New Texas Trademark LegislationPosted on August 9th, 2011.
Churches are some of the most creative places on earth, and a large part of that creativity involves names, symbols (such as logos), and other devices that identify products and services – otherwise known as trademarks. A good trademark (1) needs to be unique, meaning no one else is using the name (at least in the same type of service), and (2) should not merely describe the nature of the good or service. For example, the swoosh mark on Nike products is a trademark because it does not merely tell the consumer that the product is related to athletic wear.
When deciding on a name or symbol to use, and prior to paying money for signs or literature containing the new name or symbol, the church should undertake a search of the registered trademark names at the U.S. Patent and Trademark Office to get a good idea of whether the name of symbol is available. In some instances, it may also be appropriate to search on the state level as well. It is a good idea to allow an attorney or search company to conduct a search at the federal level, and possibly the state level, to ensure the availability of the trademark, as well as to ensure compliance with the ever-changing state and federal rules and regulations.
For example, the Texas trademark landscape will soon be changing pursuant to new trademark legislation. Most notably, brand owners and businesses seeking to register a trademark will face higher barriers to registration, as their trademark will be refused if it is likely to cause confusion with a mark registered not just in Texas, but registered at the U.S. Patent and Trademark Office. Additionally, the law shortens the registration and renewal term from ten years to five years, while also providing a means for one party to cancel another’s registration on the basis of mark confusion. The law also increases the causation requirement needed to recover trademark infringement to proving that the infringer intended to cause confusion, mistake, or deception. The law also creates additional monetary remedies available for injured mark owners. You can view all of the changes in the Texas law (notated as Trademark Act (H.B. 3141)) here.
Although trademarks do not have to be registered with the state or federal government, it is often a good idea to register those names and symbols of importance to the church because it puts the rest of the country on notice that you are using (and want to protect) the trademark.