Not to Be, Um, Trifled With, Texas Guards Its Slogans
By Manny Fernandez, NY Times, September 14, 2013
HOUSTON—Don’t mess with Texas. In fact, don’t even mess with “Don’t Mess With Texas.”
The trademarked slogan started out nearly 30 years ago as the clarion call of a campaign to reduce highway littering. But over the years it has become something far bigger: an identity statement, a declaration of Texas swagger—from barrooms to sports arenas to political conventions.
And Texas is touchy about who uses it and how.
In July, a Montana company that makes Western-themed accessories stopped selling a “Don’t Mess With Texas” belt buckle after the Texas Department of Transportation, which owns the federally registered trademark on the phrase, threatened legal action and told the firm to ship the offending merchandise to Austin.
The author of a romance novel titled “Don’t Mess With Texas,” “a thrill ride of hunky heroes, hilarious high jinks and heartwarming romance,” found herself in a legal battle with the state after it filed a lawsuit in a federal court in Austin alleging trademark infringement.
Days before the book was to be released, the state’s lawyers asked a judge to prohibit it from being sold while the case was under way. The judge denied the state’s request, but Texas ultimately won a dispute that dragged for nearly nine months. The suit was settled last year, and the author, Christie Craig, agreed to pay Texas $2,500 and change the book’s title. “Don’t Mess With Texas” became “Only in Texas.”
In a state whose governor likes to point out that Houston was the first word spoken on the moon, it should come as no surprise that Texas not only invented its most famous catchphrase, but that it also fights to ensure that catchphrase is used to the state’s satisfaction.
Texas officials say they want to prevent “Don’t Mess With Texas” from losing its original antilittering message and protect the authorized use of its trademark. But others say that the state has been overzealous and that it is seeking to control a phrase so popular and well worn that people now associate it more with tough Texans than with litterbugs.
It is used wherever and whenever Texans want to claim superiority or victory or simply boast of a Texan’s Texasness. Federal prosecutors say it at news conferences after announcing a big indictment. The Navy made it the motto of the U.S.S. Texas submarine at Pearl Harbor.
Since 2000, Texas transportation officials have contacted more than 100 companies, organizations and individuals about the unauthorized use of the phrase, often in the form of strongly worded cease-and-desist letters that warn violators to either stop using the slogan or obtain licensing for it for a fee.
But Texas has been just as protective of another popular phrase: “Remember the Alamo.”
The state and its General Land Office, which oversees the historic site in San Antonio, registered “the Alamo” as a trademark, and it has claimed common-law rights, a more limited type of trademark protection that does not require federal registration, on “Remember the Alamo.” Last year, a San Antonio bar owner tried to register the phrase “I Can’t Remember the Alamo,” hoping to plaster it on T-shirts, mugs and even underwear.
Texas opposed the bar owner’s trademark application, arguing that it would lead consumers to believe it was sponsored by the General Land Office and that it tarnished the state “by communicating that the heroism and sacrifice undertaken by its forebears is not worthy of memory or esteem,” the agency wrote to the trademark appeals board. Texas won that fight, too: “I Can’t Remember the Alamo” underwear was never sold because the bar owner, Christopher Erck, abandoned the trademark application.
"It got fairly heated, I will say that," Mark Dallas Loeffler, the communications director for the General Land Office, said of the dispute. "In the end, I think he realized it was probably more trouble than it was worth just to sell a shirt."
To protect “Don’t Mess With Texas,” state transportation officials and lawyers monitor what they call “the usage of the brand.” The slogan was coined in 1985 by Tim McClure, a native Texan and a founder of GSD&M, an advertising agency based in Austin and hired by the state to help its antilittering campaign reach the worst highway offenders—men under 25. The phrase gave rise to a state-sponsored Web site, a book (“Don’t Mess With Texas: The Story Behind the Legend”), a Twitter account, television advertisements, bumper stickers and trash cans, all of which, if you look carefully enough, are emblazoned with the tiny encircled “R” that signifies a registered trademark.
One group should not worry about using the phrase, however. The state’s politicians never tire of dropping it into speeches. As governor, George W. Bush used it in his speech accepting the Republican presidential nomination in 2000, and the state’s attorney general, Greg Abbott, recently used it when campaigning for governor. State and federal law allow for trademarked phrases to be used in political speech, said Megan M. Carpenter, the director of the Center for Law and Intellectual Property at the Texas A&M University School of Law in Fort Worth.