Texas State Trademark Rights

Many people, trademark lawyers included, do not give a whole lot of thought to state trademark rights. Instead, they focus on obtaining Federal rights culminating in a Federal registration. While the Federal rights are critical, I believe it is a mistake to forget about state rights, especially in Texas. The simple reason why I believe this is a mistake is the Texas state anti-dilution statute, Sec. 16.103 of the Texas Business and Commerce Code. Normally, a trademark owner can only stop someone from using a similar mark if they are in competition. However, dilution allows a trademark owner to stop any use of a similar mark notwithstanding any competition between the parties. This dramatically broadens the right of the trademark owner. In order to take advantage of dilution's protection, the owner must show that they own a famous mark. Proving a famous mark is very hard to do on the Federal level because the trademark owner must show a broad reach and recognition across the entire country which can be very hard to do. In Texas, the famous requirement will be much easier to prove because it must simply be wide recognition within the state or within a geographic region of the state. Therefore, if you have a distinctive mark in Texas it is good idea to secure these state rights in order to have as broad a coverage as possible.

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