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Why You Can Sometimes “Mess With Texas”

After a little digging, we were able to pull up the Judge’s order denying Texas DOT’s temporary restraining order (TRO) seeking to halt sales of a romance novel entitled “Don’t Mess With Texas.”  As explained in a blog post yesterday, the Texas DOT claimed that the book title infringed on their registered trademark – which was the identical phrase.

Here, as demonstrated in this case, having a registered trademark that is virtually impossible to challenge because the requisite five years have passed is not enough.  Without going into all the elements a trademark holder must establish to be successful in an infringement suit, Texas DOT would have to establish that potential customers would be misled or confused by the identical phrases.  Here, this would not be the case – especially because (as the Court pointed out) none of Texas DOT’s trademark registrations covers books.

As such, the Judge found that Texas DOT was unlikely to prevail in this lawsuit – the key element when attempting to obtain a TRO.  In every court, what a party has to establish in order to obtain a TRO is slightly different.  However, the elements generally include not just a likelihood of success on the merits, but also irreparable harm, and a balance of equities in favor of the party seeking the TRO.

Here, though the Court held that all of the elements tilted in the Defendants’ favor, the Judge did dish a dose of realism to the author, publisher and bookseller by stating that one of the reasons that the Texas DOT will not be irreparably harmed is because “the Court doubts the Defendants’ book will fly off the shelves with such speed that sales could not be enjoined in the future, should [the Texas DOT] prevail in its claims in this lawsuit.”  The Court went on to hold that “in light of the questionable popularity of Defendants’ book, any harm [the Texas DOT] might suffer is merely speculative…”  Emphasis throughout is mine.

It is clear that there were no winners in this case.  We’ll continue to monitor it for further development.

We welcome your comments about this interesting case study.


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