Keith Law, PLLC

What is a Trademark?

graphic of trademark and restricted symbols overlaid with large question mark

This post provides a simple explanation of trademark and some of the related responsibilities. Trademarks distinguish the source of goods and services from competitors in a marketplace.  Use in commerce, first-in-time, and likelihood of confusion are trademark law touchstones.  Although Texas recognizes trademark rights in the common law, limited geographic protection and burden of proof issues incentivize applying to register with the United States Patent and Trademark Office (“USPTO”). 

Trademarks are intangible assets of the business and a type of intellectual property.  Sophisticated potential purchasers of the business will want to know how the trademarks have been protected.

Registering Trademarks

Although it is possible to register a trademark with the Texas Secretary of State, the most value is found in registering with the USPTO.  A USPTO registration provides a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration.  On the other hand, the owner of an unregistered must prove ownership of the mark and the relevant geographic area to which they have an exclusive right to use their mark and in connection with which goods or services their exclusive right should attach.  

Maintaining Registered Trademarks

Once registered with the USPTO, periodic filings are required to maintain the registration.  Failure to file the required maintenance information will result in the registration being cancelled.

Policing Trademarks

Policing your trademark means looking for and acting to stop potential infringement.  Acting to stop potential infringement should be done reasonably quickly to avoid a defense that too much time has passed.

Hiring an Attorney

Although it is possible for a business to handle its own trademark application with the USPTO, it is often a wise decision to retain an attorney experienced with trademark applications to properly prepare the application and effectively address subsequent office actions issued by the assigned USPTO examining attorney.  It is also a good idea to consult an attorney to help with maintaining and policing your marks.

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