At the beginning of May 2010, I posted about a trademark dispute that was developing between the State of Texas and a non-profit corporation by the name of The Daughters of the Republic of Texas (“Daughters”) regarding ownership of the trademark ALAMO. For those of you who haven’t committed all of my previous blog posts to memory, Daughters has operated and maintained The Alamo in San Antonio since 1905 after the Texas legislature enacted a statute directing the Governor of Texas to deliver the Alamo property to the “care and custody” of Daughters “to be maintained by them in good order and repair.” On October 13, 2009, Daughters filed a federal trademark application seeking registration of THE ALAMO for “museum services.” The State of Texas evidently got wind of this application and filed a 90 day extension of time to oppose the application while it further investigated its legal rights in THE ALAMO trademark. The deadline for the State of Texas to file an opposition was July 28, so I was just waiting to see whether The Lone Star State was actually going to pull the trigger and file an opposition against Daughters on the basis that Daughters is not the rightful owner of the THE ALAMO mark.
Well, on July 23, the Texas government ponied up the $300 government filing fee (plus attorneys’ fees) to officially file an opposition against Daughters’ trademark application for THE ALAMO. The Notice of Opposition (which was amended by the State of Texas on August 11) basically asserts that the State has owned the Alamo property since 1883 and that Daughters acts as a trustee for the State in its preservation and management of the Alamo. In other words, Texas is arguing that Daughters is merely a licensee of the ALAMO mark, and that by virtue of the fiduciary trustee relationship between Daughters and the State, all use of the ALAMO trademark by Daughters in connection with museum services accrue to the sole benefit of Texas. Therefore, because Daughters is not the rightful owner of the ALAMO mark, it is not entitled to seek registration of the mark with the Trademark Office. Also, in the most egregious case of “better late than never,” the State of Texas finally applied to register THE ALAMO for a variety of services (including museum services) a few days after it filed its opposition against Daughters.
I personally think this is a pretty interesting case that isn’t necessarily a slam dunk for either side. Clearly, the State of Texas owns the Alamo property and Daughters was appointed by law to ensure that the physical Alamo property was preserved as a memorial to those who died defending the property back in 1836. According to the Notice of Opposition, the revenues generated from the museum, guided tours, and gift shop on the Alamo property are considered State funds that are used by Daughters to preserve the Alamo’s structure and grounds. What is also abundantly clear is that Daughters is the entity responsible for commercializing the ALAMO name and using it in connection with a museum, gift shop, guided tours, etc. The question that remains is whether the State of Texas owns the name ALAMO for these services simply by virtue of ownership of a physical piece of property that was already publicly known as “The Alamo” for many years prior to the State of Texas obtaining ownership of the property in 1883.
I tend to believe the answer is no. Let’s just say that my father owns an old, empty, dilapidated building that used to be a bakery 150 years ago and is still commonly known by the public as the ABC Bakery. I ask my father if I can open up a restaurant in the old ABC Bakery and he says yes so long as all of the revenues generated by the restaurant are considered his but go to the upkeep of the building. I agree (I’m not a very good businessman) and open up a gourmet restaurant called the ABC Bakery. I spend a ton of money advertising my restaurant and it becomes extremely well-known throughout the Untied States for serving the highest-quality food. Unquestionably, I took what was merely the commonly recognized name of a geographic location and turned it into a trademark for restaurant services. Does that now mean my father owns the ABC BAKERY trademark for restaurant services by virtue of merely owning a building commonly known as the ABC Bakery? I think not. And that’s why I don’t think the State of Texas owns the name ALAMO for the museum services, guided tours, and retail services that are rendered on the grounds of the Alamo site.
But, you know, instead of litigating this dispute, perhaps Daughters and the State of Texas should act in accordance with the Texas state motto (“Friendship”) and just agree to a friendly eating competition down at the famous Big Texan Steak Ranch in Amarillo. First to finish the 72 Ounce Steak Challenge gets all rights in the ALAMO trademark. May the biggest appetite win!