TRADEMARK REGISTRATION
A trademark is a symbol that can be used to distinguish one company’s goods or services from
those of other businesses. Trademarks are protected under intellectual property laws. 1
In every nation or region where they are acquired, trademark rights are regarded as unique. Each
jurisdiction is free to recognize and protect trademark rights in a way that furthers its own policy
goals. 2
Trademarks should be registered in any nations or jurisdictions where one offers their goods or
services under that mark, as well as in any nations or jurisdictions where one plans to use the
mark in the future, has a manufacturing plant, or has an office. Trademarks are national in scope,
hence applications for protection must be made in each country.
There are numerous ways to register a trademark. It might be a word or a jumble of letters,
numbers, and words. Examples of trademarks include designs, symbols, three-dimensional
elements like product packaging and shape, auditory or odorous indicators, and color colors used
as identifying qualities. 3
Multilateral agreements provide the rules for trademark registration and protection on a global
scale. The international agreement that controls the registration of trademarks and other forms of
intellectual property is known as the Paris Convention for the Protection of Industrial Property.
The convention’s Article 6 states that each country’s domestic law shall govern the requirements
for the filing and registration of trademarks.
Requirements for registration of a trademark in Texas, USA
In order to register a trademark or service mark in Texas, submit a form 901 application to the
secretary of state’s office.
The application is governed by Section 16.051 of the Business & Commerce Code and Section
93.31 of Chapter 93 of the Texas Administrative Code.
1 The World Intellectual Property Organization https://www.wipo.int/trademarks/en/ accessed on 26 th October 2022
2 Fact Sheet: Introduction to Trademarks International Trademark Rights, accessed on 26th October 2022
3 The World Intellectual Property Organization <https://www.wipo.int/trademarks/en/> accessed on 26th October
2022
In order to be registered as a trademark, a mark must be in use. Before a mark may be registered
in Texas, it must actually be used in trade there. For instance, before an application can be
submitted to the secretary of state, a service mark or trademark must be used in connection with
goods sold or distributed in Texas, respectively (during advertising or sale).
A proposed mark may not be "reserved" before it has been used in Texas commerce or before a
completely filled out and filed application has been submitted. Registration will be denied, and
the processing money will not be returned if an application is submitted before it is actually
used. 4
Second, rather than being descriptive, the mark must be distinctive. Registration is only
permitted for distinguishing words, names, symbols, gadgets, or logos. A designation that
functions largely as a surname, is frequently used to describe a good or service, or expresses the
features or traits of a good or service directly is not distinctive on first use and is not eligible for
registration.
For instance, as the terms "Food & Beverage Online" would just be descriptive of such a service,
they would not be eligible for registration when used in conjunction with "news and information
service for the food processing industry included in a database." But occasionally, a designation
that lacks intrinsic distinctiveness can develop it after at least five years of consistent and
essentially exclusive use. 5
A trademark must be able to distinguish between goods in which it is not associated and goods
with which the owner of the trademark is or may be connected in the course of trade in order to
be registrable.
The definition of distinctiveness under trademark law in the United States has undergone a
radical change as a result of Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir.
1976) and United States trademark law. Now, distinctiveness can be seen as a spectrum with a
wide range of manifestations. A trademark may be distinctive in a number of ways: 6
4 Form 901—Instructions (Trade or Service Mark Application), < https://www.sos.state.tx.us/corp/forms/901.pdf>
5 ibid
6 Legal Information Institute, Cornell law School, ‘Distinctive Trademark’ <
https://www.law.cornell.edu/wex/distinctive_trademark > accessed 26th October 2022
A trademark can be a fanciful mark, which are words created specifically to serve as trademarks
and which have no meaning other than that of trademarks, such as KODAK.
It can also be an arbitrary mark made up of words with common linguistic meanings but
meanings unrelated to the goods or services the mark stands for, such as APPLE.
It may also be a suggestive symbol, such as COPPERTONE for sun-tanning products, that just
alludes to or indicates the nature of a good or service without actually naming it.
A descriptive mark, which is not intrinsically distinctive but can gain distinctiveness after it is
connected in the public’s imagination to the relevant good or service, can also be used as a
trademark. Usually, these trademarks are not approved.
Generic trademarks are those that employ the phrase for an object to identify or distinguish
goods or services. These are unable to establish distinctive and enforceable trademarks.
However, with time, once distinct terms may become general phrases, such as GOOGLE.
There are various ways in which one can determine whether a trademark is distinctive as
opposed to descriptive 7 :
The Dictionary Test – This test aims to ascertain the word’s common significance and meaning
as provided by a dictionary. This is how the average public would come across the mark.
Imagination Test – This looks at whether it’s obvious what the mark means or whether you have
to use a little creativity or thought to figure out what the indicated commodity or service is. The
mark is probably suggestive rather than descriptive if a high level of cognition is required.
Competitor Need or Use – Does the claimed mark have to be actively used by competitors for
consumers to identify or comprehend what the claimed mark stands for? If so, this is proof that
the phrase is descriptive, and the fact that the term has a significant secondary meaning for the
particular company can make it a registrable mark. This may also suggest that the mark lacks
distinctiveness and cannot be protected.
7 The Business Professor, ‘Secondary Meaning for Descriptive Marks – Explained’, <
https://thebusinessprofessor.com/en_US/property-law/secondary-meaning-for-descriptive-marks> accessed 26 th
October 2022
If a trademark is likely to mislead, cause confusion, or would be against the law, morality, or any
scandalous design, it cannot be registered.
Any goods or descriptions of things that are similar to or closely resemble a mark that belongs to
another owner and has already been registered are ineligible for trademark registration. When
two trademarks are so similar to one another and the goods and/or services they are used for are
so connected, there is a high likelihood that consumers may mistakenly believe they are from the
same source. There is no requirement that the marks be identical.
When two marks have similar spoken sounds, visual similarities, and/or the ability to evoke the
same overall commercial impression in the minds of consumers, the marks are said to be liable to
confuse. Depending on how closely connected the goods and/or services are, a similarity in
sound, appearance, or meaning may be sufficient to sustain a finding of probability of confusion. 8
The Lapp Test is the benchmark used by the United States Trademark and Patent Office to
establish if a trademark’s probability of confusion is likely to occur. It is a multi-factored test that
is used to determine whether there is a likelihood of confusion by looking at elements like how
similar the marks are, how strong the plaintiff’s mark is, how sophisticated consumers are when
making purchases, why the defendant adopted the mark, evidence of actual confusion (or lack
thereof), how similar the marketing and advertising channels are, how similar the products are,
how similar the parties’ sales efforts are targeted, and how similar the identity/function. 9
Trade names cannot be registered. Trade names are phrases that are only used to separate a
commercial organization from the products or services that company offers. If a company name
is used in close proximity to an address or phone number, does not draw much attention, or is
overshadowed by the presence of another mark, it may be mistaken for a trade name rather than a
trademark. However, if a company name can be demonstrated to serve as a mark, it may be
registered.
When a mark is registered with the secretary of state, it grants the owner statewide priority rights
over anyone else who later adopts the same or a confusingly similar mark.
8 Ibid
9 Legal Information Institute, Cornell University Law School, ‘Lapp Test’ <
https://www.law.cornell.edu/wex/lapp_test>
The application is sent to the James Earl Rudder Office Building, 1019 Brazos, Austin, Texas
78701, by fax with the credit card information listed on Form 807 to (512) 463-5709, or by mail
to the Secretary of State, P.O. Box 13697, Austin, Texas 78711-3697. A filing fee of $50 per
classification and a drawing or sample of the protected mark must be included with the
application.
The applicant ought to be the one who is in charge of deciding how the mark is used and how
well the products or services are made. The application must include all of the applicant’s
information. The applicant’s name and the assumed name of the business should be provided if
they are a sole proprietor operating under an assumed name.
The name of the applicant’s general partnership or joint venture, if either exists, must be
disclosed. The applicant’s legal name as it appears in the organization’s formation document must
be given if the applicant is an organized entity, such as a corporation, limited liability company,
or limited partnership. The application should also include the applicant’s place of business.
Additionally, the application should include information about the mark, such as a name or
description. As nearly as feasible to how it appears in the samples, the mark should be described.
Only one mark may be requested to be registered by the applicant per application. Various
versions or multiple color schemes may not be registered in a single application.
The classes that the trademark falls under must also be mentioned in the application. There are
numerous classes as specified by legislation:
Class 1 Goods: Chemicals, Class 2 Goods: Paints, Class 3 Goods: Cosmetics and Cleaning
Products Class 4. Fuels and Lubricants Pharmaceutics, Class 5 Metal products, class 6 Machines,
Class 7, and Hand Tools, Class 8 Class 11: Environmental Control Apparatus Class 9: Electrical
& Scientific Apparatus Class 10: Medical Apparatus Class 12: Automobiles Class 15: Musical
Instruments Class 13: Firearms Class 14: Jewelry Class 16: Printed matter and paper products
Class 17: Rubber products Group 18: Leather Products Non-metallic Building Materials, Class
19 Class 20: Unclassified furniture and other items Class 21: Glass and Housewares Class 22:
Fibers and Cordage Yarns and Threads, Class 23 Class 26: Fancy Goods Class 24: Fabrics Class
25: Clothing (e.g., buttons, ribbons) Class 27: Carpets and Rugs Class 28: Sporting goods and
toys Class 29: Processed foods and meats. Foods in Class 30: Staples (e.g., coffee, sugar) Natural
agricultural products, class 31 Light Beverages, Class 32 Class 33: Alcoholic Beverages Articles
for smokers, class 34
SERVICES: Class 35: Business & Advertising Class 36: Financial & Insurance Class 37:
Construction and repair of buildings Telecommunications, class 38 Class 39: Storage and
Transportation Class 40: Material Treatment Class 41: Instruction & Recreation Computer,
scientific, and legal Class 42 Class 43: Inns and eateries Class 44: Agricultural, cosmetic, and
medical Class 45: Individual
Comparing the commodities to which the trademark is tied to the classifications designated by
law, one must accurately and plainly characterize those goods. Indicate the date the mark was
first publicly used to identify the products or services being promoted for each class indicated on
the application.
The application must be accompanied by three examples of the mark. Include a minimum of one
sample for each class that was mentioned. Include at least one specimen that displays the mark in
color if color is included as a feature of the mark. Actual labels or tags applied to the products or
containers used with them are acceptable specimens. Another suitable example is a photograph
of a real display that is placed next to the products (also known as a "point-of-sale" display).
A drawing of the mark exactly as it appears in the samples of usage submitted with the
application must also be included. Other words that are not part of the mark should not be used.
The drawing must fit inside a drawing box measuring 3.15 inches by 3.15 inches and feature
only one mark.
After being submitted, the application goes through a screening and inspection process. A
trademark examiner reviews the application and may provide recommendations for changes that
should be made to improve the trademark’s ability to be registered.
The applicant will receive a certificate of registration if their registration application is accepted.
Not every registration application that is submitted to the secretary of state is accepted.
The applicant is granted ninety (90) days after being informed of the registration objections in
opportunity to modify the application, supply the necessary information, or respond to the denial.
The examination procedure will end and the application will be abandoned if a response is not
given within the allotted time frame. However, the trademark examiner will reevaluate the
application after receiving the applicant’s response. Until the application is registered, ultimately
denied, or abandoned by the applicant, the examination steps outlined may be repeated.
The trademark ADORNIFY would ideally be classified as a suggestive mark. This is because it
suggests the business venture, which is ideally to sell decorative products that aim to
adorn/decorate one’s home. The trademark ADORNIFY basically suggests the nature of a
product or service or one of its attributes without necessarily describing the product or service.
The trademark could also be classified as a fanciful mark, because the word ADORNIFY does
not have meaning in the ordinary English language. It has been created specifically for the
function of a trademark.
Given the aim of ADORNIFY LLC, the trademark would be registered under two classes being
Class 20: Furniture and articles not otherwise classified and Class 21: Housewares & Glass.
Therefore, the applicant would have to pay $50 for each class, totaling $100.
REFERENCES;
U. S. TRADEMARK LAW RULES OF PRACTICE & FEDERAL STATUTES U. S. PATENT &
TRADEMARK OFFICE
Texas Administrative Code Chapter 93
Business & Commerce Code
The Lanham Act, 15 U.S.C. §§ 1051 et seq.
Form 901—Instructions (Trade or Service Mark Application),
<https://www.sos.state.tx.us/corp/forms/901.pdf>
WAL-MART STORES, INC. V. SAMARA BROTHERS, INC. (99-150) 529 U.S. 205 (2000)
Bliss Salon Day Spa v. Bliss World LLC, 268 F.3d 494 (7th Cir. 2001)
Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir. 1976)
Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983).
The World Intellectual Property Organization https://www.wipo.int/trademarks/en/
Fact Sheet: Introduction to Trademarks; International Trademark Rights,
Legal Information Institute, Cornell law School, ‘Distinctive Trademark’ <
https://www.law.cornell.edu/wex/distinctive_trademark >
The Business Professor, ‘Secondary Meaning for Descriptive Marks – Explained’
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