An Insider’s Guide to Trademark Law for Small & Large Texas Businesses
I have been representing Texas businesses large and small for over 20 years regarding their filing for trademarks and other intellectual property. My clients have included big-box stores like Saks Fifth Avenue down to small furniture craft stores in smaller cities. Regardless of the magnitude of the venture, the Texas IP issues are typically the same. The owner whether it is a small shop or large marketing department is often excited about a new product and brand name. Interestingly, there is often an emotional component as there is some personal investment in the creative process of arriving at the name and identity of the product.
The Texas legal quest is to validate the name as being available. This used to be a fairly simplistic and linear process but has become more attenuated based on complex search engines which now have visual components. Texas lawyers who have been involved in the search who have not availed themselves of the new technology can often make a mistake that can be fatal. You thus want to select a Texas law firm like the Moster Law Firm which is well-versed in the search process. Another aspect of the search process is to be fully aware of any logos which might be in use that could affect the approval of the underlying wordmark. This requires a more sophisticated search than is typically performed on the USPTO database.
Another tangent that is occasionally overlooked by Texas IP lawyers is whether there might be a common law trademark. The whole area of Texas common-law remarks is often confusing as it seems to be the antithesis of a uniform national trademark process which is everyone’s understanding typically of the Lanham act. Unfortunately, a Texas common-law mark if it’s based typically on first use, can preempt a registered trademark in a confined geographic area. A comprehensive Texas trademark search must thus anticipate common-law marks.
As a former vice president of the American Marketing Association in Austin, I understand the ramifications of the media aspects of the trademark process. It is important that the Texas client think through the advertising aspects of even getting the first mark and how it will benefit the further expansion of the product. Texas clients even at a larger scale often are very incremental in their analysis and need to be encouraged to see how all the pieces fit together from an advertising perspective. Most Texas lawyers have no clue about this issue which is one of our passions at the Moster Law Firm.
Finally, there is no special protection or shielding against liability for even massive Texas corporations if they violate trademark law. I know this, of course, from my representation of big-box retail stores over the years. However, in my experience, the following example might prove useful to our readership.
A number of years ago, I represented a very small Texas shop in West Texas which provided a storefront for customers to build their own furniture creations. The store never grossed over $50,000 and it was essentially a labor of love for the owner and her ranching husband. The owner came up with a very creative name which I trademarked with the USPTO. A few years later, one of the largest hobby stores in the United States through its marketing department came up with the exact name for a promotion to be offered around Christmas time but failed to check if there were trademarks already in place that would have precluded that selection. This huge corporation dropped the ball and launched a major lucrative campaign that overtly infringed on my client’s trademark. I filed a trademark action against this conglomerate and was successful. The greatest import for the client was the acknowledgment of its trademark rights and the verification that the corporation had destroyed all of its inventory across the country. The moral of the story, a valid trademark can defeat even one of the largest infringers in the United States.
Should you have any questions about the use of the trademark or even advertising and expansion plans, feel free to give us a call. We love to chat with you at any of our offices across the state in Dallas, Austin, Houston, Lubbock, Amarillo, Midland, and Abilene.