Firebird Restaurant Group LLC’s 100-year old El Fenix Mexican restaurant chain is taking a youthful jab at the Texas Department of Transportation’s stalwart “Don’t Mess With Texas” anti-litter slogan. And the state agency is smacking back.
In April, El Fenix painted a 16-foot-high, 55-foot-wide “Don’t Mess With Tex-Mex” slogan on its downtown Dallas location, and the state’s transportation department was none too pleased, quickly advising the company that it would defend its mark. No lawsuit has been filed yet.
“We advised El Fenix of our position when it originally contacted us and asked for permission to use our mark for its own products and services,” a transportation department spokesperson wrote in an email. “We denied that request, and El Fenix apparently chose to disregard our refusal. Unfortunately, this leaves us in the position of having to take action to ensure that our valuable mark, and the rights in that mark, are not infringed upon by a company that wants to use it for its own commercial purposes.”
Brian Livingston, president and COO of Firebird Restaurant Group, told Nation’s Restaurant News on Friday that he hopes the state agency and the brand can settle the issue without a court battle.
“We’d love to sit down with them and work something out,” Livingston said. “We’re having that dialogue. We’re obviously not wanting to cause any trouble. We just want use our slogan and celebrate our 100th anniversary.”
Customers of 22-unit El Fenix, which has restaurants in Texas and Oklahoma, have reacted positively to the slogan, Livingston said.
“They realize that we’re celebrating our 100th anniversary, and they don’t want us to change something that’s already great,” he said.
Livingston said the idea for the slogan spin was hatched before he returned to the company in October, having earlier served for four years as chief financial officer.
“The original idea came from Mike Karns, the owner, and when I got here, we accelerated doing it,” he said, adding that El Fenix’s legal department cleared the slogan with the U.S. Patent and Trademark Office before launching the wall, which also carries a #DontMessWithTexMex hashtag to boost social-media mentions.
The Texas agency said in an email that “we appreciate that the ‘Don’t Mess With Texas” trademark is one that is loved by many Texans and is famous in the U.S. as well as worldwide.” It was launched in 1986 and popularized by notable Texas musicians and celebrities.
“Like many other high-profile slogans, it is owned and trademarked,” the department said. “In the case of ‘Don’t Mess With Texas,’ the trademark is owned by the Texas Department of Transportation and has been registered with the U.S. Patent and Trademark Office in many different classes.”
The trademark has expanded beyond the anti-litter campaign to clothing, keychains, bumper stickers, beverage containers and magnets, the agency noted.
“As with many other famous trademarks, we have to continuously take steps necessary to protect the mark from infringement and unlicensed use, otherwise we could lose our ability to protect it in the future,” the department said.
Livingston said El Fenix was a little surprised with the attention.
“We’d love to sit down with them, have an enchilada dinner and maybe a margarita, and work it out,” he said.
Dallas-based Firebird Restaurant Group owns 54 restaurants, including Meso Maya, Snuffer’s, Village Burger Bar, Taqueria La Ventana and TorTaco.
Contract Ron Ruggless at [email protected]
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