A trademark is a brand’s identification and can be a useful part of any business. Before using or registering a trademark, it is important to understand how Texas trademark law works.
What Is a Trademark in Texas?
The Texas Secretary of State (SOS) defines a trademark as a mark “used in connection with tangible goods or products.” Under Texas trademark law, it is a “word, name, symbol, or device, or any combination of those terms” used to identify and distinguish one person’s goods from another and identify its source.
Keep in mind that trademarks and service marks, while similar in many respects, are different. A service mark is used to identify a service, rather than a product or good.
How Do I Get a Trademark?
There are two ways to obtain a trademark in Texas. First, by simply using a mark in connection with your products, you acquire common law ownership rights. Second, you can register your mark with the SOS or United States Patent and Trademark Office (USPTO).
Common Law Ownership Rights
There is no requirement to register a trademark to obtain ownership of it. If you use the mark in commerce in connection with your products or goods, then you own the trademark.
Registering a Trademark
While common law ownership rights might be the quick and easy option for owning a trademark, Texas does not provide the same rights as it does to owners of registered trademarks. There are certain benefits to registering with the SOS.
Registration with the SOS alerts the state of Texas that you claim ownership over a trademark. Before someone else applies to register a similar mark, they are put on notice that the trademark is already registered.
If you intend to use your trademark throughout the country, you can register it with the United States Patent and Trademark Office (USPTO). This provides notice to the rest of the country that you claim ownership of the trademark.
Proof of ownership
Once you receive your certificate of registration, you have proof of the following:
- Valid registration,
- Ownership of the trademark, and
- Exclusivity over the use of the trademark.
This may be useful if someone else is accusing you of using their mark.
Texas trademark law allows you to sue someone for infringing on a registered mark. Plaintiffs who are successful with their trademark infringement cases may be awarded the following:
- An injunction prohibiting the infringer from using and profiting from your trademark,
- The amount of profits the infringer made by using the trademark, and
- Attorney fees.
The amount of the award cannot exceed three times the amount of actual profits the defendant made by using the trademark.
Registering your trademark with the SOS does not guarantee you have the superior right to use the mark. For example, you could be unaware that someone else has common law ownership rights over the mark because the mark is not registered. When processing a registration application, the SOS looks only at those marks registered with the SOS and the USPTO. The applicant is responsible for conducting a more thorough check to avoid infringing on someone else’s mark.
What Do You Need to Register a Trademark?
There are three requirements to register a Texas trademark. First, the mark must be “in use” before you file the application. Second, the mark must be distinctive. Third, the mark cannot be so similar to any other registered mark that it would confuse or deceive consumers.
Any individual, partnership, incorporated entity, or other legal entity can own and register a Texas trademark.
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.
Do You Need a Trademark Lawyer?
Some businesses need help working through the registration process while others may be facing a trademark infringement accusation. In either situation, a Texas trademark lawyer is incredibly beneficial.
Before even starting the registration process, you must know what actually qualifies as a protectable trademark. Between Texas statute and case law, there are legal tests and doctrines that determine what qualifies. Next, the application process to register the trademark brings its own set of complexities. According to the SOS, it initially rejects a majority of applications submitted by non-attorneys. Thus, it is important to hire an experienced attorney who can help you satisfy the legal requirements and accurately complete your application.
Trademark Infringement Cases
As discussed above, both registered and unregistered trademarks are protected. However, there is no Texas trademark authority who can enforce your rights. If you believe someone is using your trademark, a lawyer can ensure your rights are protected through a trademark infringement claim. These cases can be complex, but at The Hunnicutt Law Group, our litigation lawyers have successfully represented businesses involved in trademark infringement disputes.
Contact The Hunnicutt Law Group Today
Whether you need to register a trademark or believe you have a trademark infringement case, we can help. Founder Stephen Hunnicutt brings over 30 years of legal experience to his clients, providing zealous advocacy and personal attention. Contact us today so you can get back to business.