Texas Trademark
How are trademark rights acquired in Texas?
Trademark rights are not acquired through the registration process. Common law ownership rights are acquired through actual use of the mark in commerce. Generally,
the first person to use a trademark is the first person to acquire rights to the mark.
Do I need to register my trademark?
No. It is not required that you register your trademark or service mark in order to establish ownership rights. However, besides providing constructive notice throughout
the state regarding your claim to ownership of the trademark, registration provides the trademark owner with certain procedural advantages should it become necessary
to judicially enforce your trademark rights. Registration of the trademark creates a legal presumption of the registrant’s ownership of the mark and the registrant’s
exclusive right to use the mark in Texas commerce in connection with the goods or services described in the application.
Are there any special requirements for obtaining a state trademark registration?
Yes. The requirements for state trademark registration may be found in Chapter 16 of the Texas Business & Commerce Code and in the administrative rules adopted
by the secretary of state. There are two basic requirements for state trademark registration. A mark must be in use in Texas and must be inherently distinctiveness or, if
not inherently distinctive, it must have acquired distinctiveness through a person’s substantial and exclusive use.
A mark used in association with tangible goods is considered in use in Texas when: 1) the mark is used on, or affixed or attached to the product; and 2) the product is
sold or otherwise publicly distributed for sale in Texas. A mark used in association with services is considered in use in Texas when: 1) the mark is used in association
with the sale or advertising of the services; and 2) the services are rendered in Texas.
Only distinctive words, names, symbols, or logos are entitled to registration. Non distinctive designations or devices include: surnames, terms that are geographically
descriptive of the origin of the goods or services, and terms that are commonly used in describing the product or service, or that directly describe the qualities or
characteristics of the product or service.
Do you need to be a corporation to obtain a trademark?
No. The trademark applicant is the person who owns the mark. Normally, this is the person who produces the goods or who renders the services associated with the
mark and who controls the use of the mark. That person can be an individual sole proprietor, a general partnership, a limited partnership, joint venture, corporation,
limited liability company, unincorporated nonprofit association or other legal entity.
Can a state trademark application be used to register a trade name statewide?
No. There is no state trade name registration act. In addition, a trade name, per se, is not entitled to registration under the provisions of Texas Trademark Act (Chapter
16 of the Texas Business & Commerce Code). However, a trade name that also functions as a trademark is entitled to registration. Whether a trade name also
functions as a trademark is generally based upon the manner in which it is used and displayed. Generally, a trade name functions only as a trade name when it is
followed closely by the business address or telephone number of the enterprise, or when it is accompanied by such phrases as "Manufactured by," "Distributed by," or
"Serviced by."
Can I use the "TM" or "SM" notation without first registering my trademark?
Yes. Prior approval is not required in Texas to use the "tm" or "sm" (trademark or service mark) notation. There is in fact no symbol or designation to indicate state
trademark registration. The "tm" designation does not mean that the mark is registered with the state or that the mark is entitled to registration with the state. The "tm"
notation is merely a means of informing third parties that the person claims trademark rights to the word, slogan, or phrase associated with "tm" or "sm" notation.
Do I need to use an attorney to make an application to register a trademark?
No. Although it is not required that you use an attorney to pursue a trademark application, it is often desirable to employ an attorney who is familiar with trademark
matters.
How do I find out whether the mark I’ve chosen is already registered?
Information on active state trademark registrations is available by calling (512) 463-5555 or by faxing your inquiry to (512) 463-5709. You also may e-mail your inquiry to
corpinfo@sos.state.tx.us. It is strongly suggested that you search federally registered trademarks and service marks, since a federally registered mark generally
preempts a state issued registration.
Does the secretary of state search federally registered trademarks, or any other databases, when examining a state application?
No. The provisions of Chapter 16, Business & Commerce Code only require the secretary of state to search the active state trademark registrations for identical or
confusingly similar marks for purposes of state registration. The secretary of state does not search the state assumed name records, state corporation, limited liability
company or limited partnership names, or the United States Patent and Trademark Office when examining a submitted trademark application. The responsibility of
performing a more substantial search to avoid infringement situations is placed upon the person seeking to register a trademark or service mark.
Can I expedite the review of a trademark application?
No. Pursuant to Chapter 16, Business & Commerce Code, trademark applications are examined in the order in which the applications are filed; including applications
concurrently processed for registration of the same or confusingly similar marks. Consequently, due to the nature of the examination process a trademark application is
not processed on an expedited basis.
I am unsure which international classification applies to my specific goods or services, where can I obtain information on the appropriate class?
A more detailed listing of the goods and services identified under various International Classifications can be found in Rule §93.101 of the administrative rules adopted
by the Texas secretary of state. However, the applicant may omit identification of the International Class if the applicant is unsure of the appropriate classification. The
trademark examiner may change the classification to a more appropriate class or suggest the appropriate class to the applicant during the examination process
Trademark Fees (Chapter 16, Texas Business & Commerce Code)
Application for Registration: $50.00
Renewal of Registration: $25.00
Assignment of Registration: $10.00
Recordation of Instrument Relating to Title: $10.00
Change of Registrant Address: No fee
Voluntary Cancellation of Registration: No fee
Trademark rights are not acquired through the registration process. Common law ownership rights are acquired through actual use of the mark in commerce. Generally,
the first person to use a trademark is the first person to acquire rights to the mark.
Do I need to register my trademark?
No. It is not required that you register your trademark or service mark in order to establish ownership rights. However, besides providing constructive notice throughout
the state regarding your claim to ownership of the trademark, registration provides the trademark owner with certain procedural advantages should it become necessary
to judicially enforce your trademark rights. Registration of the trademark creates a legal presumption of the registrant’s ownership of the mark and the registrant’s
exclusive right to use the mark in Texas commerce in connection with the goods or services described in the application.
Are there any special requirements for obtaining a state trademark registration?
Yes. The requirements for state trademark registration may be found in Chapter 16 of the Texas Business & Commerce Code and in the administrative rules adopted
by the secretary of state. There are two basic requirements for state trademark registration. A mark must be in use in Texas and must be inherently distinctiveness or, if
not inherently distinctive, it must have acquired distinctiveness through a person’s substantial and exclusive use.
A mark used in association with tangible goods is considered in use in Texas when: 1) the mark is used on, or affixed or attached to the product; and 2) the product is
sold or otherwise publicly distributed for sale in Texas. A mark used in association with services is considered in use in Texas when: 1) the mark is used in association
with the sale or advertising of the services; and 2) the services are rendered in Texas.
Only distinctive words, names, symbols, or logos are entitled to registration. Non distinctive designations or devices include: surnames, terms that are geographically
descriptive of the origin of the goods or services, and terms that are commonly used in describing the product or service, or that directly describe the qualities or
characteristics of the product or service.
Do you need to be a corporation to obtain a trademark?
No. The trademark applicant is the person who owns the mark. Normally, this is the person who produces the goods or who renders the services associated with the
mark and who controls the use of the mark. That person can be an individual sole proprietor, a general partnership, a limited partnership, joint venture, corporation,
limited liability company, unincorporated nonprofit association or other legal entity.
Can a state trademark application be used to register a trade name statewide?
No. There is no state trade name registration act. In addition, a trade name, per se, is not entitled to registration under the provisions of Texas Trademark Act (Chapter
16 of the Texas Business & Commerce Code). However, a trade name that also functions as a trademark is entitled to registration. Whether a trade name also
functions as a trademark is generally based upon the manner in which it is used and displayed. Generally, a trade name functions only as a trade name when it is
followed closely by the business address or telephone number of the enterprise, or when it is accompanied by such phrases as "Manufactured by," "Distributed by," or
"Serviced by."
Can I use the "TM" or "SM" notation without first registering my trademark?
Yes. Prior approval is not required in Texas to use the "tm" or "sm" (trademark or service mark) notation. There is in fact no symbol or designation to indicate state
trademark registration. The "tm" designation does not mean that the mark is registered with the state or that the mark is entitled to registration with the state. The "tm"
notation is merely a means of informing third parties that the person claims trademark rights to the word, slogan, or phrase associated with "tm" or "sm" notation.
Do I need to use an attorney to make an application to register a trademark?
No. Although it is not required that you use an attorney to pursue a trademark application, it is often desirable to employ an attorney who is familiar with trademark
matters.
How do I find out whether the mark I’ve chosen is already registered?
Information on active state trademark registrations is available by calling (512) 463-5555 or by faxing your inquiry to (512) 463-5709. You also may e-mail your inquiry to
corpinfo@sos.state.tx.us. It is strongly suggested that you search federally registered trademarks and service marks, since a federally registered mark generally
preempts a state issued registration.
Does the secretary of state search federally registered trademarks, or any other databases, when examining a state application?
No. The provisions of Chapter 16, Business & Commerce Code only require the secretary of state to search the active state trademark registrations for identical or
confusingly similar marks for purposes of state registration. The secretary of state does not search the state assumed name records, state corporation, limited liability
company or limited partnership names, or the United States Patent and Trademark Office when examining a submitted trademark application. The responsibility of
performing a more substantial search to avoid infringement situations is placed upon the person seeking to register a trademark or service mark.
Can I expedite the review of a trademark application?
No. Pursuant to Chapter 16, Business & Commerce Code, trademark applications are examined in the order in which the applications are filed; including applications
concurrently processed for registration of the same or confusingly similar marks. Consequently, due to the nature of the examination process a trademark application is
not processed on an expedited basis.
I am unsure which international classification applies to my specific goods or services, where can I obtain information on the appropriate class?
A more detailed listing of the goods and services identified under various International Classifications can be found in Rule §93.101 of the administrative rules adopted
by the Texas secretary of state. However, the applicant may omit identification of the International Class if the applicant is unsure of the appropriate classification. The
trademark examiner may change the classification to a more appropriate class or suggest the appropriate class to the applicant during the examination process
Trademark Fees (Chapter 16, Texas Business & Commerce Code)
Application for Registration: $50.00
Renewal of Registration: $25.00
Assignment of Registration: $10.00
Recordation of Instrument Relating to Title: $10.00
Change of Registrant Address: No fee
Voluntary Cancellation of Registration: No fee
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