Tuesday, November 13, 2012

Texas's New Trademark Law

The State of Texas adopted changes to our trademark law which went effective September 1, 2012.  The trademark law has been revised to conform with the Model State Trademark Bill and to be more consistent with federal trademark law.

Here are some of the highlights of the new law:

  • The initial term and each renewal term of a state trademark registration has been reduced from 10 years to 5 years.
  • Trademark registrations must now be notarized and must now include 3 specimens of the trademark in use.
  • The Texas Secretary of State's office must now search the database of the United States Patent and Trademark Office in addition to its own trademark database before approving an initial trademark application.  The USPTO trademark database is available here.
  • Licenses and security interests of trademarks may now be recorded for notice purposes with the Secretary of State.
  • Holders of registered trademarks in Texas may now recover profits earned by an infringer against the trademark as well as triple-damages if the infringer acted with actual knowledge of the trademark or in bad faith.
The new trademark law can be found in Section 16 of the Texas Business and Commerce Code.  The Secretary of State's office provides FAQ's regarding the new law here.  Texas also adopted new Trademark Administrative Rules in connection with the new law, which rules are available here.

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