If there is no likelihood of confusion between the marks, the owner of a famous trademark may still bring a § 1125(c) dilution claim against any mark that blurs or tarnishes the owner’s mark. Dilution occurs when a famous mark’s ability to clearly distinguish only one source of goods/services is diminished by another party’s use of the mark, regardless of whether or not a likelihood of confusion exists as to the source.
Just as abandoned marks are incapable of being infringed, abandoned marks are incapable of being diluted. Although Texas’s transportation Department originally created the slogan as an anti-littering campaign, in recent years the “Don’t Mess with Texas” slogan has been used in many ways to convey the message of Texas superiority. Politicians like George W. Bush have used the slogan after winning elections; federal prosecutors use the slogan when they announce publicized indictments; the Navy even used the slogan as the motto of the U.S.S. Texas submarine at Pearl Harbor. If Texas does not continue to actively protect its mark’s brand, the mark may enter the public domain. Marks that are so commonly used that they no longer serve as source indicators are not protectable trademarks. For an additional example of trademark abandonment, see the Xerox case.
* Rebeca Echevarria is a third year law student at Wake Forest University School of Law. She has a Bachelor of Arts in Politics, International Relations, and Biomedical Ethics from Mount Holyoke College. Upon graduation in May 2014, Miss Echevarria intends to practice Intellectual Property and Biotechnology law.