Cat Fight over "Don't Mess with Texas" Trademark

 

A trademark said to be recognized by more than 95% of the population of Texas became the subject of a trademark infringement and unfair competition lawsuit last month.  On August 19, 2011, the Texas Department of Transportation brought a lawsuit against author Christie Craig, book store Barnes & Noble and others seeking, among other things, an injunction preventing the sale of Ms. Craig’s romance novel titled “Don’t Mess With Texas”. 

The Texas Department of Transportation obtained registrations for the trademark DON’T MESS WITH TEXAS in 2002 and claims to have used the trademark for more than 20 years.  When TxDOT learned that Ms. Craig and the other defendants were publishing a romance novel with the title “Don’t Mess With Texas” with a cover featuring a shirtless man holding a woman with red cowboy boots, the department sent a letter to defendants demanding they change the title of the book.  According to the lawsuit, Defendants denied that the title needed to be changed. TxDOT then brought the lawsuit seeking an injunction and an order for the book to be retitled and for any inventory of the book and marketing materials to be destroyed.

TxDOT also brought a motion for a temporary restraining order requesting that the Court prevent the sale of the book while the lawsuit is pending.  Recently, the Court ruled against TxDOT saying that it was not convinced TxDOT has a substantial likelihood of success on the merits and that the balance of harms does not favor TxDOT.  The Court continued to say that the Court doubts the 35,000 copies scheduled to be printed and distributed to retailers would “fly off the shelves”. 

One of the things to consider in requesting a preliminary injunction is the impact of a negative ruling.  A preliminary injunction hearing forces the court to assess the merits of the claim early in a case and losing on a motion for preliminary injunction, although not case dispositive, may cast a negative tone that will need to be overcome and may also affect the potential for a favorable settlement.  Although, the Court’s ruling against TxDOT’s request for a preliminary injunction is not case determinative, it remains to be seen how this early decision will impact TxDOT’s ability to protect its trademark.

The case is Texas Department of Transportation v. Christie Craig et al., Case No. 1:11-cv-00726, in the United States District Court for the Western District of Texas.
 

 

This article is for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. This article not create an attorney-client relationship between the author or the Husch Blackwell LLP law firm and the viewer of this article. Any opinions expressed in this article are the opinions of the individual author and may not reflect the opinions of the Husch Blackwell firm or any individual attorney.

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The views expressed are those of the author and not necessarily The University of Texas at Austin.

About The Author

Sherry Rollo

Attorney, Husch Blackwell, LLP

Sherry is a patent attorney in Husch Blackwell's IP Litigation group. She is engaged in all areas of intellectual property law litigation and...

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