Texas Department of Transportationv.Richard Tucker

Trademark Trial and Appeal Board

Feb 5, 2010

No. 92030882 (T.T.A.B. Feb. 5, 2010)

Skoro Mailed: February 5, 2010

Cancellation No. 92030882
Opposition No. 91165417

TEXAS DEPARTMENT OF
TRANSPORTATION

v.

RICHARD TUCKER

Before Quinn, Kuhlke and Mermelstein,
Administrative Trademark Judges.

By the Board:
Richard Tucker (hereinafter “Tucker”) owns U.S.
Registration No. 19150261 for DON’T MESS WITH TEXAS (in
typed form) for various items of clothing2 and application
Serial No. 76121980 for DON’T MESS WITH TEXAS for additional
clothing items.3

1 Issued August 29, 1995; Section 8 accepted and Section 9
renewal granted; renewed June 10, 2006.

2 The identification of goods states: “Clothing specifically
women’s tops, T-shirts, blouses, skirts, dresses, pants, shorts,
caps, coats, jackets and sportswear, and men’s shirts, T-shirts,
tops, pants, shorts, caps, coats and jackets,” in Class 25,
claiming dates of first use and first use in commerce of October
6, 1993.

3 Filed September 5, 2000, for “Clothing, namely, boots, shoes,
belts, hats, caps, scarves, neckties,” in Class 25; claiming
dates of first use and first use in commerce of June 1, 1999.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS A
PRECEDENT OF THE
TTAB
Cancellation No. 92030882/Opposition No. 91165417
2
On August 28, 2000, the Texas Department of
Transportation (hereinafter “TxDOT”), filed a petition to
cancel the registration and, on August 5, 2004, it filed a
notice of opposition against Tucker’s pending application,
claiming, in both proceedings, priority of use and that
Tucker’s marks are likely to cause confusion with TxDOT’s
identical mark, also in typed or standard character form, in
its four U.S. Registrations and a pending application for
its promotional services and various goods including
clothing.4 These proceedings later were consolidated.

4 U.S. Reg. No. 2616831, issued on September 10, 2002 for
“promoting the beautification of Texas highways and the public
awareness of the need for litter prevention and litter cleanup
through the development and dissemination of educational
materials and public service announcements, and the development,
planning and implementation of anti-litter programs” in Class 42,
claiming dates of first use and first use in commerce of November
30, 1985; Section 8 and 15 affidavits accepted and acknowledged,
respectively, on May 23, 2008.
U.S. Reg. No. 2627196, issued on October 1, 2002 for “printed
matter and paper products, namely stickers, decals, bumper
stickers, paper food containers, paper bags, plastic trash bags,
plastic litter bags, grocery bags, promotional materials, namely,
pamphlets and brochures in the fields of litter prevention and
litter cleanup” in Class 16, claiming dates of first use and
first use in commerce of March 31, 1986; Section 8 and 15
affidavits accepted and acknowledged, respectively, on November
9, 2008.
U.S. Reg. No. 2619887, issued on September 17, 2002 for
“decorative magnets” in Class 9, claiming dates of first use and
first use in commerce of March 9, 2000; “jewelry, namely lapel
pins” in Class 14, claiming dates of first use and first use in
commerce April 1, 1995; “plastic key chains” in Class 20,
claiming dates of first use and first use in commerce of April 5,
1997.
U.S. Reg. No. 3149283, issued on September 26, 2006 for
“beverage containers, namely mugs and cups” in Class 21, claiming
dates of first use and first use in commerce of December 14,
2004.
Serial No. 76160856, filed November 7, 2000 for “clothing,
namely shirts, hats and caps” in Class 25, claiming dates of
first use and first use in commerce of April, 1986.
Cancellation No. 92030882/Opposition No. 91165417
3
Tucker has denied the salient allegations of both
complaints.5
This case now comes up on TxDOT’s motion for summary
judgment on its claim that Tucker’s mark is likely to cause
confusion, mistake, and/or falsely suggest to the public
that there is an association between TxDOT and Tucker, and
that actual confusion has occurred due to the identity of
the parties’ marks, which are used in connection with
identical or closely related goods. (Brief at 4).6 TxDOT
argues there is no genuine issue as to its priority of use
and that based on the identical nature of the marks, the
respective identifications of goods for the parties’
respective applications and registrations, and on other
evidence of record, there is no genuine issue of material
fact as to the likelihood of confusion. Accordingly, TxDOT
seeks entry of judgment granting its petition to cancel the
Tucker registration and sustaining its opposition to the
Tucker application.

5 Tucker, in his answer to the notice of opposition, filed a
“counterclaim for opposition” to TxDOT’s pending application. No
such procedure exists. In that TxDOT’s application has not yet
been published for opposition, and is suspended pending the
outcome of this proceeding, Tucker necessarily is not able to
oppose the application at this time.

6 The statutory claim under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), is likelihood of confusion and the law is clear
that proof of actual confusion is not necessary to find
likelihood of confusion. Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir.
1983). Of course, persuasive evidence of actual confusion is
also evidence of likelihood of confusion.
Cancellation No. 92030882/Opposition No. 91165417
4
Tucker argues that there are genuine issues of material
fact and challenges TxDOT’s evidence, thereby arguing
against summary judgment.
The burden is on the party moving for summary judgment
to demonstrate the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). The evidence of
record and any inferences which may be drawn from the
underlying undisputed facts, must be viewed in the light
most favorable to the non-moving party. See Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992). In considering the propriety of summary
judgment, the Board may not resolve issues of material fact
against the non-moving party; it may only ascertain whether
such issues are present. See Lloyd’s Food Products Inc. v.
Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993);
and Opryland USA, Inc. v. Great American Music Show, Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1993.
The Evidence of Record
Clearly, both parties claim use of, and have
registered, the same mark, DON’T MESS WITH TEXAS. In
support of its claim of priority of use of the mark and its
claim of likelihood of confusion, TxDOT has submitted two
declarations with supporting exhibits:
Cancellation No. 92030882/Opposition No. 91165417
5
(1) The declaration of Doris Howdeshell, Director of the
Travel Information Division of the Texas Department of
Transportation, stating TxDOT has used the mark in
connection with its public service anti-litter campaign and
to identify services and products, including clothing such
as t-shirts, hats and caps in connection with the campaign
beginning in November 1985 (Howdeshell Dec. ¶4); that there
has been widespread dissemination of the program through use
of the mark since that time (Howdeshell Dec. ¶5); that TxDOT
first used the mark in connection with clothing at least as
early as April 1986 (Howdeshell Dec. ¶6 & Ex. A2);7 that
since the airing of a commercial in 1987, the t-shirts
featuring the mark have been one of its most popular
campaign items (Howdeshell Dec. ¶6);8 that the extensive
media promotion of the mark and campaign has continued since
1986, and has featured famous celebrities (Howdeshell Dec.
¶12); that large sums of money have been expended on its
promotion (Howdeshell Dec. ¶¶13, 14); that the slogan is
promoted on its website (Howdeshell Dec. ¶17), and has
received extensive media coverage and publicity9 (Howdeshell

7 The clothing items bearing the mark were sold and featured
prominently in televised public service announcements (Ex. A3 to
Howdeshell Dec.).

8 The televised commercial featured two well known Dallas Cowboys
football players wearing the DON’T MESS WITH TEXAS t-shirts.
(Howdeshell Dec. ¶6).

9 Exs. A9-A19 to the Howdeshell declaration are copies of
articles dating back to 1986.
Cancellation No. 92030882/Opposition No. 91165417
6
Dec. ¶18-19); that the campaign has received numerous awards
and citations10 (Howdeshell Dec.¶ 20); and that several
surveys have reflected the public’s identification of the
mark and campaign with TxDOT (Howdeshell Dec. ¶¶23-28). Ms.
Howdeshell also avers that she is aware of at least two
instances of actual confusion between Tucker’s use of the
mark and TxDOT’s use of the mark. (Howdeshell Dec. ¶¶29-
31).
(2) The declaration of Christopher Graff, counsel for
TxDOT, providing: the title and status copies of its
existing registrations for DON’T MESS WITH TEXAS for its
promotional services and related goods (Graff Dec. ¶¶3-6,
Exs. B1-B4); the TARR database printout of TxDOT’s pending
application (Graff Dec. ¶8, Ex. B5);11 statements regarding
Tucker’s earliest claimed date of first use of October 6,
1993 (Graff Dec. ¶11); Tucker’s responses to TxDOT’s
interrogatories (Ex B9); Tucker’s responses to TxDOT’s
requests for admissions12 (Ex. to Reply Brief); and the

10 Ex. A20 contains photographs of some of the awards received,
dating back to 1986.

11 Mr. Graff also provides the examining attorney’s refusal of
TxDOT’s application in light of Tucker’s registration and its
subsequent suspension (Exs. B6 and B7).

12 Tucker, having failed to timely file its responses to TxDOT’s
requests for admission, effectively admitted the requests.
However, on October 21, 2009, the parties filed a stipulation to
withdraw and amend Tucker’s effective admissions by substituting
responses. This stipulation is noted and granted and the
substitute responses have been considered. References are to
Tucker’s Responses to TxDOT’s request for admissions (R/A); and
Cancellation No. 92030882/Opposition No. 91165417
7
results of various NEXIS searches conducted by Mr. Graff
demonstrating an association of the mark with TxDOT rather
than Tucker (Graff Dec. ¶¶17 and 18, Exs. B11 and B12)13.
In his opposition to the motion for summary judgment,
and in support of his argument that there are genuine issues
of material fact, Tucker has provided his own affidavit,
together with supporting exhibits. Tucker asserts that
TxDOT’s evidence fails to show opposer’s actual date of its
first use of the mark on clothing (Br. p. 4),14 that there
has not been significant use by TxDOT outside of Texas (Br.
p. 6), and the instances of actual confusion are de minimis
(Br. p. 7).15 Mr. Tucker’s affidavit provides a copy16 of

responses to interrogatories (Interr.). The requests for
admissions responses appear as an exhibit to TxDOT’s Reply in
support of its Motion for Summary Judgment and the
interrogatories are provided as Ex. B9 to the declaration of
Christopher Graff.

13 Mr. Graff also submitted results of a USPTO database search
designed to demonstrate the common practice of the use of public
service slogans on items of clothing and registered as trademarks
for the goods. (Dec. ¶¶19-22, Exs. B13-B15).

14 Tucker points to TxDOT’s photographs of the mark on shirts (Ex.
A2 to the Dec. of Doris Howdeshell), and argues that the photos
could have been taken at any time and there is no evidence of
distribution, and that almost all of its evidence refers to
TxDOT’s litter campaign. (Br. 4-5).

15 Tucker also argues in its brief that TxDOT has ‘fraudulently’
allowed unlicensed or ‘unsupervised’ use of its mark (Br. p. 8);
that it delayed in registration of its marks altogether and
institution of this proceeding until one day before Tucker’s mark
became incontestable (Br. p. 8-9); and that TxDOT has not
registered its mark in Texas (Br. p. 9). In the absence of a
counterclaim grounded on abandonment, any argument regarding
naked licensing will not be considered. Further, any arguments
about when and where TxDOT registered its mark do not go to the
issue before the Board, namely, whether there is a genuine issue
Cancellation No. 92030882/Opposition No. 91165417
8
his registration (Tucker Dec. ¶2, Ex. A1). In his
declaration, Mr. Tucker avers: that he first used the mark
in commerce on October 6, 1993, on clothing (Tucker Dec.
¶4), and he has provided copies of invoices for items in his
“DON’T MESS WITH TEXAS” clothing line which are dated 1993
(Ex. A2);17 that Tucker conceived of use of the mark while
driving in Dallas and seeing TxDOT’s highway anti-litter
campaign sign and thought it was a good name for a western
clothing line (Tucker Dec. ¶10); that he sells his line of
clothing to retailers throughout the U.S. (Tucker Dec. ¶20);
and that a review of the list of individuals licensed by the
State of Texas to make “DON’T MESS WITH TEXAS” merchandise
does not include any of the wholesale manufacturers or
national retailers of clothing known to him (Tucker Dec.
¶20).18

of material fact as to the likelihood of confusion between the
parties’ marks and, if so, whether TxDOT has established the
absence of a genuine issue of fact as to its priority of use.

16 Tucker’s registration is of record by virtue of it being the
subject of the cancellation proceeding. 37 CFR § 2.122(b)(1).

17 Ex. A3 contains copies of various invoices which Tucker attests
are for items in his “DON’T MESS WITH TEXAS” clothing line,
however, there is nothing on the invoices to indicate that they
are for goods using the mark or sold by Tucker. The invoices are
from “Richmar Fashions.” Further, Tucker avers that Ex. A3 is a
hang tag, however it appears that Ex. A2 may be the hang tag and
is, in any event, illegible.

18 Exs. A5-A10 are, according to Tucker, copies of displays and
ads of Tucker’s line of clothing.

Cancellation No. 92030882/Opposition No. 91165417
9
Standing and Priority
As TxDOT has submitted status and title copies of its
pleaded registrations, there is no genuine issue that TxDOT
has established its standing to bring these actions. King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974); L.C. Licensing Inc. v.
Berman, 86 USPQ2d 1883, 1887 (TTAB 2008). Moreover, the
suspension of TxDOT’s application, pending final disposition
of the involved Tucker application also evidences TxDOT’s
standing.
As for priority, there is a distinction to be drawn
between the opposition proceeding and the cancellation
proceeding. 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).
Cancellation No. 92030882/Opposition No. 91165417
10
Tucker has admitted that TxDOT has prior use of the
mark (Request for Admissions (hereinafter “R/A”) No. 72).19
Therefore, priority in TxDOT is established, notwithstanding
the previously-referenced argument by Tucker asserting that
TxDOT’s evidence fails to show opposer’s actual date of its
first use of the mark on clothing. Sinclair Oil Corp. v.
Kendrick, 85 USPQ2d 1032, 1036 n.8 (TTAB 2007) (admission
conclusively establishes the matter that is the subject of
the request for admission; subsequent argument to the
contrary in response to a motion for summary judgment
insufficient to raise a genuine issue of material fact.)
Moreover, the absence of any genuine issue of material fact
regarding TxDOT’s priority is established by the evidence
showing TxDOT’s use since 1986 of the registered mark DON’T
MESS WITH TEXAS, for the goods and services identified in
the registrations and pending application.
Having carefully considered the evidence and arguments
submitted by the parties in connection with this motion for
summary judgment, we find that Tucker has failed to
demonstrate that there are any genuine issues of material
fact as to priority and the likelihood of confusion between

19 Request for Admission no. 72: “Admit that the use of ‘DON’T
MESS WITH TEXAS’ on the T-shirt depicted in the photographic
image on page 25 of the January 19, 1987 issue of TIME magazine
(a photostatic copy of which is attached hereto and marked as
Exhibit A) was prior to Registrant’s first use of the ‘DON’T MESS
WITH TEXAS’ mark.” RESPONSE: ADMITTED

Cancellation No. 92030882/Opposition No. 91165417
11
the marks, and that TxDOT therefore is entitled to judgment.
See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
As stated by the Supreme Court in Celotex:
The plain language of Rule 56(c) mandates
the entry of summary judgment, after
adequate time for discovery and upon
motion, against a party who fails to make a
showing sufficient to establish the
existence of an element essential to that
party’s case, and on which that party will
bear the burden of proof at trial. In such
a situation, there can be “no genuine issue
as to any material fact,” since a complete
failure of proof concerning an essential
element of the nonmoving party’s case
necessarily renders all other facts
immaterial.

Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).
Here, TxDOT’s motion is strongly supported by
documentary evidence to establish the necessary elements for
a finding of a likelihood of confusion.20 There is no
genuine issue that the respective marks are identical (D’s
R/A Resp. No. 32; D’s Resp. to Interr. No. 6); that TxDOT
has used the mark on identical goods, including T-Shirts
(Howdeshell Dec. ¶6; Ex. A2; D’s R/A Resp. Nos. 72 and 73)
and that the parties’ other clothing items are related; that

20 In determining whether there is a likelihood of confusion
between marks, there are thirteen evidentiary factors, which,
when of record, the Board must consider. See E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). The
likelihood of confusion analysis considers all du Pont factors
for which there is evidence of record but "may focus … on
dispositive factors, such as similarity of the marks and
Cancellation No. 92030882/Opposition No. 91165417
12
TxDOT’s mark is famous, well-known and has received
significant publicity (D’s R/A Resp. Nos. 77–79);21 that it
is common practice to put slogans on clothing, and that the
public expects such22 (D’s R/A Resp. Nos. 20, 22 and 24).23
Further, Tucker sent a cease and desist letter to one of
TxDOT’s licensees asserting a likelihood of confusion with

relatedness of the goods.” Han Beauty, Inc. v. Alberto-Culver
Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001).

21 TxDOT has a "massive and far reaching" public service campaign
directed to anti-littering. The campaign has associated
promotional services and items for distribution to the public
including litter bags, bumper stickers, and t-shirts. TxDOT’s
public service announcements aired 73,000 times prior to 1993;
between 1986 and 1993 TxDOT spent over $48 million in messages
and $127 million in donated TV and radio ads. TxDOT has received
publicity through magazine and newspaper articles during the same
time period; and has received numerous awards since 1986.
TxDOT’s clothing items have been worn by performers in its
advertisements. (Howdshell’s Dec. ¶¶13 and 14).

22 Tucker argues that TxDOT’s use of the mark on clothing is
ornamental and does not function as a trademark. The charge does
not ring true, in view of Tucker’s own registration of the mark,
and pending application to register the mark, for such items; and
Tucker has not explained why the parties’ respective uses should
be treated differently. Moreover, Tucker’s own responses to
TxDOT’s requests for admissions undercut the charge, for Tucker
has admitted that it is common practice to put slogans on
clothing and that the public expects such association. (R/A No.
20, 22 and 24). Further, it is common knowledge, and a fact of
which this Board has taken judicial notice, that the licensing of
commercial trademarks for use on "collateral products" has become
a part of everyday life. See L.C. Licensing, 86 USPQ2d at 1889
and Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1945-46
(TTAB 1996).

23 Request for Admission No. 20: “Admit that it is a common
practice for famous slogans or marks to be depicted on clothing.”
RESPONSE: ADMITTED. Request for Admission No. 22: “Admit that
it is common for famous slogans or marks to be depicted on
promotional items, such as wearing apparel” RESPONSE: ADMITTED.
Request for Admission No. 24: “Admit that the public is
conditioned to expect to see famous slogans or marks on
promotional items, such as wearing apparel.” RESPONSE:
ADMITTED.

Cancellation No. 92030882/Opposition No. 91165417
13
Tucker’s mark (D’s R/A Resp. Nos. 56-58). Finally, Tucker
had prior knowledge of TxDOT’s mark when he adopted it as
his mark (D’s R/A Resp. Nos. 8, 9, 11 and 13; Interr. No.
1).
Nothing Tucker has pointed to in his arguments against
the motion give rise to a genuine issue of material fact
regarding a likelihood of confusion. Tucker argues that the
evidence of actual confusion24 is de minimis. We agree that
the evidence may not conclusively establish actual
confusion. Cf. Lloyd’s Food Products Inc. v. Eli’s Inc.,
987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) (“In
this case, the Flachs were not actually confused; they only
‘wondered’ at a possible relationship.”). However, such
evidence is unnecessary to our conclusion that there is no
genuine issue regarding likelihood of confusion. Tucker
also argues that TxDOT has not made significant use of its
mark outside of Texas. Accepting this assertion as true for
the sake of deciding the pending motion, it does not aid
Tucker, as prior significant use in Texas, a use not in
genuine dispute, is sufficient. See First Niagara Insurance
Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d

24 Howdeshell Dec. ¶¶ 29-31; Request for Admissions No. 42:
“Admit that Registrant has received inquiries as to whether
Registrant had permission from Petitioner to use “DON’T MESS WITH
TEXAS.” RESPONSE: ADMITTED; Request for Admission No. 44:
“Admit that in August of 2600 [sic] Registrant received an
inquiry from a person at the Dallas Apparel Mart as to whether
Registrant was associated with Petitioner.” RESPONSE: ADMITTED.
Cancellation No. 92030882/Opposition No. 91165417
14
867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (an opposer may
rely on prior intrastate use of its mark), and National
Cable Television Association Inc. v. American Cinema Editors
Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1429 (Fed. Cir. 1991)
(a petitioner may rely on prior intrastate use of its mark).
Accordingly, TxDOT’s motion for summary judgment is
hereby granted, the petition to cancel is granted, and the
opposition is sustained. Registration No. 1915026 will be
cancelled in due course, and application Serial No. 76121980
is refused registration.

.o0o.