Finding Restaurant Services Related to Paper Food Containers, TTAB Sustains DON'T MESS WITH TEX-MEX Opposition

Less than one month after oral argument, the Board sustained this opposition to registration of DON'T MESS WITH TEX-MEX for restaurant service, finding confusion likely with the registered mark DON'T MESS WITH TEXAS for paper food containers, paper bags, and cups. However, opposer's dilution-by-blurring claim was dismissed due, in part, to failure to prove its mark famous for the stated goods. Texas Department of Transportation v. El T. Mexican Restaurants, Inc., Opposition No. 91264923 (March 7, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

"Keeping in mind the well-settled principle that not all of the so-called 'axes' of comparison ... have to align for confusion to be likely," the Board found that the involved marks, while not identical, are "highly similar overall."

Of the several registrations pleaded by Opposer, the Board chose to consider the registrations covering "paper food containers, paper bags," and "cups." "Those two registrations seems like good choices to compare to restaurant services. If we find a likelihood of confusion as to either or both of these registrations, that alone would require refusal of Applicant’s application."

The Board took judicial notice of the "generally known facts that restaurants frequently provide their patrons with paper food containers and paper bags for take-out orders and for dine-in customers to take home leftovers, as well as cups for beverages, and that these containers, bags, and cups commonly bear the restaurant’s mark and/or logo."

The Board concluded that the involved goods and services are related, the channels of trade and classes of consumers overlap, and purchasers would exercise no more than ordinary care in selecting restaurant services, "and may exercise less."

Opposer focused "most intently" on its assertion that the mark DON'T MESS WITH TEXAS is famous, but without success. As to conceptual strength, the Board found the mark to be arbitrary, but as to commercial strength, there was no evidence regarding the number of units sold, revenue generated, advertising or promotion, or third-party publicity for opposer's paper food containers, paper bags and cups.

Opposer offered the results of a survey on the fame issue, but the Board saw several flaws in the survey design that "sap the survey of the evidentiary impact Opposer urges." First, it is a "aided awareness survey." An “aided awareness” survey prompts respondents by mentioning the brand. Opposer's survey asked a "classic" aided-awareness question: "Have you ever seen, read, or heard of ‘Don’t Mess with Texas’?" The Board observed that "'In general, the Board has discouraged heavy reliance on aided awareness to prove fame.'" ProMark Brands Inc. v. GFA Brands, Inc., No. 91194974, 2015 WL 1646447, at *13 (TTAB 2015).

Second, the survey questions were not directed to the strength of Opposer’s mark as to the “paper food containers” and “paper bag” products. And so, opposer' failed to prove its mark famous.

[B]oth Opposer’s survey and several articles in the record support the assertion that many people view the phrase as a commonplace expression of Texas pride or bravado. In response to the survey question quoted above asking what message the phrase communicates, 67% of respondents indicated that the phrase was simply an expression of Texas pride and only 21% associated it with litter prevention. And Applicant is correct in noting that a number of articles discuss how Opposer’s anti-littering campaign slogan has caught on with the public beyond Opposer’s services and now is commonly used in an informational way wholly apart from Opposer or its goods or services.

In sum, [b]ecause of the mark’s conceptual strength by itself ... the fifth likelihood-of-confusion factor weighs somewhat in Opposer’s favor."

On the issue of likelihood of confusion, the survey results were given "no weight." First, respondents were presented with a picture of applicant's billboard (shown above), when the mark of the opposed application is in standard characters." And second, there was no question directed to possible confusion as to source.

"[A]ll of the factor[s] that tilt in any direction (i.e., are not neutral), all tilt in Opposer’s favor." And so, the Board sustained the Section 2(d) claim.

As to its dilution claim, opposer’s trial brief did not once mention the root term “dilut-,” mention the root term 'blur-,' mention the root term 'tarnish-,' or cite Section 43(c). Opposer impliedly waived (or forfeited) its dilution claim (or claims) by not addressing dilution in its trial brief."

But even if the Board considered the dilution claim, opposer's evidence fell well short of proving fame for dilution purposes. "Professor McCarthy posits that a threshold response in the range of 75% of the general consuming public is necessary to prove fame for purposes of dilution." Opposer's survey "showed that only 21% of respondents who recognized Opposer’s slogan (even after prompting) associated the slogan with litter prevention, while 67% recognized the slogan instead as an expression of Texas pride or bravado."

The Board concluded that "Opposer’s dilution claim is forfeited, but even if Opposer hadn’t failed to address it, Opposer failed to prove its mark is famous as required by Section 43(c)(1)."

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TTABlogger comment: In the real world, is confusion likely? Anyway, I always enjoy Judge Casagrande's down-to-earth opinion writing, which is why I liberally quote his words.

Text Copyright John L. Welch 2025.