Nathan Roach


Lawyer, Advisor, Investor, Entrepreneur.


What's a trademark and how do I get one?

Note: This article is for educational, informational, and reference purposes only. This article assumes that Texas and U.S. Federal Law applies. This is not legal advice, and you should consult an attorney about trademark and other laws may apply to your specific situation. 

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First: a bit of background:

One of the most common questions I get from new business owners (and many established ones) is "How can I keep someone else from using my name?".  One answer is "through trademark rights."

The good news is that you may already have trademark rights to your business name, but probably not in the way you would think they arise.

Many people assume that once they register a business (either as a DBA with a county clerk) or more formally with the Secretary of State, that they have reserved that name.  You might also think that by registering your business as a corporation or LLC that you are guaranteed that nobody else is using that name.  Unfortunately, that's not usually the case.

Instead, trademark rights can arise simply through use of the name in the course of business.

Both Federal (nationwide) and Texas (statewide) trademark rights can be acquired through what is called common-law use.  These use-based rights occur without any registration or formal filing, but are more limited than formal "registered marks."  A trademark applies to goods (physical products) and a servicemark applies to services (together just called "Marks").

What's a trademark (vs a patent vs a copyright)?

According to the U.S. Patent & Trademark Office (U.S.P.T.O.), a trademark is "a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods."

The USPTO has a good summary of basic federal registration questions available in PDF.  I think their explanation is pretty accurate and concise: "A trademark typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product." BasicFacts_with_correct_links.pdf

Common Law Trademarks

™ + ℠

Common law rights are usually indicated by the [ TM ] symbol. These rights pre-date the registration laws on both state and federal levels.  In fact, the term "trademark" first arose in pre-colonial Britain when bakers would stamp their loaves of bread with marks to identify which baker created the otherwise indistinguishable loaf.  Just as then, businesses today can use their mark "in commerce" and obtain common-law rights to the mark. 

For instance, if a clothing manufactuer sews its name and/or logo into the clothing it sells, (and assuming that mark isn't already taken by someone else) then that clothing maker may have a common law trademark in those geographic areas in which it distributes its product.  A business claiming common law rights can apply the ™ symbol after its mark or ℠ after a servicemark to indicate that rights are claimed for that mark.

State Statutory "Registered Trademarks"

Trademark law is somewhat unusual because it exists at both the state level and national level. In Texas, the business and commerce code provides that trademarks can be registered with the Secretary of State, even if they are not federally registered marks.

A mark registered with the Texas Secretary of State offers greater protection than a common-law mark, but less than a federally registered mark.

State registration (under Tex. Bus. & Com. Code  §16.15) can automatically broaden geographic protection to the entire state, whereas common-law marks are geographically limited to the locations in which business is conducted using the mark.  These days, state-level registration isn't as big of a sellling point as it once was, but can help in some situations.  For instance, a local business selling sustainable meat and produce at a farmer's market in San Antonio might want to use registration to expand its protection to avoid a future competitor in Abilene from using the mark, even if the San Antonio business only sells and markets its product out of one location at present.  But, if you're an internet-based startup selling online tools for facebook users, that might not be a big deal.

State registration can also give enforcement of trademarks "more teeth" (see Tex. Bus. & Com. Code  §16.15 and §§16.26-.27).  These are mostly benefits you (and your lawyer) would want to have if trademark infringement problems result in litigation (or threats of litigation).  Defensively, state registration is presumed (prima facie) legal proof that your business was using the mark for your products.  Offensively, it allows for a statutory cause of action against others who might later infringe on your mark.  And, it makes counterfeitting of your mark a crime under Tex. Penal Code § 32.23. 

But, Texas registration does not extend beyond the state, does not guarantee against other federal registrants, and doesn't permit use of the federal ® symbol.

Federal Statutory "Registered Trademarks"

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A federally registered trademark is probably the best choice for businesses that plan to expand regionally, nationally, or who do business with out-of-state customers over the Internet.  It's also the only proper entitlement to use of the federal ® symbol.

A federal registration provides each of the benefits of the state registration described above, and broadens the application of those provisions nationwide. In addition, a federal registration allows you to bring suit in Federal Court instead of state courts, allows a mark to become "incontestable" after a period of time, can act as a basis for foreign registrations, can allow U.S. Customs and Border Protection to stop infringing goods at importation, and offers additional procedural safeguards.

Requirements For Registered Marks

The Lanham Act (15 U.S.C. §1051 et. seq.) is the controlling statute that defines federal trademark law in the US.  In defining what can be registered, the law includes most marks and then excludes categories that are ineligible.  This is one area in which a lawyer who specializes in trademarks can often be helpful, as the statute is lengthy and its' exclusions (and cases interpreting its exclusions) are a prime reason that the USPTO rejects new registrations.  

But, some examples of marks that are NOT acceptable under §1052 include:

  • "merely descriptive" marks
  • "geographically descriptive" marks
  • surnames
  • functional names
  • a mark that would cause dilution, blurring, or tarnishment of an existing mark
  • disparaging, immoral, deceptive, or scandalous marks
  • certain flags or coats of arms
  • depictions of living or dead inviduals without consent

 

How Do I Apply for Registration?

 The application for federal marks is done through the USPTO.  Most applications are submitted through the TEAS (Trademark Electronic Application System) and TEAS Plus systems online, following the guidelines of the TMEP (Trademark Manual of Examining Procedure).

Texas state-level registrations can be done through Form 901, filed with the Texas Secretary of State. You can also register through the online SOS Direct e-filing system.

 

Can I Do It Myself or Do I Need A Lawyer?

It depends.  

It's kind of like fixing a car.  If you go to an average mechanic, he's might tell you it needs professional repair.  If you go to an average car dealer, he's might tell you to get a new car.  If you go to an average auto parts shop, they'll might tell you that just buying the part and doing it yourself is fine. If you go to a really good mechanic, hopefully he'll look it over and tell you when it's a simple matter, when it's not, and lay out some options.  

Since this post is informational, not advice, it's impossible to say what would suit any particular client or particular mark.  But, here's what the Texas Secretary of State FAQ says:

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 an estimated 90% 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.

Finally, How do I make those registration symbols on my web site?

The HTML symbols for copyright and registered trademarks are part of the HTML specification and are as follows:

™ ™
© ©
® ®

The common-law symbols are accessed via character code as follows: 

℠ ℠
™ ™
© ©
® ® 

Additional Reading:

Texas Trademark Registration FAQ
Texas Trademark Forms
Lanham Act
TMEP