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, in a recent modernization of the secretary of state’s website, trademark applications may now be filed online. This may be done by setting up a portal account on the secretary of state’s website, through which trade and service mark applications may be filed. The use of the secretary of state 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: As a result of the recent modernization of the secretary of state’s website, electronic filing is the preferred method of filing an application. 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.
§ 24.3:1Eligibility for Registration
To be eligible for registration, a mark must be presently in use to identify or distinguish the goods or services of the applicant. Tex. Bus. & Com. Code § 16.051. A mark is not eligible for registration prospectively before being in use.
For goods, a mark is considered to be considered “in use” when the mark is placed on goods, containers of those goods, displays associated with the goods, tags or labels affixed to the goods, (or, if the nature of the goods makes the above impossible, on documents associated with the goods or the sale of the goods) and when the goods are sold or transported in commerce in the state. For services, a mark is considered to be “in use” when the mark is used or displayed in the state in connection with sale or advertisement of the services, and the services are rendered in the state.
Use of a mark made merely to reserve a right to the mark is not considered to be a bona fide use of a mark for purposes of this chapter. Tex. Bus. & Com. Code § 16.003.
§ 24.3:2Application for Registration
The application for registration must include (1) the name and business address of the applicant; (2) if the applicant is a corporation, the state under whose laws the applicant was incorporated or organized; (3) if the applicant is a partnership, the state under whose laws the partnership was organized and the names of the general partners; (4) the names or a description of the goods or services on or in connection with which the mark is being used; (5) the mode or manner in which the mark is being used on or in connection with the goods or services; (6) the class to which the goods or services belong; (7) the date the applicant or applicant’s predecessor in interest first used the mark anywhere; (8) the date the applicant or the applicant’s predecessor in interest first used the mark in this state; and (9) a statement that the applicant is the owner of the mark, that the mark is in use, and that, to the knowledge of the person verifying the application, no other person has registered the mark, either federally or in this state, or is entitled to use the mark in this state in an identical form used by the applicant or in a form likely to cause confusion, mistakes, or to deceive as a result of the resemblance to the mark. Tex. Bus. & Com. Code § 16.052.
An application may only include a single variation of the mark. If multiple variations of the mark are to be registered, a separate application must be filed for each variation.
The application must include a description of all material elements of the mark and should clearly and accurately describe all significant aspects of the mark, including both word and design elements. An element of a mark is considered significant if its addition or deletion would affect the overall commercial impression of the mark. The description of the mark should not mention colors unless applicant is making a color claim. 1 Tex. Admin. Code § 93.35.
The application must be accompanied by three specimens of the mark as actually used and a sample drawing of the mark. Tex. Bus. & Com. Code § 16.052. These specimens can be samples of the mark in use on goods or in connection with services. 1 Tex. Admin. Code § 93.61.
The specimens provided must show the applicant’s actual use of the mark in substantially the same form reflected in the drawing accompanying the application, and not another variation of the mark. Furthermore, such specimens must be provided for public facing goods or advertisements. Printer’s proofs and internal uses of the mark, such as internal communication and interoffice memoranda, are not eligible for acceptance as specimens. 1 Tex. Admin. Code § 93.61.
The drawing shall be a substantially exact representation of the mark as actually used on or in connection with the goods or services. The drawing must be clear and legible and presented on white paper so that a clear electronic image may be made. An electronic reproduction of the mark will suffice as the drawing as long as it meets the requirements of this section and 1 Tex. Admin. Code § 93.52. The drawing sheet should be no larger than 8.5 inches by 11 inches. The actual drawing of the mark must be no larger than 3.15 inches by 3.15 inches. The drawing must depict only one mark and should be limited to the mark sought to be registered. 1 Tex. Admin. Code § 93.51.
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