In Texas Department of Transportation v. Richard Tucker, the Trademark Trial and Appeal Board (“TTAB”) unanimously granted the Texas Department of Transportation’s (“TxDOT”) motion for summary judgment, holding no genuine issue of material fact existed and Richard Tucker’s (“Tucker”) mark was likely to cause confusion.
TxDOT and Tucker both claimed use of and registered the same mark, “DON’T MESS WITH TEXAS” for goods, specifically clothing. TxDOT, claiming priority of use and a likelihood of confusion under 15 U.S.C. § 1052, filed a petition to cancel Tucker’s registration and a notice of opposition against Tucker’s pending application under 15 U.S.C. § 1064 and 15 U.S.C. § 1063 respectively. The two cases were consolidated.
First, the TTAB decided the issue of priority, explaining priority is resolved differently in opposition and cancellation proceedings. In the opposition proceeding priority was not an issue “by virtue of TxDOT’s submission of status and title copies of its pleaded registrations.”
In the cancellation proceeding, priority was an issue. Tucker argued that the TxDOT failed to show the actual date of its first use of the mark. However, Tucker had admitted that TxDOT had prior use of the mark in TxDOT’s Request for Admissions. Moreover, TxDOT provided sufficient evidence to demonstrate their use of the mark since 1986. Therefore, TxDOT’s priority was conclusively established.
Next, the TTAB analyzed whether Tucker’s mark was likely to cause confusion. TxDOT produced ample evidence that TxDOT’s mark was well-known and had received significant publicity. While Tucker argued that evidence of actual confusion was de minimis, the TTAB responded conclusive evidence was not necessary to grant summary judgment on the issue of confusion. Tucker’s argument was further weakened by evidence that he sent a cease and desist letter to a TxDOT licensee asserting a likelihood of confusion with his mark and had admitted prior knowledge of TxDOT’s mark when he adopted his own.
Tucker also argued that the TxDOT has not made significant use of its mark outside of Texas. The TTAB dismissed Tucker’s argument since prior significant use in Texas was sufficient.
The TTAB found a likelihood of confusion based on the fact the respective marks were identical and that the parties had used the mark on identical goods, including t-shirts.
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