In the state of Texas, trademark registration helps business owners protect their name, slogan, or logo from use by another entity.
While registering for a Texas trademark is much quicker than a federal trademark application, it requires a lot of the same information.
The application can be overwhelming for small business owners, especially if they have no experience with intellectual property protections.
Here are some of the most frequently asked questions about Texas trademark registration and how a business law attorney can help with the process.
What Are the Requirements for Texas Trademark Registration?
In Texas, there are two requirements for trademark registration.
First, the mark must currently be in use. This means that you must be actively using the trademark on sold products or service advertisements in Texas before submitting the application.
If you register before you start using the mark, the trademark examiner will deny your application without a refund.
Second, the mark must be distinct. This means that the words, symbols, names, logos, and devices must be unique.
If the mark consists mainly of common descriptions of a product/service or a surname (e.g., “Delicious Ice Cream,” or “Petersen’s”), it cannot be registered.
However, a non-distinctive mark may become eligible for a trademark after five consecutive years of exclusive use if it doesn’t conflict with other trademarks registered in the state.
Do I Need to Be a Business to Register a Trademark in Texas?
You don’t need to be a business to register a Texas trademark. Anyone may apply for a trademark in Texas as long as they own the mark being registered.
However, your business designation determines whether the trademark belongs to an individual or an entity.
For example, if you are a sole proprietor, you may register the trademark under your name. In contrast, if you are a limited liability company or corporation, you must register the mark under the business name.
How Do I Check If a Trademark Is Registered?
In Texas, a trademark or “mark” 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, including a unique product, from the goods manufactured or sold by another, and indicate the source of the goods, regardless of whether the source is unknown.”
Sometimes the word “mark” can also refer to a “service mark,” which identifies services unique to a certain company.
The Texas Secretary of State does not maintain a comprehensive database that allows individuals or businesses to search for state-registered marks.
Instead, they suggest that you rely on private companies to assist you. However, many businesses do not know where to begin when hiring a third party to perform a trademark search.
A knowledgeable Texas trademark attorney can help you navigate the Texas trademark search process.
The Massingill team can save you time, money, and heartache by making sure your desired trademark is available. We can also help you register your trademark if the search comes back clear.
How Long Do Texas Trademarks Last?
In Texas, the registration of a trademark lasts five years from the date of registration. After the initial five years, you may renew the trademark registration for an additional five years within 180 days before the expiration date. To renew your trademark registration, the mark must still be in use in Texas.
Unlike patents and copyrights, trademarks do not expire after a set period of time. Trademarks will persist so long as the owner continues to use the trademark. Once the United States Patent and Trademark Office (USPTO), grants a registered trademark, the owner must continue to use the trademark in ordinary commerce.
How Do You Get a Trademark In Texas
In Texas, you can acquire common law ownership rights to a mark. All you have to do is use your trademark in commerce in connection with your goods or services.
You do not have to register your mark with the Secretary of State to acquire a trademark. However, this is the weakest form of trademark protection available for your intellectual property.
Most business owners are not able to prove the exact date they began using their mark when they rely on the common law right to their trademark.
If someone registers the mark with the Secretary of State and challenges your common law ownership rights, you may not be protected.
The Massingill team can help you understand your trademark rights and options.
How to Register a Trademark in Texas
Registering a trademark in Texas is relatively simple if you have only one mark. All that’s required is an application with an example of the mark and a class fee. However, if you have multiple marks, you must pay a class fee for each one.
1. Complete an Application
Texas trademark registration requires an application which includes your individual or business name, address, and mark information. The application, Form 901, includes ten sections and can be delivered to the Secretary of State by mail, fax, or in person.
To review the application, the trademark examiner needs three pieces of proof, also known as specimens, showing that your mark is currently in use. A specimen includes any tags, labels, packaging, web pages, or ads that include the mark.
Sections 5-10 of the application deal with the details of your mark. In section five, you must describe the mark as it appears in your provided samples.
You can also claim the colors of your mark as a distinctive feature if desired. The rest of the sections identify the goods and services being sold with the mark and whether the trademark is registered with the United States Patent and Trademark Office.
2. Pay the Class Fee
In section seven, the application asks you to classify the types of goods or services being sold with the mark you submit. For example, if your mark appears on two separate categories of products, such as alcoholic beverages and meats, you must pay two class fees. The cost per class for Texas trademark registration is $50.
Why Was My Trademark Application Rejected?
There are a few reasons why the trademark examiner may reject your application. One of the most common reasons for rejection is submitting a mark that isn’t distinctive.
According to Section 16.051 of the Texas Business and Commerce Code, a mark isn’t registerable if it is descriptive, deceptively misdescriptive, primarily a surname, or primarily a geographic feature.
Another reason why your application may be rejected is because certain parts of the mark aren’t registerable. This usually includes general words that may be used to describe a product or service.
Need Help Registering a Trademark in Texas?
At Massingill, we are dedicated to helping businesses safeguard their intellectual property.
As experienced trademark attorneys, we have helped many Texans protect all manner of trademarks and service marks.
Whether you need your trademark filed with the state of Texas or the US Patent and Trademark Office, we can help.
If you want to register a trademark in Texas or have questions about your application, call us today at (512) 410-0343 to schedule a free consultation.