Autor: Shelby Benavidez 

In today’s fast-paced, brand-driven economy, trademarks are a must for standing out in a crowded marketplace. Whether you operate a startup or manage an established company, protecting your brand through trademark law is critical. Unfortunately, when you have a strong, unique mark, others want to imitate it. When this happens, trademark litigation can become necessary to keep others from stealing your brand. This article explores the fundamentals of trademark law, the litigation process, and how these legal principles apply specifically in the state of Texas. 

What Is a Trademark and Why Does It Matter for Your Brand? 

What Is a Trademark? 

A trademark is a symbol, name, phrase, logo, or design that identifies the source of goods or services and distinguishes them from those offered by others. Governed by the Lanham Act, the primary federal statute regulating trademarks in the U.S., trademarks help protect both businesses and consumers. They protect a company’s brand identity and reputation while preventing consumer confusion in the marketplace. Trademarks can also include trade dress, such as distinctive packaging or product configurations, as long as they serve as identifiers of origin. 

Can Anyone Get a Trademark? 

Technically, anyone can obtain trademark rights regardless of whether you sell socks out of your garage or own a multi-billion-dollar corporation. However, your content has to be original. If your logo or brand mark is too generic or similar to others, it probably won’t be approved or protected by trademark laws.  

For example, let’s say you open a dairy farm tomorrow and name it “Milk,” and your logo is a generic milk carton. You won’t be able to trademark either of those because it simply describes the product you and thousands of other companies sell. We can’t invent a new word for milk so that others can continue to sell it. 

How to Register a Trademark with the USPTO 

Trademark rights are technically given to you automatically under common law rights when you establish your brand and sell a product or service. However, common law rights are only established in the geographical location that your brand is present in.  

Let’s say you open a makeup business in Arizona called, “Sweat and Shine.” Because you only sell products in Arizona, someone in New York or Texas can also open a business called “Sweat and Shine,” without any infringement on your trademark. However, if either of you tried to nationally register your brand name, you wouldn’t be able to sell products out of the state that brand name already exists.  

Similarly, you can register your brand mark through the state if you only ever intend to sell products out of that state. Again, though, similar brands in other states can still register their brand under the same name. This is why we recommend registering your brand mark through the United States Patent and Trademark Office (USPTO). This gives you trademark rights to your brand throughout the entire country. 

To obtain a federal trademark, you’ll first have to make sure that no other brand has already registered a trademark against your brand name, slogan, or logo. Once cleared, you’ll submit an application to the USPTO, detailing the mark and the goods or services you provide. 

Next, a USPTO examiner will review your application to determine whether it complies with legal requirements and whether the mark may cause confusion with existing ones. If the application passes this review, the mark is published in the USPTO’s Official Gazette, giving third parties a 30-day window to oppose the registration. 

If there is no opposition, or if any opposition is resolved in your favor, the mark proceeds to registration. If you plan to use your mark in commerce, you’ll need to submit proof of use before registration is finalized. The entire process typically takes 8 to 14 months and requires periodic maintenance filings to keep the registration active. 

What to Know About Trademark Litigation and Infringement 

Is Trademark Infringement a Crime? 

Trademark infringement is usually treated as a civil violation, not a criminal offense. A civil violation of trademark infringement can happen when another brand uses a similar or identical name or brand mark that would confuse or mislead customers. If this happens, you (as the owner of the trademark) would have to prove you own the trademark, and unauthorized use will likely cause confusion in the marketplace. 

Typically, a civil case can resolve any disputes against trademark infringement. However, criminal charges can arise if another company is willingly creating and selling counterfeit products. Under federal law, particularly the Trademark Counterfeiting Act of 1984, producing or selling counterfeit goods with a spurious trademark can result in criminal penalties, including fines and imprisonment. For example, you can’t sew a Gucci tag onto a knockoff bag and sell it as a Gucci product. 

Can You Sue for a Trademark? 

Trademark owners can absolutely sue other businesses or individuals who are infringing on their brand marks. These types of lawsuits typically involve claims of infringement, dilution, false designation of origin, or unfair competition. If you are looking to file a lawsuit, you should file it in federal court, especially if your trademark is federally registered. 

Once again, to win a trademark lawsuit, you’d have to prove you own the trademark and show that the defendant’s mark is so similar that it causes a likelihood of confusion among consumers. If you win the case, the court can order the other party to stop using the trademark, compensate you for lost sales and damages, and destroy any products that use the mark without permission. In extremely successful cases, the court might also make them pay your legal fees, but this is usually if the infringement was done on purpose. 

How Much Does Trademark Litigation Cost? 

It’s nearly impossible to say how much trademark litigation would cost because cases can vary depending on the complexity of the case and how far your case makes it through the courts. Early stages can be free. In some cases, the infringing company may not realize they are using a trademarked image, phrase, or name. In these situations, you can attempt to send a cease-and-desist letter. You can do this on your own, no need for an attorney, to let the other company know that you own trademark rights and if they don’t stop using it, you’ll pursue legal action. This may be enough to scare them and stop the infringement. 

However, a cease-and-desist letter is just that – a letter. If the other party refuses to stop using your registered mark, you will probably have to file a civil suit to stop the infringement. Once your case is filed, litigation costs can be anywhere between a couple thousand to a couple hundred thousand. 

Costs are influenced by factors like the need for expert witnesses, extensive discovery, pretrial motions, and appeals. Because lawsuits can be expensive and time-consuming, many people try to settle the dispute or use other methods like mediation or arbitration to resolve the issue before going to trial. 

Trademark Laws in Texas vs. Federal Trademark Rights 

Texas Trademark Law vs. Federal Law 

Federal trademark law protects your brand across the entire U.S. and gives you stronger tools to enforce your rights. However, Texas also has its own trademark laws. Registering a trademark with the Texas Secretary of State is easier and cheaper, but it only protects your brand within Texas. 

A Texas registration lets others know you own the mark in the state and can help you take legal action in Texas courts. But if you do business in other states, registering your trademark federally is a better choice because it gives you wider protection and more legal benefits. 

Filing a Trademark Lawsuit in Texas 

Trademark lawsuits for federally registered marks are usually handled in U.S. District Courts, like those in Dallas or Houston. These courts use federal rules to decide if infringement has occurred, mainly by looking at how likely it is that consumers across the nation would confuse the two marks. 

State trademark cases would be filed through state court, especially if they involve common law rights or unfair competition. To file in state court, you’ll have to prove that the other party’s use of the mark has caused harm within Texas. State courts won’t interfere with trademark disputes outside of the state of Texas. 

Enforcing Your Trademark Rights in Texas 

To protect a trademark in Texas, you’ll need to actively watch for misuse. This includes keeping an eye on new trademark filings, watching online stores and social media, and working with a lawyer to create a strong plan for brand protection. If you see someone using your registered mark without permission, take steps to stop it. Start by sending warning letters to those using the mark without permission, asking them to remove infringing content. If this doesn’t work, file a lawsuit. It’s important to be proactive. 

Trademark law helps protect your brand, build customer trust, and prevent unfair competition. Whether you’re starting a new business or protecting an established one, it’s important to understand how trademarks work and how to enforce your rights. 

Federal trademark registration gives the strongest protection, but Texas also offers useful tools for local businesses. Because trademark disputes can be complex and costly, it’s smart to act early by registering your mark, keeping an eye on its use, and getting legal advice if problems come up.