Trademarks and Service Marks
§ 24.1State vs. Federal Registration
The commentary in this chapter addresses trademark and service mark registration in the state of Texas. For federal registration of trademarks and patents, refer to the Trademarks and Patents sections, respectively, of the United States Patent and Trademark Office website, www.uspto.gov. For copyright registrations, refer to the United States Copyright Office website, www.copyright.gov.
Trademarks identify tangible goods. A trademark 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. Tex. Bus. & Com. Code § 16.001(10).
Service marks identify services. A service mark is 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, including a unique service, from the services of another, and indicate the source of the services, regardless of whether the source is unknown. The term also includes the titles, character names used by a person, and other distinctive features of radio or television programs, regardless of whether the titles, character names, or programs advertise the sponsor’s goods. Tex. Bus. & Com. Code § 16.001(8).
The word mark is often used generally to refer to both trade and service marks. See Tex. Bus. & Com. Code § 16.001(5).
PRACTICE TIP: Trade and service marks are commonly referred to as brand names, logos, or slogans. Trade names, on the other hand, are terms used only to identify a business organization, rather than to distinguish the goods or services provided by the business, and are not registrable. See Tex. Bus. & Com. Code § 16.001(9).
Marks used in connection with the sale of goods or provision of services in Texas may be registered with the secretary of state. See Tex. Bus. & Com. Code § 16.051. The secretary of state has promulgated certain forms designed to meet statutory requirements and facilitate filings with the office. However, use of the forms is permissive, and applicants may draft their own application as long as they provide all required information in the application. See Tex. Bus. & Com. Code § 16.052. The registration of a mark with the secretary of state expires on the fifth anniversary of the date of registration. Tex. Bus. & Com. Code § 16.059. See SOS Forms 901 through 903 (www.sos.state.tx.us/corp/trademark.shtml).
PRACTICE TIP: The secretary of state provides standard forms that practitioners can use to file a trademark or service mark application. Use of the forms is recommended but not mandatory. The secretary of state’s office recommends that applicants mail, rather than fax, applications for trademarks and service marks to the Secretary of State, P.O. Box 13697, Austin, TX 78711-3697. A cover letter with the applicant’s phone number should accompany the application, along with payment by check or, if payment by credit card is desired, SOS Form 807 (https://webservices.sos.state.tx.us/forms/payment.pdf). Once the application is submitted, along with the necessary documents, it undergoes an examination process. Upon approval, the secretary of state mails a certificate of registration to the applicant. See Tex. Bus. & Com. Code §§ 16.053, 16.058.
The registration of a mark with the secretary of state creates a statewide priority of rights in the mark against any other person who subsequently adopts the same or a confusingly similar mark. Registration also provides “constructive notice” to all persons in the state of Texas of the priority of the registered mark and provides the owner with certain procedural advantages when the owner seeks judicial relief for infringement. See Tex. Bus. & Com. Code §§ 16.060, 16.102(b), (c), 16.104. For these reasons, it is beneficial for an owner of a mark who does business in Texas to register a mark with the secretary of state.
For additional content relevant to the topic of this chapter, see the following:
Application for Registration of a Trade or Service Mark (SOS Form 901), www.sos.state.tx.us/corp/forms/901.pdf
Application for Renewal of a Trade or Service Mark (SOS Form 902), www.sos.state.tx.us/corp/forms/902.pdf
Assignment/Transfer of Ownership of a Trade or Service Mark (SOS Form 903), www.sos.state.tx.us/corp/forms/903.pdf
Business Filings & Trademarks Fee Schedule (SOS Form 806), www.sos.state.tx.us/corp/forms/806_boc.pdf
Payment Form (SOS Form 807), https://webservices.sos.state.tx.us/forms/payment.pdf