A recent consent order confirms that, as the owner of the Alamo, the state of Texas also owns the mission’s image and can restrict others from using its distinctive silhouette to sell commercial products.
On April 30, 2015, US District Judge Fred Biery signed a consent order and final judgment prohibiting two rival beer makers from using images the State of Texas claimed infringed on the state’s trademark on the Alamo. See Consent Order, Alamo Beer Co., LLC v. Old 300 Brewing, LLC, Case No. 5:14-cv-285 (W.D. Tex.) (April 30, 2015).
The lawsuit commenced last year when San Antonio’s Alamo Beer Company sought to enjoin Texian Brewing Co. of Richmond, Texas, from using the “outline of the Alamo” on its beer products and promotional materials. Alamo Beer Company had used the Alamo name and a silhouette of the San Antonio landmark in its marketing materials since 1997.
Texas (through its Government Land office) intervened in the suit, claiming that the outline of the Alamo’s facade is a “treasured symbol of Texas liberty” and its use, along with the word ALAMO, suggests an affiliation with the state and the historic Alamo location. The state further asserted that the roof outline is “famous” and that “consumers anticipate that products bearing [these marks] are used by or with permission of the state.” See GLO Motion to Intervene and Complaint, Case No. 5:14-cv-285 (W.D. Tex.). Since January 10, 2012, Texas has obtained federal registration for nearly two dozen marks including the name and image of the Alamo, to “protect the Alamo image from excessive for-profit use.”
In allowing the state to intervene, the San Antonio federal court held that because Texas owned both the Alamo itself as well as numerous federally registered marks, the state had a legally protectable interest in the litigation. The court rejected Alamo Beer Company’s argument that the state lacked such an interest because the state does not offer any products related to beer.
Recently, the state and the two brewers reached a settlement that included the entry of the April 30 consent order. The order permanently enjoins and restrains Alamo Beer and Texian from using “any other mark or name confusingly similar” to those trademarked by the state. The order also confirms that the state’s “ALAMO Marks” are famous, and entitled to protection from dilution under both state and federal law. See Consent Order.
According to a press statement issued by the Texas GLO, the state has since granted Alamo Beer Company an official license to use the Alamo mark, “for which they paid a substantial licensing fee.”
Even though it appears that the Alamo Beer Company won’t have to make any changes to its beer label, the case and its resolution may have significant implications for hundreds of other Texas businesses. The San Antonio YP phone book lists more than two full pages of companies that use “Alamo” in their business name. A sampling:
- Alamo City Plumbing
- Alamo Golf Club
- Alamo Ice House Brew & BBQ
- Alamo Water Softeners
- Alamo Family & Cosmetic Dentistry
- Alamo Sporting Arms
- Alamo Drafthouse
- Alamo Crane Service
Although Texas Land Commissioner, George P. Bush, has reportedly stated that companies are free to use the word ALAMO as long as they don’t use other Alamo-related images or insignia, dozens of businesses do incorporate imagery of the Alamo into their logos and advertisements. Whether the state plans to take action to enforce its Alamo trademarks against any other business entities is currently unknown.
Whereas most trademark owners can only enforce their rights against those who use similar marks to market similar products, the owner of a “famous” mark can bring an action against any use of the mark that dilutes its distinctive quality, either through “blurring” or “tarnishment.” 15 U.S.C. 1125(c)(2)(B) and (C). Notably, a plaintiff need not demonstrate a likelihood of confusion in an action for dilution.