October 25, 2020

Y M L P-226

Solutions For a Small Business

Really do not mess with our trademark

A Baytown-centered Mexican cafe group imagined it experienced come up with a catchy, beautifully tacky phrase for its most recent billboard: Really do not Mess with Tex-Mex.

El Toro’s company leaders were being so taken with it, they applied for a trademark on the phrase.

Nacho speedy, the Texas Section of Transportation stated.

TxDOT attorneys on Tuesday filed a declare with the U.S. Patent and Trademark Business office opposing El Toro’s application, expressing the restaurant’s slogan is also close to the highway agency’s nicely-recognized anti-litter marketing campaign.

“Any confusing misuse of the phrasing infringes on our trademark in violation of federal regulation,” TxDOT spokeswoman Veronica Beyer mentioned.

In other text, you could locate your self enchilada trouble.

People in the corporate place of work of El Toro came up with the slogan while chatting about other tag lines the six-restaurant corporation works by using on quite a few of its resources, this sort of as “we set the Tex in Mex.”

“We believed it sounded good,” claimed John Mayes, vice president for operations for El Toro, a mainstay of Mexican foods on Houston’s east side due to the fact 1960.

So fantastic, in truth, that the corporation place the slogan on a billboard as it sought the trademark, Mayes reported, in no way thinking any one would item.

“We are happy we are in Texas, and we are proud of what we do,” Mayes mentioned. “We really do not want persons messing with Texas or Tex-Mex.”

El Toro’s endeavor to grab the bull by the horns and implement for a trademark, however, only designed TxDOT see pink.

Officers do not want anybody messing with TxDOT’s anti-littering concept, Beyer explained. For many years, transportation officers have shielded the prized slogan significantly because of its purpose in decreasing freeway litter considering the fact that 1986.

Point out lawyers have messed with folks making an attempt to promote all the things from belt buckles to actual estate, sending dozens of stop and desist letters for unauthorized use of the slogan.

El Toro was not even all that first.

Two many years in the past, TxDOT informed El Fenix — a Tex-Mex staple in Dallas — to remove a mural that combined the Texas flag with “Don’t Mess With Tex-Mex.”

Beyer mentioned the identical logic applies to El Toro.

“A personal small business is making an attempt to gain from a effectively-acknowledged model that is paid out for and funded by Texas taxpayers,” Beyer mentioned. “The bottom line is ‘Don’t mess with Texas’ generally signifies really do not litter.”

TxDOT’s trademark handles all method of products, from paper products and promotional resources to beverage koozies, keychains and coolers, all aimed at beautification efforts. Transportation officers also plaster the slogan any place and just about everywhere similar to trash cans, when sustaining a internet site that contains a backlink to report unlicensed vendors and works by using of the phrase.

“By virtue of the popular use,” TxDOT’s attorneys wrote in their filing opposing El Toro’s trademark, “(the slogan) is famous, and is entitled to broader security than only in just the lessons for which it is registered.”

El Toro attorney John Rawls stated he has not completely reviewed TxDOT’s opposition. Often, he mentioned, trademark disputes are cleaned up with a coexistence agreement that enables for restricted makes use of in particular scenarios.

“The way they’re utilizing it is incredibly distinct from how the point out uses the mark,” Rawls explained. “Nobody is likely to glance at us and assume we are TxDOT.”

[email protected]

Continue Reading