If your business operates on a national level, then the choice to pursue a federal trademark registration makes sense. Such a registration protects your mark from use by someone else on a nationwide basis.
However, what if you only plan to operate in the State of Texas? A federal trademark registration may not make sense in this situation, especially when there is the option of obtaining a state trademark registration.
In general, obtaining a state trademark registration in Texas is far less complicated, time-consuming and expensive than pursuing a federal registration. When seen in this light, it becomes clear that a Texas trademark registration just makes sense.
What Is a Trademark?
Many entrepreneurs initially don’t understand why they would need a trademark registration. Once they understand the benefits that an official registration grants, they quickly begin to see the advantages.
According to Texas trademark law, a trademark may be a word, phrase, logo, device or symbol. A trademark also may include any combination of these components. The primary purpose of this trademark is to identify the source of the goods or services that are associated with use of the mark. This makes it easier for consumers to always come back to a brand name that they know and trust.
Why Should You Register Your Trademark?
Numerous advantages come with registering a trademark in Texas. Essentially, it formalizes your use and ownership of your particular mark. This means that you are empowered to prevent other individuals or businesses from using your trademark to their benefit.
As an example, suppose that you have invented a new widget that everyone needs to have. You’ve registered a trademark for the unique name of your widget in order to protect your rights.
Then, a competitor comes along, selling a knock-off widget of questionable quality. To make matters worse, that competitor is using a trademark that is confusingly similar to yours. Unless consumers are paying really close attention, they may accidentally buy the competitor’s inferior product, believing it to be yours.
When that knock-off product proves unreliable, the public may form a poor opinion of your company even though the product was made by your competitor.
When your trademark is registered, you have the ability to prevent your competitor from using your trademark. This helps to ensure that any goodwill that your company has earned remains where it belongs.
Texas State Requirements
If you want to register a trademark in Texas, then you’ll have to meet certain requirements.
For instance, you must be able to demonstrate to the secretary of state that your mark was in use in commerce in Texas on goods or services prior to the date on which you applied to register your mark.
Additionally, it’s necessary that your mark be different from other trademarks that are already registered in Texas. The more original and unique your mark is, the easier it will be to register. This also makes it easier for consumers to remember.
The office of the Texas Secretary of State also looks in the registered trademarks at the U.S. Patent and Trademark Office to ensure that the new mark is not identical to an existing trademark.
How to Register for a Trademark in Texas
Applying for a Texas trademark registration is easy.
Just fill out the Trademark or Service Mark Application Form, which can be obtained online. Note that the form must be notarized before it is submitted.
Include three original specimens showing use of the mark in Texas, and be ready to pay the official fees for each class of goods or services for which you are applying.
Next, the state reviews the application and specimens. They follow up if any issues are raised.
The trademark registration will issue if there are no issues. It remains valid for a five-year term, at which time it can be renewed.
Getting a Texas trademark registration is relatively easy when compared with a federal registration. Nonetheless, there can be bumps in the road. If the application is not correctly completed, it can result in significant delays and unexpected costs.
What If Your Texas Trademark Application Is Rejected?
Each trademark application that is received by the Secretary of State is examined. Occasionally, in the viewpoint of the official who reviews the application, some trademarks are not entitled to registration.
The rejection may say that the proposed trademark is merely descriptive. This is a legal term that means that the trademark isn’t considered distinctive enough for registration. According to state law, trademarks are required to meet certain standards. When a mark is 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
Receiving a rejection that your trademark is merely descriptive may seem final, but it doesn’t always have to be. If you application is rejected for being merely descriptive, then it makes sense to consult with a qualified intellectual property attorney.
This is because it may be possible for the attorney to argue that the trademark has acquired distinctiveness through prolonged use in Texas. Other arguments may be possible, which is why it is always wise to meet with a trademark attorney before giving up on your application.
Alternatively, applicants for trademarks in Texas may be asked to “disclaim” a portion of their mark. Although some applicants may be alarmed to receive such a notice, this is actually a positive development. It means that although the mark is considered distinctive and eligible for registration, a portion of the mark is not distinctive when viewed separately.
Accordingly, it is not permissible for the applicant to have the exclusive right to use this portion of the trademark by itself. By disclaiming this portion of the mark, the applicant is acknowledging that they do not have the right to prevent others from using that portion of the mark by itself.
If you have received a notification that you are required to disclaim a portion of your trademark, contact a Texas intellectual property attorney to learn whether or not agreeing to the disclaimer is appropriate.
Once you have responded to a notice that your trademark is merely descriptive or agreed to disclaim the exclusive right to use a portion of your trademark, the application is likely to proceed to registration.
Contact Williams IP Law if you need assistance in registering a trademark in Texas or are looking for general intellectual property advice.