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Trademarks FAQs

The answers to our Frequently Asked Questions are provided for informational purposes and are not intended to provide legal advice or to substitute for the advice of an attorney. If you have specific legal questions, consult your attorney.

Trademark Basics

  1. What is a trademark? What is a service mark? What is the difference between the two?
  2. How do I get rights to a mark? Do I have to register my mark in order to acquire rights to it? What are the benefits of registering my mark?
  3. I incorporated my business with the Secretary of State, or I filed a “dba” with a county clerk. Doesn’t that mean no one else in Texas can use my business name?
  4. When can I use TM or SM or ® ?
  5. How can I tell if someone else already has rights to a mark?
  6. I use a slogan to advertise my company’s services. Should I register the slogan as a service mark, or should I copyright it?

Registering a Mark in Texas

  1. What are the requirements for registering a mark in Texas?
  2. What form do I use to apply to register a trademark or service mark in Texas?
  3. Can I reserve a mark? Can I submit an application before I start using a mark?
  4. Can I register a trade name statewide?
  5. Do I have to use an attorney to apply to register a mark?
  6. Can I expedite the review of my application? If I drive to Austin, will you process my application while I wait? Can I fax or email my application?
  7. Do you need to be a corporation to register a mark?
  8. How should I describe my mark in Item 5 of the application?
  9. What should I put on the Drawing Sheet?
  10. How should I describe my goods or services in Item 7 of the application?
  11. I don’t know what class to list in Item 7. Where can I find more information?
  12. My logo always appears in a certain color scheme. Can I make that color scheme part of my registered mark?
  13. What is a specimen? Do I really have to send in three specimens? Will a photograph or photocopy work?

Rejections

  1. My application was rejected because my proposed mark is “merely descriptive.” What does that mean?
  2. The examiner asked me to “disclaim” exclusive rights to certain words. What does this mean?

Enforcement, Renewal, and Other Post-Registration Issues

  1. How do I maintain my Texas registration?
  2. Someone is doing business under a name that is similar to my Texas registered mark. Can the Secretary of State send the person a notice?
  3. I have a Texas mark registration; however, I recently received a letter from a company telling me that I had to “cease and desist” my use of the company’s federally-registered mark. What should I do?
  4. I am selling my business. The sale includes a registered mark. Do I need to notify the Secretary of State?
  5. I reorganized my business. Can my new business renew the registration?

For More Information

  1. Links
  2. Lawyer Referral Service
  3. Contact us

Trademark Basics

  1. What is a trademark? What is a service mark? What is the difference between the two?

    A trademark is used in connection with tangible goods or products, while a service mark is used in connection with services. The general term “mark” includes both trademarks and service marks. “Trademark” 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; and indicate the source of the goods. Tex. Bus. & Com. Code  §16.001(10). A trademark indicates that all goods provided in association with that mark come from the same source.

    “Service mark” is 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; and indicate the source of the services.  Tex. Bus. & Com. Code §16.001(8). A service mark indicates that all services provided in association with that mark come from the same source.

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  2. How do I get rights to a mark? Do I have to register my mark in order to acquire rights to it? What are the benefits of registering my mark?

    You acquire common law ownership rights to a mark simply by using the mark in commerce in connection with the relevant goods or services. You do not have to register your mark to acquire common law rights to it.

    Registering your mark with the Texas Secretary of State provides certain benefits:

    • Registration puts the rest of Texas on notice that you claim ownership of the mark in Texas commerce in connection with the relevant goods or services. Tex. Bus. & Com. Code  §16.060(b).
    • A certificate of registration is prima facie (rebuttable) proof of: 1) the validity of the registration; 2) the registrant’s ownership of the mark; and 3) the registrant’s exclusive right to use the mark in Texas in connection with the relevant goods or services. Tex. Bus. & Com. Code  §16.060(c).
    • Texas law provides a statutory cause of action for infringing upon a registered mark. Tex. Bus. & Com. Code §§16.102 – .104.
    • It is a crime to counterfeit registered marks. Tex. Penal Code § 32.23.

    If you use your mark in interstate commerce, you can apply to register it with the United States Patent and Trademark Office (USPTO). Registering a mark with the USPTO puts the rest of the country on notice that you claim ownership of the mark and creates a legal presumption that you have the exclusive right to use the mark nationwide in connection with the relevant goods and/or services.

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  3. I incorporated my business with the Secretary of State, or I filed a “dba” with a county clerk. Doesn’t that mean no one else in Texas can use my business name?

    No. Filing Articles of Incorporation, a Certificate of Formation, an Assumed Name Certificate, and/or a “dba” does not give you any rights to use a name in commerce.

    Filing a formation document with the Secretary of State to create a corporation or other entity with a given legal name only prevents the Secretary of State from filing a formation document that states a legal name that the Secretary determines is the same as or deceptively similar to yours. Simply filing a formation document with a legal name does not authorize you to use the legal name in violation of someone else’s rights to the name. It does not prevent someone else from using that name in Texas commerce. It does not prevent the Secretary of State or county clerk from filing the same name as an assumed name. It does not prevent the Secretary of State from registering a mark that is the same as or similar to that legal name.

    Similarly, filing an Assumed Name Certificate or “dba” with the Secretary of State or a county clerk merely records information about the underlying business. Simply filing an Assumed Name Certificate or “dba” does not authorize you to use the name in violation of someone else’s rights to the name. It does not prevent anyone else from using the name in Texas commerce. It does not prevent the Secretary of State from filing a new entity with that name as its legal name. It does not prevent the Secretary of State or county clerk from filing the same name as an assumed name. It does not prevent the Secretary of State from registering a mark that is the same as or similar to that name.

    A private attorney can help you determine, protect, and enforce your intellectual property rights.

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  4. When can I use TM or SM or ®?

    Any time you claim rights in a mark, you can use TM (trademark) or SM (service mark) to alert the public to your claim. You do not have to register a mark before you start using TM or SM in Texas.

    The ® is the symbol used for federal registration. You can only use ® if your mark is actually registered at the federal level with the United States Patent and Trademark Office (USPTO). Registering a mark with the Texas Secretary of State does not entitle you to use ®.   There is no symbol that indicates state registration of your mark. 

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  5. How can I tell if someone else already has rights to a mark?

    Registering your mark with the Secretary of State does not necessarily mean that someone else does not already have a superior right to use that name in commerce. When examining an application to register a mark, the Secretary of State only considers its database of registered Texas marks and those registered with the USPTO. We do not search the state or county assumed name records, legal names of corporations or other filing entities. We do not search phone books, the internet, or any other “common law” usage of marks in commerce. The person seeking to register a mark is responsible for a more substantial search to avoid infringing on the marks of others. Private companies can do a comprehensive search for a fee.

    You can search federally-registered marks online at the U.S. Patent and Trademark Office (USPTO) (www.uspto.gov) or in person at a designated Patent and Trademark Resource Center.

    Registered Texas marks can be searched as follows:

    Contact Information
    Telephone:
    512-463-9760 No fee
    E-Mail:
    E-mail No fee
    Online:
    SOSDirect $1/search

    Assumed names of sole proprietorships, general partnerships, and other unincorporated businesses are filed with the county clerk in each county in which business is conducted. For information on how to search county records, contact each county clerk.

    Legal and assumed names of Texas filing entities, and legal and assumed names of foreign filing entities that are registered to transact business in Texas can be searched as follows:

    Contact Information
    Telephone:
    512-463-5555 No fee
    E-Mail:
    E-mail No fee
    Online:
    SOSDirect $1/search

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  6. I use a slogan to advertise my company’s services. Should I register the slogan as a service mark, or should I copyright it?

    Federal copyright law protects an original artistic or literary work, such as a sculpture, play, or musical recording. Generally, short phrases and slogans are not considered “works” and are not covered by copyright. For more information on copyrights, you can visit the United States Copyright Office.

    If your slogan is distinctive and serves to identify the source of your goods or services, then you might be able to register it as a trademark or service mark. 

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Registering a Mark in Texas

  1. What are the requirements for registering a mark in Texas?

    The requirements for registering a mark in Texas are set out in Tex. Bus. & Com. Code §§16.001 et seq. There are three basic requirements:

    1. The mark must be “in use” in Texas before the date of the application.
    2. The mark must be distinctive.
    3. The mark cannot be so similar to any mark that is currently registered with our office or the USPTO that it is likely to cause confusion or mistake, or to deceive, when applied to the relevant goods or services.

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  2. What form do I use to apply to register a trademark or service mark in Texas?

    You can use Form 901, or you can draft your own application. If you draft your own application, be sure that it contains everything that is required by Tex. Bus. & Com. Code §16.052

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  3. Can I reserve a mark? Can I submit an application before I start using a mark?

    No. Before a mark can be registered in Texas, it must already be in use in Texas commerce in connection with the relevant goods or services. A trademark is “in use” when it has been placed on the goods, containers of the goods, or point-of-sale displays of the goods, and the goods have been sold, displayed for sale, or otherwise publicly distributed in Texas. Tex. Bus. & Com. Code §16.003(a). A service mark is “in use” when (1) it is displayed in Texas in connection with selling or advertising the services, and (2) the services are performed in Texas. Tex. Bus. & Com. Code §16.003(b).

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  4. Can I register a trade name statewide?

    No. Texas law does not provide for statewide registration of trade names. Of course, if your trade name also functions as a trademark or service mark, then you can apply to register it as a mark.

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  5. Do I have to use an attorney to apply to register a mark?

    No; however, it is important to understand that although we can assist with the nuts and bolts of completing an application, our office cannot give you any legal or business advice. We initially reject the majority of applications that are submitted to us by non-attorneys. You might benefit from consulting with an attorney about the best way to protect your intellectual property.

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  6. Can I expedite the review of my application? If I drive to Austin, will you process my application while I wait? Can I fax or email my application?

    We examine applications in the order in which we receive them. We do not expedite any trademark application filings.  Faxes are acceptable, assuming credit card information is included for payment of the application processing fee and the specimens of use are suitable for faxing. We do not accept email filings.

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  7. Do you need to be a corporation to register a mark?

    No. Whoever owns a mark can apply to register it. A mark can be owned by an individual, a partnership, an incorporated business entity, or another legal entity.

    Generally, a mark is owned by the individual, partnership, or other organization that offers the relevant goods or services. If a business entity, such as a limited liability company, provides the goods or services under a mark, the business entity owns the mark; an individual owner of that business entity does not own the mark.

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  8. How should I describe my mark in Item 5 of the application?

    The mark should be described exactly as it appears in the samples of use and drawing sheet that accompany the application.

    • If the mark consists of words only, simply list the words in Item 5.
    • If the mark consists of a design only, provide a written description of the design elements in Item 5.
    • If the mark consists of both words and a design, then list the words followed by a description of the design elements in Item 5.
    • In addition, if you claim any color as part of the mark, you must describe the color(s) in Items 5A-D of the application and provide at least one specimen that shows the color(s) as described. 

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  9. What should I put on the Drawing Sheet?

    Include the mark exactly as it appears in the samples of use accompanying the application and exactly as it is described in Item 5 of the application.  Do not include other words or design elements that are not part of the mark.

    If the mark consists only of a word, letter or numeral, or a combination thereof, and is not depicted in a special form, type or print the mark in capital letters on the drawing sheet. If the mark is not only words, letters or numerals, or a combination thereof, and also includes a design, the entire design must appear on the drawing sheet.

    If the mark includes a color claim, the drawing of the mark may either appear in color or black and white. If the mark appears in color, it must match the color(s) described in the color statement.

    The drawing must depict only one mark, and the drawing must fit within the 3.15 inches by 3.15 inches drawing box shown in the application form. The drawing must be an exact reproduction of the mark sought to be registered. If desired, the drawing may be taped to the drawing sheet.

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  10. How should I describe my goods or services in Item 7 of the application?

    Item 7 must clearly describe the specific goods or services in connection with which you currently use the mark and for which you seek to register the mark. The goods or services described in Item 7 must all fall into a single class. If you would like to register a mark in more than one class, the application provides fields for an additional class.  If you seek registration of the mark in more than two classes, you may use additional application forms or draft your own application form. If you draft your own application form for this purpose, be sure that it contains everything that is required by Tex. Bus. & Com. Code §16.052.   When seeking to register a mark in more than one class, you must include payment for each additional class.  For assistance with describing goods and/or services, please see the USPTO’s online searchable Manual of Acceptable Identifications of Goods and Services

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  11. I don’t know what class to list in Item 7. Where can I find more information?

    For assistance with classifying goods and/or services, please see the USPTO’s online searchable Manual of Acceptable Identifications of Goods and Services. If you would like us to determine the class for you, simply leave Item 7A of the application blank and our examiners will fill it in during their review of your application.

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  12. My logo always appears in a certain color scheme. Can I make that color scheme part of my registered mark?

    You can, but you do not have to.

    If you claim any color as part of the mark, then you must describe the color(s) in your description of the mark (Item 5A-D) and provide at least one specimen that is in color and matches the colors, as claimed in Item 5.

    If you do not claim color as part of your mark, then do not refer to any colors in your description of the mark (Item 5).

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  13. What is a specimen? Do I really have to send in three specimens? Will a photograph or photocopy work?

    A specimen is an actual sample of how you use the mark in Texas commerce. Acceptable specimens for trademarks include actual tags or labels affixed to goods, actual tags or labels affixed to containers of the goods, packaging, photographs showing that the mark is displayed directly on the goods themselves, or photographs showing the mark in point-of-sale displays. Acceptable specimens for service marks include flyers, newspaper ads, screen shots from web pages, and other actual advertising that makes a clear reference to the services.

    You must send in three specimens. Specimens should be in a reasonably flat form no larger than 8½ by 11 inches, suitable for scanning. If such a specimen is not available, please submit a photograph suitable for scanning that clearly shows the mark in use.

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Rejections

  1. My application was rejected because my proposed mark is “merely descriptive.” What does that mean?

    A mark must distinguish the goods or services provided by one source from the goods and services provided by another source. In order to fulfill this source-indicating function, a mark must be distinctive.

    The following types of marks are not distinctive:

    1. Marks that describe the intended purpose, function or use of the goods or services, the size of goods, the class of users, a desirable characteristic, or the end effect upon the users.
    2. Laudatory marks that claim a superior quality, property, or function.
    3. Marks that are primarily merely a person’s name.
    4. Marks that simply describe a geographic feature of the relevant goods or services

    See Tex. Bus. & Com. Code §16.051(a)(5),(6). Examples of marks that are not distinctive include:

    • MADISON’S PROGRESSIVE TALK for a radio political talk show in Madison. Mid-West Management, Inc. v. Capstar Radio Operating Co., 72 U.S.P.Q.2d 1918 (W.D. Wis. 2004).
    • INVESTACORP for investment broker and dealer. Investacorp., Inc. v. Arabian Investment Banking Corp., 931 F. 2d 1519, 19 U.S.P.Q.2d 1056 (11th Cir. 1991), cert. denied, 502 U.S. 1005, 116 L. Ed. 2d 657, 112 S. Ct. 639 (1991).
    • AMERICA’S BEST POPCORN! for popcorn. In re Wileswood, Inc., 201 U.S.P.Q. 400 (T.T.A.B. 1978).
    • ROCKTOBER for a rock music festival held in October. Metromedia, Inc. v. American Broadcasting Cos., 210 U.S.P.Q. 21 (S.D.N.Y. 1980).
    • BREAK & BAKE for frozen cookie dough. J & J Snack Foods, Corp. v. Earthgrains Co., 220 F. Supp. 2d 358, 65 U.S.P.Q.2d 1897 (D.N.J. 2002).
    • SPEX for optician services. Spex, Inc. v. Joy of Spex, 847 F. Supp. 567, 31 U.S.P.Q.2d 1019 (N.D. Ill. 1994).
    • CHEAPER! for discount cigarettes. Customer Co. v. E-Commerce Today, Ltd., 106 F. Supp. 2d 869, 55 U.S.P.Q.2d 1958 (W.D. Va. 2000).
    • SOLAR GLO for sunlit signs. Unisplay S.A. v. American Elec. Sign Co., 28 U.S.P.Q.2d 1721, 1732 (E.D. Wash. 1993), aff’d, 69 F.3d 512, 36 U.S.P.Q.2d 1540 (Fed. Cir. 1995).
    • E-FASHION for internet site providing fashion information. In re Styleclick.com Inc., 57 U.S.P.Q.2d 1445 (T.T.A.B. 2000).
    • VISION CENTER for an optical clinic. Vision Center v. Opticks., Inc., 596 F.2d 111, 202 U.S.P.Q. 333 (5th Cir. 1979), cert. denied, 444 U.S. 1016, 62 L. Ed. 2d 646, 100 S. Ct. 668, 204 U.S.P.Q. 696 (1980).

    A mark that is merely descriptive, primarily merely geographically descriptive, or primarily merely a surname can be registered if you prove that the mark has become distinctive as applied to your goods or services. Tex. Bus. & Com. Code  §16.051(b). Often, one way to show acquired distinctiveness is to offer evidence that you have made substantially exclusive use and substantially continuous use of the mark in Texas for the 5-year period preceding the date of your application.

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  2. The examiner asked me to “disclaim” exclusive rights to certain words. What does this mean?

    It means that the mark, as a whole, is distinctive and entitled to registration, but certain parts of the mark, viewed separate and apart from the mark, are not distinctive. Disclaiming part of a mark does not mean that you cannot continue to use the disclaimed portions in your mark. It simply means that you are not claiming any right to prevent others from using those disclaimed elements separate and apart from your mark.

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Enforcement, Renewal, and Other Post-Registration Issues

  1. How do I maintain my Texas registration?

    Texas registrations expire after 5 years unless the owner submits a renewal to our office during the last 6 months of the 5-year registration period. A mark must still be in use at the time of the renewal. See Form 902.

    Owners of registered marks are responsible for enforcing their rights to their marks. No state agency is authorized or funded to enforce your intellectual property rights. A private attorney can assist you in determining and enforcing your rights. 

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  2. Someone is doing business under a name that is similar to my registered mark. Can the Secretary of State send the person a notice?

    No. Owners of registered marks are responsible for enforcing their rights to the marks. No state agency is authorized or funded to enforce your intellectual property rights. A private attorney can assist you in determining and enforcing your rights.

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  3. I have a registered mark; however, I received a letter from a company telling me that I had to “cease and desist” my use of the company’s federally-registered mark. What should I do?

    A private attorney can assist you in determining and enforcing your rights. Neither our office nor any other state agency can offer the legal advice you would need to address this issue.

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  4. I am selling my business. The sale includes a registered mark. Do I need to notify the Secretary of State?

    An assignment of a mark can be recorded by filing an original written assignment with our office, along with a copy of the assignment and the $25 filing fee. The assignment can be in the form of a written sales agreement signed by the assignor, a written assignment document signed by the assignor, some other written document signed by the assignor, or Form 903. When an assignment is properly filed, we will issue a certificate of registration in the assignee’s name for the remainder of the mark’s registration period.

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  5. I reorganized my business. Can my new business renew the registration?

    A registration can only be renewed by the registrant who appears in our records. If ownership of the mark changes, the registrant as shown in our records should file a statement of transfer of ownership with our office. See Form 904. Similarly, if the registrant’s legal name has changed, the registrant needs to file a statement of change of name with our office. See Form 904.

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For More Information

  1. Links

  2. If you need help finding a private attorney, you can contact the State Bar of Texas Lawyer Referral Information Service (LRIS). Call 1-800-252-9690 or 1-877-9TEXBAR (toll free).

  3. As a ministerial filing office, the Texas Secretary of State cannot offer you any business or legal advice. A private attorney can advise you. All we can offer is general information. For general information, you can contact us:

    Secretary of State
    Trademarks
    PO Box 13697
    Austin, Texas 78711-3697
    Tel: (512) 463-9760
    Fax: (512) 463-5709
    E-mail

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