Monday, February 08, 2010

Precedential No. 4: TxDOT Wins TTAB 2(d) Tussle Over "DON'T MESS WITH TEXAS" for Clothing

The Board granted plaintiff's summary judgment motion in this Section 2(d) opposition/cancellation proceeding involving two entities owning registrations for the mark DON'T MESS WITH TEXAS for various clothing items. Applicant Richard Tucker admitted that TxDOT had priority of use (TxDOT proved it anyway), and TxDot easily fended off his feeble arguments regarding the lack of "significant" evidence regarding TxDOT's interstate use and the de mimimis nature of its actual confusion evidence. Texas Department of Transportation v. Richard Tucker, 95 USPQ2d 1241 (TTAB 2010) [precedential].

TxDOT owns four U.S. Registrations and a pending application for the subject mark for its promotional services and various goods including clothing. Tucker owns a registration and a pending application for the mark for various clothing items. TxDOT opposed Tucker's application and petitioned to cancel his registration.

The Board pointed out that the issue of priority is different in the two proceedings:

In the opposition, the issue of priority has been removed by virtue of TxDOT’s submission of status and title copies of its pleaded registrations. See King Candy, supra, which explains that the Trademark Act requires consideration under Section 2(d) of an opposer’s registration, regardless of whether the opposer is the prior user. By contrast, in the cancellation proceeding, priority is in issue. See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998) (In a cancellation proceeding where both parties have registrations, each can rely on the filing date of the application resulting in its registration, but the evidence of record otherwise determines priority).

In any event, Tucker admitted that TxDOT had prior use of its mark. He therefore had little left to argue, so he first attacked the nature of TxDOT's use, arguing that it did not have "significant prior use" outside of Texas. The Board pointed out, however, that for priority purposes, prior significant use within Texas is sufficient.

Tucker then lamely argued that TxDOT's evidence of actual confusion was de minimis. The Board agreed that "the evidence may not conclusively establish actual confusion," but, as we all know, evidence of actual confusions is not necessary for a finding of likelihood of confusion.

TTABlog note: I'm wondering what makes this decision worthy of the "precedential" tag?

Text Copyright John L. Welch 2010.


At 10:35 AM, Anonymous Anonymous said...

Best guess for the "precedential" status: (1)the issue of priority is different in an opposition (where opposer pleads and proves ownership of a live registration)and cancellation; (2)footnote 5 re no "counterclaim" against Opposer's application; (3)footnote 15 re naked licencing not considered unless there is a counterclaim; (4) a combination of several issues/matters such as the three above.


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