Trademark and Service Mark Registration in Texas

Registering Trademarks and Service Marks in Texas

A successful business often creates unique graphics, slogans, and logos to promote customer recognition of its products and/or services. The power of such branding is its ability to help customers link specific goods or services to a particular business. Therefore, protecting that exclusive image is of paramount importance to a business. Fortunately, Texas law details how a business may register trademarks or service marks, so that they are used only as intended by their creators.

Trademark vs. Service Mark

Although a trademark is distinct from a service mark, both are sometimes referred to simply as a mark. A trademark and a service mark indicate that all services or goods provided “in association with that mark come from the same source,” and the Texas Business and Commerce Code safeguards these marks. Tex. Bus. & Com. Code § 16.001(8).

According to SOS Direct, “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). Note that in this definition, a trademark refers specifically to a good or product.

In contrast, a service mark has the same basic purpose, but it focuses specifically distinguishing the services of one business from the services of another. Tex. Bus. & Com. Code § 16.001(8).

Advantages of Registering a Mark

Businesses may use trademarks and service marks without registering them, but registration does offer specific protections for a business by preventing other business from using the marks, thus maintaining an exclusive connection which provides recognition and assurance to the customer base.

Additional benefits of registering a mark are outlined on SOSDirect:

  1. Notifying other businesses in Texas that a mark has been claimed for ownership and is therefore off-limits. Tex. Bus. & Com. Code §16.060(b);
  2. Providing a certificate which verifies the validity and exclusive ownership of the mark. Tex. Bus. & Com. Code §16.060(c);
  3. Establishing that use of this registered mark is a statutory cause of action for infringement. Tex. Bus. & Com. Code §§16.102 – 104;
  4. Defining statutory cause of action for infringing upon a registered mark; and
  5. Protecting against creating and using counterfeit marks. Tex. Penal Code. Code § 32.23.

The Process of Registering a Mark

Note that there is a federal regime for trademark and service mark registration through the United States Patent and Trademark Office; however, the federal registration process is beyond the scope of this article. In order to register a mark in Texas, it must already be in use before applying for registration; it must be unique and memorable; and it must be distinct from other marks already registered in Texas or the US Patent and Trademark Office in order to avoid confusing or misleading customers. Tex. Bus. & Com. Code §§16.001 et seq.

Once those requirements are in place, a business then completes Form 901 and follows the other steps outlined on SOSDirect. The state then evaluates that request and, if the application fulfills the requirements, it will register the mark. Tex. Bus. & Com. Code §16.052. Once approved, the registration is in effect for five years at which point it may be renewed for another five years.

The Texas Secretary of State provides information and forms on-line. However, the office can provide only basic information, not legal advice. The SOSDirect website acknowledges the complexity of the registration process, stating that they “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.” Clearly, working with an experienced business attorney will ensure that the job is done right the first time, saving a client time, frustration, and money in the process.

All information provided on (hereinafter "website") is provided for informational purposes only and is not intended to be used for legal advice. Users of this website should not take any actions or refrain from taking any actions based upon content or information on this website. Users of this site should contact a licensed Texas attorney for a full and complete review of their legal issues.