What Texas Businesses Need to Know About Texas Trademark Laws

Texas Trademark Law Are you ready to register your trademark? Before you begin the process of applying for a certificate of registration, you should learn more about Texas trademark law.

How do you obtain a trademark in Texas, for instance? What should you know about Texas common law trademark infringement and how it relates to federal trademark infringement law? What are some of the possible remedies for a Texas trademark infringement case?


Texas Trademark Article Contents:


What is a Trademark Under Texas Law?

If you are currently running a business or are thinking about starting up a business, it is important to understand how Texas trademark law works and how it may impact you.

What is a trademark?

According to an FAQ sheet from the Texas Secretary of State, a trademark is something that is “used in connection with tangible goods or products.” It differs from a “service mark,” which is “used in connection with services.”

Under Texas law, a trademark typically is defined as “a word, name, symbol, or device, or any combination of those terms, used by a person to identify and distinguish the person’s goods from the goods manufactured or sold by another.”

By using a trademark in connection with a product, the trademark indicates that the goods being provided through that mark are coming from the same source.

Service marks are similar in that they, too, typically are defined as “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 from the services of another.” The key distinction between a trademark and a service mark is that a trademark identifies goods or products, while a service mark identifies services.

Registering a Trademark in Texas

How does a party obtain a trademark in Texas? There are essentially two ways to have a trademark:

  1. Obtain common law ownership rights to a trademark by using it; or
  2. Register your mark with the Texas Secretary of State.

You do not have to register a trademark in order for it to be valid. To be sure, if you use the trademark in commerce in connection with the goods or products you provide, then you may have common law rights to the trademark.

However, there are valuable reasons for registering your trademark, including but not limited to the following:

  • Registering your trademark puts other parties in Texas on notice that you have ownership rights to that trademark in connection with the goods or products you sell; and
  • Registering your trademark provides you with proof that you own the trademark and that you have an exclusive right to use it in Texas in connection with the goods or products you provide (in the event of a trademark infringement case).

Texas law requires you to use your trademark before you register it. When you apply to register your trademark, you will need to show that you are using it in connection with goods or products. Once you register it, it will remain registered in Texas for five years, after which point you can file a renewal application for an additional five-year term. When you apply to renew your trademark, you will need to show the following:

  • Verified statement that the trademark has been in use in Texas and still is in use in Texas; and
  • Specimen of the trademark, either as it is actually used or in connection with your goods or products.


Texas Common Law Trademark Infringement

What are the elements of common law trademark infringement under Texas law?

As the Court of Appeals for the First District of Texas explains in Hot-Hed, Inc. v. Safehouse Habitats (2010), the elements in Texas are “the same as the those under federal trademark law.” This means that the party that seeks to prove trademark infringement first is required to “establish that the name it seeks is eligible for protection.”

How does a court in Texas decide whether a word or a phrase is eligible for protection?

Language from a case in the U.S. Court of Appeals for the Fifth Circuit, Union National Bank of Texas, Laredo v. Union National Bank of Texas, Austin (1990) remains the mandatory law in Texas. That case provides guidance for determining whether a word or phrase is eligible for protection. It looks to see which of the following categories that word or phrase belongs to:

  • generic;
  • descriptive;
  • suggestive; or

Which types of words are eligible for protection?

The court clarifies that “generic terms are never eligible for protection.” What about descriptive terms? Descriptive terms only can be protected “after the party seeking to establish infringement provides proof that the term for which it seeks protection has secondary meaning.”

Suggestive and arbitrary words or phrases are treated differently. Words and phrases that fall into these categories are eligible for protection without the plaintiff showing that the word or phrase has a secondary meaning. Secondary meaning typically refers to the public’s ability to recognize the trademark as distinctive because the trademark has been in use for a sufficient period of time.

Further reading: Texas Trademark Infringement Statute of Limitations

Relief for Texas Trademark Infringement

What kinds of remedies are available to plaintiffs in Texas trademark infringement cases?

Typically, Texas law says that the plaintiff may be eligible for:

  • An injunction (preventing the defendant from continuing to use and to profit from the trademark);
  • Profits the defendant obtained from use of the mark (typically in cases where the defendant intended to confuse or to deceive the public by knowingly using an existing trademark); and/or
  • Reasonable attorney’s fees.

In terms of the award of profits, that award cannot exceed three times the amount of the actual profits the defendant obtained through use of the trademark.

What Does a Texas Trademark Lawyer Do?

There are many reasons a business needs the assistance of a Texas trademark lawyer. Some businesses simply need help navigating the process of registering a trademark. Other businesses may need assistance obtaining trademark protection. And then there are cases where businesses disputes arise over issues involving trademark infringement.

Creating a Trademark for Your Business and Registering It with the USPTO

Texas trademark lawyers frequently assist clients in creating trademarks and obtaining trademark protection. In order to understand when something can be a trademark that is eligible for protection, it is important to understand how the law defines a trademark.

What is a trademark? In brief, trademarks help to define business products to give companies exclusive rights to the earnings made from the use of the trademark. Typically, trademarks include “words, phrases, logos and symbols used by producers to identify their goods,” according to the Cornell Legal Information Institute (LII).

In Qualitex v. Jacobsen Products Co. (1995), the U.S. Supreme Court clarified that “shapes, sounds, fragrances, and colors may also be registered as trademarks.” While recent case law suggests that almost anything may qualify as a trademark, this does not necessarily mean that it will qualify for trademark protection.

Ultimately, trademarks are intellectual property. The strength of your trademark is important to consider, as well as the description of the goods and services you are offering in connection with your trademarked product. A trademark litigation lawyer in Texas can help you consider all of these issues.

Once you contend with these questions, you can file an application to register your trademark through the U.S. Patent and Trademark Office (USPTO).

While trademarks do not have to be registered in order to be eligible for trademark protection, registering your trademark can help to clarify your rights with regard to that mark and can put other businesses on notice that they do not have a right to use it for their own profit.

Assisting Clients with Trademark Protection

When does a word, phrase, or even a color qualify for trademark protection? This question invokes what is known as the “functionality doctrine.” In Qualitex, the Supreme Court explains that the functionality doctrine says that trademark law cannot inhibit legitimate competition when the product is “functional.” What does this mean? The functionality doctrine “prevents the use of a product features as a trademark where such use would put competitors at a significant non-reputation-related disadvantage,” according to the LII.

In other words, there is a kind of balancing act that goes on in which a court must determine whether trademark law protections are more important in a given case than allowing for legitimate business competition. Creating a trademark, registering it, and gaining trademark protection can be very complicated. A Texas trademark attorney can help you with every aspect of trademark creation and protection.

Advocating for Clients’ Rights in Trademark Infringement Cases

Whether you have registered your trademark or not, that trademark can be eligible for protection as we mentioned above. This means that if another party attempts to use your trademark in order to profit—without your consent—then you may be able to file a trademark infringement claim.

According to the USPTO, trademark infringement is defined as “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”

To be clear, trademark infringement occurs when Business B attempts to use Business A’s trademark in a way that confuses consumers about where the product is coming from. Ultimately, as the USPTO suggests, Business B’s use of Business A’s trademark could lead a consumer to pay for certain goods because she assumes the trademark means that the product is coming from Business A.

Trademark infringement falls under the Lanham Act. In order to prove that trademark infringement has occurred, the burden is on the plaintiff (in the hypothetical discussed above, the burden would be on Business A) to prove the following:

  • It has a valid trademark that is legally protectable;
  • It owns the trademark (the trademark is the plaintiff’s intellectual property);
  • Defendant used the trademark in commerce, involving the advertisement or sale of goods, without the plaintiff’s consent; and
  • Defendant’s use of the trademark causes a likelihood of confusion.

There is no simple way for a court to determine whether the use of a trademark is likely to cause confusion among consumers. However, some of the factors that the court will take into account include but are not limited to:

  • Degree of similarity between the marks;
  • Whether the plaintiff’s and the defendant’s goods being advertised or sold are significantly similar such that the use of a similar mark would lead consumers to mistakenly assume that the goods come from the same place;
  • How and where the plaintiff’s and defendant’s goods are advertised, marketed, and sold;
  • Purchasing conditions for both parties’ goods;
  • Range of possible buyers for both parties’ products;
  • Whether there is evidence that actual confusion has occurred among consumers or buyers concerning the source of the goods;
  • Defendant’s intent in using the mark; and
  • Strength of the plaintiff’s trademark.

Texas trademark lawyers regularly assist business clients with trademark infringement cases. Trademark infringement cases can be extremely complicated, and each case has its own nuances.

Contact a Trademark Lawyer in Texas for a Consultation

If you have questions about registering your trademark, or if you believe you have a trademark infringement case, you should discuss your options with a trademark lawyer in Texas as soon as possible. Contact Lindquist Wood Edwards, LLP today to learn more about the services we provide.