Trademark registration in Texas. Texas is a state in the South Central region of the United States. As of 2019, Texas had a gross state product (GSP) of $1.9 trillion, the second-highest in the U.S. Its GSP is greater than the GDPs of Brazil, Canada, Russia, South Korea, and Spain, which are the world’s 9th-, 10th-, 11th-, 12th- and 13th-largest economies, respectively. Texas’s economy is the second-largest of any country subdivision globally, behind California. Accordingly, many businesses want to enter this market and one of the most important preparations a business needs to take before expanding to this state is to learn the procedure of trademark registration in Texas.
Texas trademark registration
Although registering a trademark through the USPTO will grant the trademark owner more rights and better protection against infringement activities, trademark registration in the state of Texas also has its benefits.
One of the most basic advantages when registering a trademark in a state is that the procedure is much simpler, faster, and way less expensive than federal trademark registration.
Accordingly, if the applicant only intends to operate inside Texas with no aim to develop to other states or countries, Texas trademark registration is the right choice.
Trademark in Texas
According to Texas law on Intellectual property, a trademark or service mark can be any word, name, symbol, or device used by a person to distinguish their goods from the goods manufactured or sold by another entity.
Nonetheless, in order to register a mark as a trademark in Texas, it must qualify the following criteria:
- The mark must be used in connection with the applicant’s goods or products in Texas before the date of the application.
- The mark must differ from other trademarks registered within the state and the trademarks registered with the U.S. Patent and Trademark Office (USPTO).
The procedure of trademark registration in Texas
To obtain trademark protection in Texas, the applicant needs to complete and file a notarized Trademark or Service Mark Application Form.
The application must be accompanied by proof of use of that trademark within the territory of the state of Texas.
After receiving the application, the state will evaluate the trademark and conduct thorough examinations to check if the application complies with the law and there are no conflicting registered or pending trademarks in the system.
If there are no problems, the mark will be registered in Texas.
Rejection of a trademark application
If the formality of a trademark application doesn’t have any issues, then it depends on the viewpoint of the examiners at the time of examination of that trademark application to decide if the mark is registrable.
There are many reasons to reject a trademark registration in Texas, however, one of the most common reasons for refusal is based on the descriptiveness of the mark.
If a mark is deemed to be merely descriptive, it means that the mark can’t be registered because of the following reasons:
- The mark describes the use, purpose, or function of the goods and services
- The mark describes the person/organization that uses the goods or services;
- The mark describes a desirable characteristic;
- The mark is a laudatory mark that claims superior quality;
- The mark is merely a person’s name;
- The mark describes a geographic feature of the products.
If the mark is not registrable, the state examiner will notify the applicant and the applicant will have 90 days to respond, correct the application or submit arguments.
One of the reasonable arguments is that the applicant and their representative may prove that the trademark has acquired distinctiveness through prolonged use in Texas.
Notes when registering a trademark in Texas
A successfully registered trademark in Texas will have a protection period of 5 years. After 5 years, the trademark owner may file for renewal of the trademark to extend the trademark protection period for another 5 years.
Although registering a trademark within a state in the USA has some advantages, it should be noted that if the applicant plans to expand the business into other states and/or countries, they should register their trademark through the USPTO, also known as federal trademark registration.
Federal trademark registration provides far greater trademark rights than either common law or state registration. Furthermore, it also provides the trademark owner more comprehensive benefits such as official notice of your claim to the mark, evidence of ownership, the ability to sue infringers in federal court, and many others.
You can see a list of Texas IP firms here.