Texas’ New Trademark Act

Posted on Jan 31, 2012

On September 1, 2012, a new trademark law will replace Texas’ current trademark laws.

Heightened Scrutiny of Trademark Applications
The most significant revision to the Texas trademark application process requires the Texas Secretary of State to refuse registration to marks likely to cause confusion with a mark already registered at the U.S. Patent and Trademark Office (PTO). Current law requires rejections based only on marks registered in Texas, likely leading to an increase in the number of rejections.

Shorter Registration Terms
The new law shortens the initial (and renewal) terms of a Texas registration from 10 years to five years. So it makes sense to apply for registration sooner rather than later to maximize the chances of obtaining a registration before September.

More Monetary Remedies
Under current law, owners of Texas-registered trademarks may seek actual damages and injunctions. Three additional monetary remedies. Profits derived from infringement. When the infringer acts with actual knowledge of the infringed mark, or in bad faith, the new law provides that a court may increase the damages and profits award up to 300 percent and/or order an infringer to pay the trademark owner’s attorney’s fees.