The state of Texas is looking more and more like it’s forgotten that there’s a world outside of itself. Cue the weird article from Time this week that reads like it was written by Rick Perry himself, about how everyone’s moving there, buying hats and being self-reliant in their cheap houses with no income tax.
A slight recanting before I even get started: I love the people of Texas. I have lots of friends there, blah blah blah. But, of course, there was that one girl I met in Austin who told me she went to school “up north,” which, it turns out, meant in Lubbock…..
This attitude, it seems, that everything begins and ends at the state line, has given rise to some trademark cases that to us non-Texans, look pretty aggressive. Trademark law, as we have explained here here here and here, is only secondarily about protecting brand owners from infringing competitors. It is first and foremost a method of protecting the public from confusion over the products they buy and the services they consume. We don’t want two drugs called “Advil,” when one treats headaches and the other treats skin rashes but has the side effect of making people lose their hair. We want the public to know what they’re buying (and not still have an aching head that is now just bald).
Of course, you can only be confused as to the source of the goods or service if you have some idea what the original source actually was. Show of hands – how many of my readers, inside or outside of Texas, know that the phrase “Don’t Mess with Texas” originated as an anti-littering slogan? Granted, the Texas Department of Transportation has since capitalized on the catchiness of the slogan and uses it on all kinds of merchandise. However, the state seems to think that it is sending out a message with this slogan, that I’m betting it is utterly failing to send. “It is important for everyone to recognize that ‘Don’t Mess With Texas®’ means ‘Don’t litter,’ ” Veronica Beyer, a Transportation Department spokeswoman, said in a statement. Really? And if the meaning behind your mark is “don’t litter,” then how is it trademark infringement for a romance novelist to use the phrase of a title of her book, especially when the title of a single book can’t be a trademark, and therefore it isn’t trademark use?
Most recently, the University of Texas (which incidentally, has a law school which is renowned for its intellectual property program), has successfully forced the abandonment of two applications for what UT would call the “hook’em” hand signal (and what in Norway would be called the sign of the devil, and in Greek would be directed at a man who was married to an unfaithful wife, and which might, if you believe the interwebs, be at least part of the sign for bullsh*t in American Sign Language . The University claimed that Michael Weir, a UK man selling t-shirts in the U.S. with heavy metal slogans like “Born a Rocker, Die a Rocker,” infringed upon and diluted its mostly common-law trademark rights when he included a similar hand signal on his shirts. This particular hand signal or some variation has of course been attached to millions upon millions of upwardly pointed arms at heavy metal rock concerts over the past 40 years or so. (Whether this makes the mark descriptive to metal fans is of course a different question). Nevertheless, the University believes that the handsignal for the Texas Longhorns is so famous that Mr. Weir’s use dilutes the brand. In the end, the settlement with the University denies Mr. Weir registered rights and limits his use of the hand signal. (The extent of the limitations has not been published, but you can at least read the original complaint here).
In a football stadium in the South and Midwest, consumers know what means. At an Iron Maiden concert, even in Austin, Texas, they know what it means too.
The way it’s supposed to work, consumers will be intimately familiar with your brand and are liable to come to harm over confusion, if you allow that junior user to continue to use the mark. But the concept of confusion seems to have gotten a little confused lately in the Lonestar State.