How to Register a Trademark in Texas

What Is a Trademark in Texas?

According to  the Texas Secretary of State, a trademark is defined as a concept that is “used in connection with tangible goods or products.” It differs from a “service mark,” which is “used in connection with services.”

Under the Texas Law, a trademark in common sense is  “a word, name, symbol, or device, or any combination of those terms, used by a person to identify and distinguish the person’s goods from the goods manufactured or sold by another.”

Service marks, in comparison,  are applied to services, and usually are defined as “a word, name, symbol, or device, or any combination of those terms, used by a person to identify and distinguish the services of one person from the services of another.” This is the main difference between the  trademark and a service mark. 

An applicant can receive a trademark in Texas with two different, but equal ways:

The trademark is used in the state commerce, and  it is the legal base of obtaining common law ownership rights; or

The Texas Secretary of State can register the trade mark after the special application.

Your trade mark will be valid with the registration or without it, there is not the obligation. But you should be awarded, as a business owner, that not only the goods or services, but also the  brand name are among your most valuable assets. In order to protect your assets, your trademark should be registered .

Three basic requirements are significant for Trademark registration in Texas

and they are set out in the Texas Business and Commerce Code.

1.  The application process of Trademark registration should be started only when the goods really are used  in Texas.  
2. The distinctiveness of the registered  mark must be obvious.
3. The mark should not be like (even partly) to any mark that is ( or was) registered with the Texas Secretary of State (SOS) or the USPTO, for avoiding concept confusion, mistake, or direct  deceiveness.

The process of  trademark registration might be complicated

You can apply yourself or hire a trademark attorney who knows all procedures.

You may ask if hiring an attorney to file an application is mandatory?

The shortest answer is: no.

The unique option for the business owners domiciled in the United States is that they can  legally file trademark applications without any assistance. And often they choose to apply on their own. In order to avoid unnecessary expenses they prefer to spend  time and afford, but not pay an attorney. Perhaps, they also feel the capacity of handling this uncomplicated paperwork.

In reality there are a lot of traps on this way, if you decide to walk this path alone, moreover, any hidden error might lead to delay in protecting your brand or service.  It is strongly recommended to weigh the pros and cons. 

Experienced trademark attorney can: 

• Provide you with legal support regarding valuable assets such as production, brand, all kinds of the  intellectual property, etc.
•  Before starting the process it is very important to conduct special searches in order to avoid the trademarks conflicts.
• Assist  in quick and accurate preparation of your application.
• Analyze the reasons in case of  registration refusal   
• Represent you at USPTO’s Trademark Trial and Appeal Board.
• According to the SOS, it initially rejects a majority of applications submitted by non-attorneys. 

FAQ

Do I have to use an attorney to apply to register a mark?

No; however, it is significant to take into account that although an attorney can advocate in completing an application,  but cannot  give you any advice concerning business. Would be useful to obtain consulting with an attorney about the best manner  to protect your non-material assets.The SOS of Texas often rejects the significant quantity of trademark applications that are submitted  by non-attorneys.

Can I reserve a mark? Can I submit an application before I start using a mark?

No. Before a mark can be registered in Texas, it must already be in use in Texas commerce in connection with the relevant goods or services. A trademark is “in use” when it has been placed on the goods, containers of the goods, or point-of-sale displays of the goods, and the goods have been sold, displayed for sale, or otherwise publicly distributed in Texas. Tex. Bus. & Com. Code §16.003(a). A service mark is “in use” when (1) it is displayed in Texas in connection with selling or advertising the services, and (2) the services are performed in Texas. Tex. Bus. & Com. Code §16.003(b).

Can I register a trade name statewide?

No. Texas law does not allow the trade names statewide.  On the other hand, if your trade name is also used as a trademark or service mark,  you might apply to register it as your intellectual property.

Can I expedite the review of my application? If I drive to Austin, will you process my application while I wait? Can I fax or email my application?

No. This office examines applications in the order in which they are received. This office does not expedite any trademark application filings. This office does not accept fax or email filings.

Do you need to be a corporation to register a mark?

No. Whoever owns a mark can apply to register it. A mark can be owned by an individual, a partnership, a limited liability company, a corporation, or another legal entity.

Generally, a mark is owned by the individual, partnership, or other organization that offers the relevant goods or services. If a business entity, such as a limited liability company, provides the goods or services under a mark, the business entity owns the mark; an individual owner of that business entity does not own the mark.

What is a specimen? Do I really have to send in three specimens? Will a photograph or photocopy work?

A specimen is an actual sample of how you use the mark in Texas commerce. Acceptable specimens for trademarks include actual tags or labels affixed to goods, actual tags or labels affixed to containers of the goods, packaging, photographs showing that the mark is displayed directly on the goods themselves, or photographs showing the mark in point-of-sale displays. Acceptable specimens for service marks include flyers, newspaper ads, screen shots from web pages that include the complete URL, and other actual advertising that makes a clear reference to the services.

• Submit at least 3 specimens of the mark in use on the goods sold or on advertisements used for each class claimed.
• You may not submit a proof, a markup, a picture of something that is not already in use, or a specimen with an unclear, incomplete, or obscured version of the mark.
• The specimen must be seen by the public; internal documents, billing statements, and the like are not acceptable. 

How Long Does a Trademark Registration Last?

Texas trademark registrations expire after five years. To re-register a trademark, the owner must submit a renewal to the SOS office during the last six months of the five-year registration period.

The SOS requires that the mark still be in use at the time of renewal.

How much does it cost to register a trademark in Texas?

What If Your Texas Trademark Application Is Rejected?

The Secretary of State office  examines every received trademark application. It might  occur that, from the point of view of the person who checks the application, some trademarks are not allowed for registration.

The rejection may confirm that the conciderated  trademark is slightly descriptive. The distinctiveness is a main legal requirement  for  the registration. According to state law, trademarks are required to meet certain standards. When it is said that the new trademark deemed to be merely descriptive, it means that the mark:

• Describes the use, purpose or function of the goods and services
• Describes who uses the goods or services
• Describes a desirable characteristic
• Is a laudatory mark that claims superior quality
• Merely a person’s name
• Describes a geographic feature of the products

However, the   registration refusal does not mean that  the process is final, there are a few options how the situation might be corrected and always it makes sense to ask for consultation with a qualified trademark  attorney. If your trademark has been used for a long time in commerce in Texas thus this is the legal reason to argue. The attorney is able to prove  that the trademark has required distinctiveness due long-term use in Texas. 

It is very useful from all points of view to ask for advice from a trademark attorney before you decide to give up on your application. 

Additionally, applicants for trademarks in Texas are often given the notice that it is possible   to “disclaim” one or another part of their mark submitted for application. Even though this is a really positive signal , some applicants get anxious  obtaining such a notice. However, this is only the confirmation of the fact that  although the mark is taken as distinctive and eligible for registration, some parts of the mark are not distinctive when viewed separately.

The official answer to this question from SOS of Texas is: “It means that the mark, as a whole, is distinctive and entitled to registration, but certain parts of the mark, viewed separate and apart from the mark, are not distinctive. Disclaiming part of a mark does not mean that you cannot continue to use the disclaimed portions in your mark.”

What are the elements of common law trademark infringement under Texas law?

According to the USPTO, trademark infringement is defined as “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”

Trademark infringement cases are always very complicated, and each case is  unique and   has its own outstandings..

If you have found out a trademark infringement case or are sure that another party illegally uses your trademark, you have a right  to file a trademark infringement claim. It is very important to be aware that you prepare your claim under the Texas statute of limitations, or else you can lose your right to file a lawsuit altogether.

Which types of words are eligible for protection?

The application must include a description of the mark that clearly, accurately, and completely describes every element of the mark. Describe the mark exactly as it appears in the specimens (i.e., samples of use) and on the drawing sheet that accompany the application. The description of the mark, the mark shown on the drawing sheet, and the mark appearing in each specimen must be exactly the same.

• If the mark consists of words only, simply list the words in Item 5.
• If the mark consists of a design only, provide a written description of each element of the design.
• If the mark consists of both words and a design, then list the words followed by a description of each element of the design.
• In addition, if you claim any color as part of the mark, you must include the description and location of each color (e.g., a red balloon with a yellow ribbon) as well as provide at least one specimen that shows the color(s) as described. 

Relief for Texas Trademark Infringement

In common, Texas law says that the plaintiff might be eligible for:

• An injunction (the defendant is prevented  from continuing to use and to profit from the trademark);
• Profits the defendant received from use of the mark (commonly in practice when the defendant with purpose to confuse or to deceive the public by  using  registered trademark); and/or
• Reasonable attorney’s fees.

What Does a Texas Trademark Lawyer Do?

Texas trademark lawyers  advocate clients in creating trademarks, submitting applications and receiving trademark protection.  For understanding if  something might be a trademark it is useful to be aware what is the trademark under the Texas law. 

What is a trademark?  

Traditionally, trademarks include “words, phrases, logos and symbols used by producers to identify their goods,” according to the Cornell Legal Information Institute (LII). But nowadays the U.S. Supreme Court clarified that “shapes, sounds, fragrances, and colors may also be registered as trademarks.” Even when the recent case law counts that almost anything might be qualifyed  as a trademark, this does not always mean that it will provide the trademark protection. Trademarks have always been considered as intellectual business assets. The strength of your trademark is important to consider, as well as the description of the goods and services you are offering in connection with your trademarked product. A trademark litigation lawyer in Texas can help you consider all of these issues.