What Agency Registers The Trademarks Of A Firm

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The answers to our Oft 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 lot have specific legal questions, consult your chaser.

Trademark Nuts

What is a trademark? What is a service mark? What is the divergence between the 2?
How do I get rights to a marker? Practice I have to register my mark in order to acquire rights to it? What are the benefits of registering my marking?
I incorporated my concern with the Secretary of Land, or I filed a "dba" with a county clerk. Doesn't that mean no 1 else in Texas can utilise my business organisation proper noun?
When tin can I apply TM or SM or ® ?
How can I tell if someone else already has rights to a mark?
I use a slogan to advertise my visitor'due south services. Should I annals the slogan as a service marker, or should I copyright it?

Registering a Mark in Texas

What are the requirements for registering a mark in Texas?
What form do I use to utilise to register a trademark or service mark in Texas?
Can I reserve a mark? Can I submit an application before I start using a mark?
Can I register a trade name statewide?
Do I have to use an attorney to utilise to register a mark?
Tin I expedite the review of my application? If I bulldoze to Austin, will you procedure my application while I wait? Can I fax or electronic mail my application?
Do you demand to be a corporation to annals a mark?
How should I draw my mark in Particular v of the application?
What should I put on the Cartoon Sheet?
How should I depict my goods or services in Item 7 of the application?
I don't know what grade to list in Particular seven. Where can I find more than information?
My logo always appears in a certain color scheme. Tin I make that colour scheme part of my registered mark?
What is a specimen? Do I actually have to send in iii specimens? Will a photograph or photocopy work?

Rejections

My awarding was rejected considering my proposed mark is "simply descriptive." What does that mean?
The examiner asked me to "disclaim" exclusive rights to certain words. What does this mean?

Enforcement, Renewal, and Other Postal service-Registration Bug

How practice I maintain my Texas registration?
Someone is doing concern nether a name that is similar to my Texas registered mark. Can the Secretarial assistant of Land send the person a notice?
I have a Texas mark registration; however, I recently received a alphabetic character from a visitor telling me that I had to "finish and desist" my use of the company's federally-registered marker. What should I do?
I am selling my business organisation. The auction includes a registered marker. Do I demand to notify the Secretary of Land?
I reorganized my business. Tin can my new business renew the registration?

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Trademark Nuts

What is a trademark? What is a service marker? What is the difference between the two?

A trademark is used in connexion with tangible goods or products, while a service mark is used in connexion with services. The general term "mark" includes both trademarks and service marks. "Trademark" is defined as a give-and-take, name, symbol, or device, or any combination of those terms, used by a person to identify and distinguish the person'due south appurtenances from the goods manufactured or sold by another; and indicate the source of the appurtenances. Tex. Bus. & Com. Code §16.001(ten). A trademark indicates that all goods provided in association with that mark come from the same source.

"Service mark" is defined equally 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 some other; and indicate the source of the services. Tex. Motorcoach. & Com. Code §16.001(viii). A service mark indicates that all services provided in association with that mark come from the same source.

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How exercise I get rights to a mark? Practise I have to annals my mark in order to larn rights to it? What are the benefits of registering my marker?

You acquire common law ownership rights to a mark simply past using the mark in commerce in connectedness with the relevant appurtenances or services. You lot do not take to register your mark to acquire mutual law rights to it.

Registering your mark with the Texas Secretary of State provides certain benefits:
- Registration puts the balance of Texas on find that yous claim ownership of the mark in Texas commerce in connection with the relevant appurtenances or services. Tex. Bus. & Com. Code §16.060(b).
- A document of registration is prima facie (rebuttable) proof of: 1) the validity of the registration; ii) the registrant's ownership of the mark; and 3) the registrant's exclusive correct to use the mark in Texas in connection with the relevant appurtenances or services. Tex. Bus. & Com. Code §16.060(c).
- Texas law provides a statutory cause of action for infringing upon a registered marker. Tex. Double-decker. & Com. Code §§16.102 – .104.
- It is a crime to apocryphal registered marks. Tex. Penal Code § 32.23.
If you use your mark in interstate commerce, you lot can utilise to register it with the U.s.a. Patent and Trademark Office (USPTO). Registering a marker with the USPTO puts the balance of the country on observe that you claim ownership of the mark and creates a legal presumption that you have the exclusive right to utilize the marker nationwide in connectedness with the relevant appurtenances and/or services.

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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 utilise my business name?

No. Filing Manufactures of Incorporation, a Certificate of Germination, an Assumed Name Certificate, and/or a "dba" does not requite you lot whatsoever rights to utilise a name in commerce.

Filing a germination certificate with the Secretarial assistant of Country to create a corporation or other entity with a given legal name only prevents the Secretary of Land from filing a formation certificate that states a legal name that the Secretarial assistant determines is not distinguishable in its records. Merely filing a formation document with a legal name does not qualify yous to use the legal name in violation of someone else's rights to the name. It does non forestall someone else from using that name in Texas commerce. It does not prevent the Secretarial assistant of State or county clerk from filing the same name equally an assumed name. It does not prevent the Secretary of Country from registering a mark that is the same every bit or like to that legal name.

Similarly, filing an Assumed Name Certificate or "dba" with the Secretarial assistant of State or a county clerk simply records data about the underlying business. Simply filing an Assumed Proper noun Document or "dba" does not authorize you to use the name in violation of someone else'southward 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 proper noun as its legal proper noun. It does not prevent the Secretarial assistant of Country or county clerk from filing the same name as an assumed name. Information technology does not prevent the Secretary of State from registering a mark that is the same as or similar to that name.

A individual attorney can help you decide, protect, and enforce your intellectual property rights.

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When tin can I employ TM or SM or ®?

Any fourth dimension you claim rights in a mark, you can apply TM (trademark) or SM (service marker) to alert the public to your claim. You lot do not accept to register a mark before yous start using TM or SM in Texas.

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

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

Registering your mark with the Secretary of State does non necessarily mean that someone else does not already have a superior right to use that proper name in commerce. When examining an application to annals a mark, the Secretarial assistant of Country simply considers its database of registered Texas marks and those registered with the USPTO. We practise not search the country or canton causeless name records, legal names of corporations or other filing entities. Nosotros practise not search phone books, the internet, or any other "common law" usage of marks in commerce. The person seeking to annals a mark is responsible for a more substantial search to avoid infringing on the marks of others. Private companies tin can do a comprehensive search for a fee.

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

Registered Texas marks can be searched equally follows:

Contact Information
Phone:	512-463-9760	No fee
E-Postal service:	E-mail	No fee
Online:	SOSDirect	$one/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 canton records, contact each canton clerk.

Legal and causeless names of Texas filing entities, and legal and assumed names of strange filing entities that are registered to transact business concern in Texas can be searched equally follows:

Contact Data
Telephone:	512-463-5555	No fee
Electronic mail:	E-mail	No fee
Online:	SOSDirect	$i/search

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I use a slogan to advertise my company's services. Should I register the slogan every bit a service mark, or should I copyright it?

Federal copyright police protects an original artistic or literary piece of work, such equally 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, yous tin can visit the United states of america Copyright Office.

If your slogan is distinctive and serves to place the source of your goods or services, and so you might be able to annals it equally a trademark or service marking.

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Registering a Mark in Texas

What are the requirements for registering a mark in Texas?

The requirements for registering a marking in Texas are set out in Tex. Bus. & Com. Lawmaking §§xvi.001 et seq. There are iii bones requirements:
1. The marker must be "in use" in Texas earlier the date of the application.
2. The mark must be distinctive.
3. The marker cannot exist so like to any marking that is currently registered with our role or the USPTO that it is probable to cause confusion or fault, or to deceive, when applied to the relevant goods or services.
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What class do I apply to apply to register a trademark or service mark in Texas?

You can use Form 901, or y'all can draft your own application. If yous draft your own application, exist sure that information technology contains everything that is required past Tex. Coach. & Com. Code §16.052.

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Can I reserve a mark? Can I submit an application earlier I start using a marking?

No. Earlier a marker can exist registered in Texas, it must already be in use in Texas commerce in connexion with the relevant goods or services. A trademark is "in use" when it has been placed on the appurtenances, containers of the goods, or point-of-sale displays of the goods, and the goods accept been sold, displayed for sale, or otherwise publicly distributed in Texas. Tex. Jitney. & Com. Lawmaking §xvi.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. Lawmaking §sixteen.003(b).

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Tin can I register a trade name statewide?
No. Texas law does not provide for statewide registration of trade names. Of grade, if your trade proper name as well functions every bit a trademark or service marker, and so you can apply to annals information technology equally a marking.
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Practise I have to use an attorney to apply to register a mark?

No; withal, it is of import to understand that although we tin can assist with the nuts and bolts of completing an awarding, our role cannot requite you whatever legal or business communication. We initially reject the majority of applications that are submitted to us by non-attorneys. You might do good from consulting with an attorney well-nigh the best fashion to protect your intellectual belongings.

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Can I expedite the review of my awarding? If I drive to Austin, will you procedure my awarding while I wait? Can I fax or email my awarding?

We examine applications in the guild in which nosotros receive them. Nosotros do non 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 employ are suitable for faxing. We do non accept e-mail filings.

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Do y'all demand to be a corporation to register a mark?

No. Whoever owns a marking can use to register information technology. A mark can be endemic by an individual, a partnership, an incorporated business concern 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 organisation entity, such as a express liability company, provides the goods or services under a mark, the business entity owns the marking; an individual owner of that business concern entity does non ain the mark.

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How should I draw my mark in Item 5 of the awarding?

The mark should exist described exactly equally it appears in the samples of utilize and drawing canvas that accompany the application.
- If the mark consists of words merely, simply list the words in Detail 5.
- If the marker consists of a blueprint just, provide a written description of the design elements in Particular v.
- If the mark consists of both words and a pattern, and then listing the words followed past a clarification of the design elements in Particular five.
- In addition, if yous claim any colour as part of the marking, you lot must describe the colour(southward) in Items 5A-D of the application and provide at least one specimen that shows the color(s) as described.
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What should I put on the Drawing Canvas?

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

If the marking consists only of a word, letter or numeral, or a combination thereof, and is non depicted in a special class, type or impress the marker in capital letters on the drawing sheet. If the mark is non 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 marking includes a colour merits, the drawing of the mark may either appear in color or black and white. If the marking appears in colour, it must friction match the color(southward) described in the colour argument.

The cartoon must depict only 1 marker, and the drawing must fit within the three.15 inches by 3.15 inches drawing box shown in the application course. The cartoon must be an exact reproduction of the marker sought to be registered. If desired, the drawing may be taped to the drawing sheet.

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How should I describe my appurtenances or services in Detail vii of the application?

Item 7 must conspicuously describe the specific goods or services in connection with which you currently apply the mark and for which y'all seek to register the mark. The goods or services described in Particular seven must all fall into a single grade. If you would similar to register a mark in more than one class, the awarding provides fields for an additional form. If you seek registration of the mark in more than ii classes, y'all may employ additional application forms or draft your own application form. If you draft your own application class for this purpose, be sure that it contains everything that is required by Tex. Autobus. & Com. Lawmaking §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'southward online searchable Manual of Acceptable Identifications of Goods and Services.

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I don't know what form to list in Item vii. Where can I find more information?

For assistance with classifying appurtenances and/or services, please see the USPTO'southward online searchable Manual of Acceptable Identifications of Appurtenances and Services. If you would like us to determine the class for y'all, simply leave Detail 7A of the awarding blank and our examiners volition make full information technology in during their review of your application.

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My logo always appears in a sure color scheme. Can I make that colour scheme function of my registered marker?

You tin, but you practise not have to.

If you claim any color equally part of the mark, so you must describe the color(s) in your description of the mark (Item 5A-D) and provide at to the lowest degree 1 specimen that is in color and matches the colors, every bit claimed in Item 5.

If yous do non claim color as office of your mark, then do not refer to any colors in your description of the marker (Item 5).

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What is a specimen? Practice I really have to ship in three specimens? Will a photograph or photocopy work?

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

You must send in three specimens. Specimens should exist 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

My application was rejected because my proposed marking is "only descriptive." What does that hateful?

A mark must distinguish the goods or services provided by ane source from the goods and services provided by some other source. In order to fulfill this source-indicating function, a mark must exist distinctive.

The following types of marks are non distinctive:
1. Marks that describe the intended purpose, function or utilise of the goods or services, the size of goods, the class of users, a desirable characteristic, or the terminate effect upon the users.
2. Laudatory marks that claim a superior quality, belongings, or role.
3. Marks that are primarily merely a person's name.
4. Marks that simply draw a geographic feature of the relevant goods or services
See Tex. Bus. & Com. Lawmaking §16.051(a)(5),(6). Examples of marks that are not distinctive include:
- MADISON'South PROGRESSIVE TALK for a radio political talk show in Madison. Mid-West Management, Inc. 5. Capstar Radio Operating Co., 72 United states of americaP.Q.2d 1918 (W.D. Wis. 2004).
- INVESTACORP for investment broker and dealer. Investacorp., Inc. v. Arabian Investment Cyberbanking Corp., 931 F. 2d 1519, xix U.Southward.P.Q.2nd 1056 (11th Cir. 1991), cert. denied, 502 U.South. 1005, 116 50. Ed. 2nd 657, 112 S. Ct. 639 (1991).
- AMERICA'Due south BEST POPCORN! for popcorn. In re Wileswood, Inc., 201 United statesP.Q. 400 (T.T.A.B. 1978).
- ROCKTOBER for a stone music festival held in October. Metromedia, Inc. 5. American Broadcasting Cos., 210 U.South.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. 2nd 358, 65 UsP.Q.2d 1897 (D.Northward.J. 2002).
- SPEX for optician services. Spex, Inc. v. Joy of Spex, 847 F. Supp. 567, 31 The statesP.Q.2d 1019 (Northward.D. Ill. 1994).
- CHEAPER! for discount cigarettes. Client Co. v. E-Commerce Today, Ltd., 106 F. Supp. 2d 869, 55 UsaP.Q.2d 1958 (W.D. Va. 2000).
- SOLAR GLO for sunlit signs. Unisplay Due south.A. five. American Elec. Sign Co., 28 U.S.P.Q.2nd 1721, 1732 (E.D. Wash. 1993), aff'd, 69 F.3d 512, 36 U.S.P.Q.2nd 1540 (Fed. Cir. 1995).
- E-Manner for internet site providing fashion information. In re Styleclick.com Inc., 57 U.S.P.Q.2d 1445 (T.T.A.B. 2000).
- VISION Heart for an optical clinic. Vision Eye v. Opticks., Inc., 596 F.2d 111, 202 U.South.P.Q. 333 (fifth Cir. 1979), cert. denied, 444 U.S. 1016, 62 Fifty. Ed. 2d 646, 100 Due south. Ct. 668, 204 U.S.P.Q. 696 (1980).
A mark that is merely descriptive, primarily but geographically descriptive, or primarily only a surname can exist registered if you lot evidence that the marker has become distinctive as applied to your appurtenances or services. Tex. Coach. & Com. Code §16.051(b). Often, ane way to testify acquired distinctiveness is to offer evidence that yous have made substantially sectional use and substantially continuous use of the mark in Texas for the five-year period preceding the appointment of your application.

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The examiner asked me to "disclaim" sectional rights to certain words. What does this hateful?

It means that the mark, as a whole, is distinctive and entitled to registration, but certain parts of the mark, viewed split up and apart from the mark, are not distinctive. Disclaiming part of a marking does not hateful that you cannot continue to employ the disclaimed portions in your mark. It simply ways that you are not challenge any right to prevent others from using those disclaimed elements dissever and apart from your mark.

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Enforcement, Renewal, and Other Post-Registration Issues

How do I maintain my Texas registration?

Texas registrations expire later v years unless the owner submits a renewal to our office during the last 6 months of the 5-year registration menses. A marking must still exist in use at the time of the renewal. Meet Form 902.

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

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Someone is doing business under a proper noun that is similar to my registered mark. Can the Secretary of State send the person a discover?

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 help you in determining and enforcing your rights.

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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 marker. What should I practise?

A private attorney tin assist you in determining and enforcing your rights. Neither our part nor any other land bureau can offer the legal advice you lot would need to address this upshot.

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I am selling my business organisation. The auction includes a registered marking. Do I demand to notify the Secretary of State?

An assignment of a mark can be recorded by filing an original written assignment with our part, along with a copy of the consignment and the $25 filing fee. The consignment can be in the form of a written sales agreement signed by the assignor, a written assignment document signed past the assignor, some other written document signed by the assignor, or Form 903. When an assignment is properly filed, nosotros will issue a certificate of registration in the assignee's proper name for the remainder of the marker'due south registration menstruum.

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I reorganized my business. Tin my new business renew the registration?

A registration tin merely be renewed by the registrant who appears in our records. If buying of the marker changes, the registrant every bit shown in our records should file a statement of transfer of ownership with our office. See Grade 904. Similarly, if the registrant's legal proper name has changed, the registrant needs to file a statement of alter of name with our office. See Form 904.

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For More Information

Links
- United States Patent and Trademark Office (USPTO)
- USPTO's Trademark Manual of Examining Procedure
- USPTO'south Acceptable Identification of Goods and Services Manual
- United States Copyright Office
If you need assist finding a private attorney, you tin can contact the Country Bar of Texas Lawyer Referral Information Service (LRIS). Call 1-800-252-9690 or ane-877-9TEXBAR (toll costless).
Every bit a ministerial filing office, the Texas Secretarial assistant of Land cannot offering yous any business or legal advice. A private attorney can advise you lot. All we can offer is general data. For general information, you tin contact us:

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

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