TXDOT messes with restaurant over slogan
A Baytown-based Mexican restaurant group thought it had come up with a catchy, perfectly cheesy phrase for its newest billboard: Don’t Mess with Tex-mex.
El Toro’s corporate leaders were so taken with it, they applied for a trademark on the phrase.
Nacho fast, the Texas Department of Transportation said.
TXDOT lawyers on Tuesday filed a claim with the U.S. Patent and Trademark Office opposing El Toro’s application, saying the restaurant’s slogan is too close to the highway agency’s well-known anti-litter campaign.
“Any confusing misuse of the phrasing infringes on our trademark in violation of federal law,” TXDOT spokeswoman Veronica Beyer said.
In other words, you could find yourself enchilada trouble.
Folks in the corporate office of El Toro came up with the slogan while talking about other tag lines the six-restaurant company uses on many of its materials, such as “we put the Tex in Mex.”
“We thought it sounded great,” said John Mayes, vice president for operations for El Toro, amainstay ofmexican food onhouston’s east side since 1960.
So great, in fact, that the company put the slogan on a billboard
as it sought the trademark, Mayes said, never thinking anyone would object.
“We are proud we are in Texas, and we are proud of what we do,” Mayes said. “We don’t want people messing with Texas or TexMex.”
El Toro’s attempt to grab the bull by the horns and apply for a trademark, however, only made
TXDOT see red.
Officials do not want anyone messing with TXDOT’S anti-littering message, Beyer said. For decades, transportation officials have protected the prized slogan seriously because of its role in reducing highway litter since 1986.
State lawyers havemessed with people trying to sell everything from belt buckles to real estate,
sending dozens of cease and desist letters for unauthorized use of the slogan.
El Toro was not even all that original.
Two years ago, TXDOT told El Fenix — a Tex-mex staple in Dallas — to remove a mural that mixed the Texas flag with “Don’t Mess With Tex-mex.”
Beyer said the same logic applies to El Toro.
“A private business is attempting to profit from a well-known brand that is paid for and funded by Texas taxpayers,” Beyer said. “The bottom line is ‘Don’t mess with Texas’ always means don’t litter.”
TXDOT’S trademark covers all manner of items, from paper products and promotional materials to beverage koozies, keychains and coolers, all aimed at beautification efforts. Transportation officials also plaster the slogan anywhere and everywhere related to trash cans, while maintaining a website that includes a link to report unlicensed vendors and uses of the phrase.
“By virtue of the widespread use,” TXDOT’S lawyers wrote in their filing opposing El Toro’s trademark, “(the slogan) is famous, and is entitled to broader protection than simply within the classes for which it is registered.”
El Toro lawyer John Rawls said he has not fully reviewedtxdot’s opposition. Often, he said, trademark disputes are cleaned up with a coexistence agreement that allows for limited uses in specific cases.
“The way they’re using it is very different from how the state uses the mark,” Rawls said. “Nobody is going to look at us and think we are TXDOT.”