CHAPTER 16. TRADEMARKS
BUSINESS AND COMMERCE CODE
TITLE 2. COMPETITION AND TRADE PRACTICES
CHAPTER 16. TRADEMARKS
SUBCHAPTER A. GENERAL PROVISIONS
Sec. 16.01. DEFINITIONS. (a) In this chapter, unless the
context requires a different definition,
(1) "applicant" means the person applying for registration of a
mark under this chapter and includes his legal representative,
successor, assignee, and predecessor in title to the mark sought
to be registered;
(2) "mark" includes service mark and trademark;
(3) "registrant" means the person to whom a registration has
been issued under this chapter and includes his legal
representative, successor, assignee, and predecessor in title to
the registration;
(4) "service mark" means a word, name, symbol, device, slogan or
any combination thereof which, whether registered or not, has
been adopted and used by a person to identify his services and
distinguish them from the services of others, and includes the
titles, designations, character names, and distinctive features
of broadcast or other advertising;
(5) "trademark" means a word, name, symbol, device, slogan or
any combination thereof which, whether registered or not, has
been adopted and used by a person to identify his goods and
distinguish them from the goods manufactured or sold by others;
and
(6) "trade name" includes individual name, surname, firm name,
corporate name, and lawfully adopted name or title used by a
person to identify his business, vocation, or occupation.
(b) This chapter does not apply to the registration or use of
livestock brands or other indicia of ownership of goods which do
not qualify as a "mark" as defined in this chapter.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.02. WHEN MARK CONSIDERED TO BE USED. (a) A mark is
considered to be used in this state in connection with goods when
(1) it is placed on
(A) the goods;
(B) containers of the goods;
(C) displays associated with the goods; or
(D) tags or labels affixed to the goods; and
(2) the goods are sold, displayed for sale, or otherwise
publicly distributed in this state.
(b) A mark is considered to be used in this state in connection
with services when
(1) it is used or displayed in this state in connection with
selling or advertising the services; and
(2) the services are rendered in this state.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
SUBCHAPTER B. REGISTRATION OF MARK
Sec. 16.08. REGISTRABLE MARKS. (a) A mark in actual use in
connection with the applicant's goods or services, which
distinguishes his goods or services from those of others, is
registrable unless it
(1) is, or includes matter which is, immoral, deceptive, or
scandalous;
(2) may disparage, or falsely suggest a connection with, or
bring into contempt or disrepute
(A) a person, whether living or dead;
(B) an institution;
(C) a belief; or
(D) a national symbol;
(3) depicts or simulates the flag, coat of arms, or other
insignia of
(A) the United States;
(B) a state;
(C) a municipality; or
(D) a foreign nation;
(4) is or includes the name, signature, or portrait of a living
individual who has not consented in writing to its registration;
(5) is
(A) merely descriptive or deceptively misdescriptive of the
applicant's goods or services;
(B) primarily geographically descriptive or deceptively
misdescriptive of the applicant's goods or services; or
(C) primarily merely a surname; or
(6) is likely to cause confusion or mistake, or to deceive,
because, when applied to the applicant's goods or services, it
resembles another person's unabandoned mark registered in this
state.
(b) Subsection (a)(5) of this section does not prevent the
registration of a mark that has become distinctive as applied to
the applicant's goods or services. The secretary of state may
accept as evidence that a mark has become distinctive as applied
to the applicant's goods or services proof of substantially
exclusive and continuous use of the mark by the applicant in this
state for the five years next preceding the date on which the
applicant filed his application for registration.
(c) A trade name is not registrable under this chapter. However,
if a trade name is also a service mark or trademark, as defined
in this chapter, it is registrable as a service mark or
trademark.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.09. CLASSIFICATION OF GOODS AND SERVICES. (a) The
secretary of state shall adopt rules establishing a
classification of goods and services for the convenient
administration of this chapter. The classifications established
do not limit or expand an applicant's or registrant's rights. To
the extent practicable, the classification of goods and services
should conform to the classification adopted by the United States
Patent and Trademark Office.
(b) An applicant may include in a single application for
registration of a mark all goods or services in connection with
which the mark is actually being used and which are in a single
class. An applicant may not include in a single application for
registration goods or services which are not in a single class.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1989, 71st Leg., ch. 865, Sec. 1, eff.
Sept. 1, 1989; Acts 2003, 78th Leg., ch. 168, Sec. 1, eff. Sept.
1, 2003.
Sec. 16.10. APPLICATION FOR REGISTRATION. (a) Subject to the
limitations prescribed by this chapter, a person may file an
application to register a mark in the office of the secretary of
state on a form prescribed by the secretary of state.
(b) The applicant shall include in the application:
(1) the name and business address of the applicant;
(2) if the applicant is a corporation, limited partnership,
limited liability company, or other business entity, the state of
incorporation or organization;
(3) an appointment of the secretary of state as the applicant's
agent for service of process only in suits relating to the
registration which may be issued if the applicant:
(A) is or becomes a:
(i) nonresident individual, partnership, or association; or
(ii) foreign corporation, limited partnership, or limited
liability company without a certificate of authority to do
business in this state; or
(B) cannot be found in this state;
(4) the names or a description of the goods or services in
connection with which the mark is being used;
(5) the manner in which the mark is being used in connection
with the goods or services;
(6) the class in which the applicant believes the goods or
services belong;
(7) the date on which the applicant first used the mark anywhere
in connection with the goods or services;
(8) the date on which the applicant first used the mark in this
state in connection with the goods or services;
(9) a statement that the applicant is the owner of the mark, and
that, to the best of the applicant's knowledge, no other person
is entitled to use the mark in this state:
(A) in the identical form used by the applicant; or
(B) in a form that is likely, when used in connection with the
goods or services, to cause confusion or mistake, or to deceive,
because of its resemblance to the mark used by the applicant;
(10) a narrative description of the mark; and
(11) such additional information or documents as the secretary
of state may reasonably require.
(c) The applicant shall:
(1) prepare and file the application and a copy of the
application with the secretary of state; and
(2) submit as part of the application to the secretary of state:
(A) two identical specimens or facsimiles of the mark as
actually used, one specimen or facsimile with the original
application and one specimen or facsimile with the copy;
(B) a drawing of the mark that complies with any requirement
specified by the secretary of state; and
(C) an application fee of $50 payable to the secretary of state.
(d) The applicant or the applicant's agent shall sign the
application.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1979, 66th Leg., p. 233, ch. 120, Sec. 47,
eff. May 9, 1979; Acts 1983, 68th Leg., p. 313, ch. 69, Sec. 6,
eff. Sept. 1, 1983; Acts 1987, 70th Leg., ch. 1007, Sec. 6, eff.
June 19, 1987; Acts 1997, 75th Leg., ch. 248, Sec. 1, eff. Sept.
1, 1997.
Sec. 16.105. EXAMINATION OF APPLICATION. (a) On the filing of
an application for registration and payment of the application
fee, the secretary of state shall examine the application for
compliance with this chapter.
(b) The applicant shall provide to the secretary of state
additional pertinent information requested by the secretary of
state.
(c) The secretary of state shall examine applications in the
order in which the applications are filed, including applications
concurrently processed for registration of the same or
confusingly similar marks used in connection with the same or
similar goods or services.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 2, eff. Sept. 1,
1997.
Sec. 16.106. AMENDMENT TO APPLICATION. (a) The applicant may
make an amendment to the application as reasonably requested by
the secretary of state or in response to a rejection or objection
to the registration by the secretary of state.
(b) An amendment to the application, other than an amendment to
the date on which the applicant first uses the mark, may be made
by the applicant's agent. The secretary of state may require the
applicant to execute and submit a new application instead of
making an amendment.
(c) An amendment to the application made to the date on which
the applicant first used the mark may not specify a date of use
that is after the date on which the application was filed.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 2, eff. Sept. 1,
1997.
Sec. 16.107. DISCLAIMER OF UNREGISTRABLE COMPONENT. The
secretary of state may require the applicant to disclaim or the
applicant may voluntarily disclaim an unregistrable component of
a mark that is otherwise registrable. A disclaimer may not
prejudice or affect the:
(1) rights of the applicant or registrant in the disclaimed
matter; or
(2) rights of the applicant or registrant to make an application
to register a mark if the disclaimed matter is distinctive of the
goods or services of the applicant or registrant.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 2, eff. Sept. 1,
1997.
Sec. 16.108. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR MARK.
(a) When concurrently processing applications for the same or
confusingly similar marks used in connection with the same or
similar goods or services, the secretary of state shall give
priority to the application that was filed first. If the
previously filed application is registered, the secretary of
state shall reject the other application.
(b) The applicant may bring an action for cancellation of the
previously issued registration on the ground that the applicant
has a prior or superior right to the mark under this chapter.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 2, eff. Sept. 1,
1997.
Sec. 16.109. DENIAL OF REGISTRATION. (a) If the secretary of
state finds that the applicant is not entitled to register the
mark, the secretary of state shall:
(1) notify the applicant of the reason for the denial of the
application; and
(2) give the applicant a reasonable amount of time as prescribed
by the secretary of state in which to:
(A) issue a response to the denial; or
(B) amend the application.
(b) The applicant may repeat the examination procedures
described by Subsection (a) until the earlier of:
(1) the expiration of the period prescribed by the secretary of
state under Subsection (a)(2); or
(2) the date on which the secretary of state finally refuses
registration of the application.
(c) If the secretary of state finally refuses registration of
the mark, the applicant may seek a review of the decision of the
secretary of state in accordance with the procedures prescribed
by this chapter.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 2, eff. Sept. 1,
1997.
Sec. 16.11. REGISTRATION BY SECRETARY OF STATE. If the
application satisfies the requirements of this chapter, and the
application fee has been paid, the secretary of state shall:
(1) endorse on the original and the copy of the application:
(A) the word "filed"; and
(B) the date on which the application was filed;
(2) file the original in his office;
(3) issue a certificate of registration evidencing registration
on the date on which the application was filed;
(4) attach the copy to the certificate of registration; and
(5) deliver the certificate of registration with the attached
copy of the application to the applicant.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1979, 66th Leg., p. 233, ch. 120, Sec. 48,
eff. May 9, 1979; Acts 1997, 75th Leg., ch. 248, Sec. 3, eff.
Sept. 1, 1997.
Sec. 16.12. TERM OF REGISTRATION. (a) The registration of a
mark under this chapter is effective for a term of 10 years from
the date of registration.
(b) Repealed by Acts 1997, 75th Leg., ch. 248, Sec. 8, eff.
Sept. 1, 1997.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1997, 75th Leg., ch. 248, Sec. 8, eff.
Sept. 1, 1997.
Sec. 16.13. NOTICE OF EXPIRATION OF REGISTRATION. (a) During
the period beginning 12 months and ending 6 months before the day
a registration expires, the secretary of state shall, by writing
to the last known address of the registrant under this chapter or
under a prior act, notify the registrant of the necessity for
renewing or reregistering under Section 16.14 of this code.
(b) Neither the secretary of state's failure to notify a
registrant nor the registrant's nonreceipt of a notice under
Subsection (a) of this section
(1) extends the term of a registration; or
(2) excuses the registrant's failure to renew or reregister.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.14. RENEWAL OF REGISTRATION AND REREGISTRATION. (a)
The registration of a mark under this chapter may be renewed for
an additional 10-year term by filing a renewal application within
six months before the day the registration expires. The
registrant shall submit to the secretary of state:
(1) a renewal application stating that:
(A) the mark is still in use in this state; or
(B) nonuse of the mark in this state:
(i) is due to special circumstances which excuse the nonuse; and
(ii) is not due to an intention to abandon the mark in this
state; and
(2) a renewal application fee of $25 payable to the secretary of
state.
(b) A registrant may renew a registration under Subsection (a)
of this section for successive terms of 10 years.
(c) Repealed by Acts 1997, 75th Leg., ch. 248, Sec. 8, eff.
Sept. 1, 1997.
(d) The renewal application must be signed by the registrant or
the registrant's agent.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1983, 68th Leg., p. 313, ch. 69, Sec. 7,
eff. Sept. 1, 1983; Acts 1997, 75th Leg., ch. 248, Sec. 4, 8,
eff. Sept. 1, 1997.
Sec. 16.15. RECORD, NOTICE, AND PROOF OF REGISTRATION. (a) The
secretary of state shall keep for public examination a record of
all:
(1) marks registered, reregistered, or renewed under this
chapter;
(2) assignments recorded under Section 16.18 of this code; and
(3) other instruments recorded under Section 16.19 of this code.
(b) Registration of a mark under this chapter is constructive
notice throughout this state of the registrant's claim of
ownership of the mark throughout this state.
(c) A certificate of registration issued by the secretary of
state under this chapter, or a copy of it certified by the
secretary of state, is admissible in evidence as prima facie
proof of
(1) the validity of the registration;
(2) the registrant's ownership of the mark; and
(3) the registrant's exclusive right to use the mark in commerce
in this state in connection with the goods or services specified
in the certificate, subject to any conditions and limitations
stated in the certificate.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1997, 75th Leg., ch. 248, Sec. 5, eff.
Sept. 1, 1997.
Sec. 16.16. CANCELLATION OF REGISTRATION. (a) The secretary of
state shall cancel
(1) all registrations in force before May 2, 1962, which are
more than 10 years old and which have not been reregistered under
Section 16.14(c) of this code;
(2) a registration on receipt of a voluntary request for
cancellation from the registrant under this chapter or under a
prior act as identified by the records of the secretary of state;
(3) registrations granted under this chapter and not renewed
under Section 16.14(a) of this code;
(4) a registration concerning which a district or appellate
court has rendered a final judgment, which has become
unappealable, cancelling the registration or finding that
(A) the registered mark has been abandoned;
(B) the registrant under this chapter or under a prior act is
not the owner of the mark;
(C) the registration was granted contrary to the provisions of
this chapter;
(D) the registration was obtained fraudulently; or
(E) the registered mark has become incapable of serving as a
mark.
(b) The clerk of the court whose final judgment cancels a
registration or makes any of the findings specified in Subsection
(a)(4) of this section shall, when the judgment becomes
unappealable, transmit a certified copy of it to the secretary of
state.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.17. ASSIGNMENT OF MARK AND REGISTRATION. (a) A mark
and its registration under this chapter are assignable with the
goodwill of the business in which the mark is used, or with that
part of the goodwill connected with the use of, and symbolized
by, the mark.
(b) An assignment shall be made by duly executed written
instrument.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.18. RECORDATION OF ASSIGNMENT AND ITS EFFECT. (a) An
assignment made under Section 16.17 of this code may be recorded
with the secretary of state by
(1) filing with him
(A) the original assignment; and
(B) a duplicate original or legible photocopy on durable paper
of the assignment; and
(2) paying him a fee of $10.
(b) If an assignment has been properly filed for record under
Subsection (a) of this section, the secretary of state shall
(1) issue in the assignee's name a new certificate of
registration for the remainder of the term of the mark's
registration, reregistration, or last renewal;
(2) endorse on the original and duplicate original assignment or
photocopy the
(A) words "Filed for record in the office of the Secretary of
State, State of Texas"; and
(B) date on which the assignment was filed for record;
(3) file the duplicate original or photocopy of the assignment
in his office; and
(4) return the endorsed original assignment to the assignee or
his representative.
(c) The assignment of a mark registered under this chapter is
void against a purchaser who purchases the mark for value after
the assignment is made and without notice of it unless the
assignment is recorded by the secretary of state
(1) within three months after the date of the assignment; or
(2) before the mark is purchased.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1983, 68th Leg., p. 314, ch. 69, Sec. 8,
eff. Sept. 1, 1983.
Sec. 16.19. RECORDATION OF OTHER INSTRUMENTS. (a) An
instrument that is related to the ownership of a mark registered
under this subchapter, including articles of merger or conversion
or a document effecting a name change, may be recorded with the
secretary of state by:
(1) filing a certified copy of the instrument; and
(2) paying a filing fee in the amount established for the filing
of an assignment under Section 16.18.
(b) This section does not apply to the recording of a mortgage
or a security interest or other instrument that is recordable
under the Uniform Commercial Code.
(c) A license agreement related to a mark registered under this
chapter may not be recorded under this section.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 6, eff. Sept. 1,
1997.
Sec. 16.20. TRANSFER OF MARK; CHANGE OF REGISTRANT'S NAME;
CHANGE OF ADDRESS. (a) If ownership of a registered mark is
transferred or a registrant's name is changed during the
unexpired term of a registration, a new certificate of
registration may be issued for the remainder of the unexpired
term of the mark's registration in the name of the transferee or
in the new name of the registrant upon the filing of an
instrument under Section 16.19.
(b) The secretary of state may amend the trademark records of an
effective registration to reflect a change of registrant address
upon receipt of a statement signed by the registrant or the
registrant's agent. The statement must set forth the name of the
registrant of record, a description of the registered mark, the
registration number issued by the secretary of state, and the
registrant's new address.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 6, eff. Sept. 1,
1997. Amended by Acts 2003, 78th Leg., ch. 168, Sec. 2, eff.
Sept. 1, 2003.
Sec. 16.21. POWERS OF SECRETARY OF STATE. (a) The secretary of
state may adopt rules relating to the filing of documents under
this subchapter.
(b) The secretary of state may prescribe forms for use in filing
documents under this subchapter.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 6, eff. Sept. 1,
1997.
Sec. 16.22. ELECTRONIC FILINGS AND REPRODUCTIONS. (a) An
application for renewal of trademark registration, an assignment
under Section 16.17, or a transfer of ownership or change of
registrant name under Section 16.19 may be submitted in an
electronic format that is approved by the secretary of state. An
instrument that is filed in accordance with this subsection is
deemed to have complied with:
(1) the filing requirements of the section pursuant to which it
is filed; and
(2) any requirement that the document be submitted as an
originally signed instrument.
(b) All electronic acknowledgments and certificates required to
be issued by the secretary of state for the instruments filed
pursuant to Subsection (a) shall be considered issued or provided
by the secretary of state on the initial transmission by the
secretary of state of the acknowledgment or certificate required
to be filed.
(c) Any certificate issued by the secretary of state concerning
any instrument filed under this subchapter need not be on paper
or reduced to printed form.
(d) If permitted by the rules adopted by the secretary of state,
an original instrument required or authorized to be filed with
the secretary of state under this subchapter may be a
photographic, photostatic, facsimile, or similar reproduction of
a signed instrument.
(e) All civil and criminal penalties applicable to the filing of
documents under this chapter apply to all documents filed
pursuant to this section.
Added by Acts 2003, 78th Leg., ch. 168, Sec. 3, eff. Sept. 1,
2003.
SUBCHAPTER C. COURT ACTION
Sec. 16.24. REVIEW OF SECRETARY OF STATE'S DECISIONS. (a) If
the secretary of state takes final action refusing to register a
mark under Section 16.109 or to renew the registration of a mark
under Section 16.14, the applicant or registrant may file suit
for review of the secretary of state's decision in one of the
Travis County district courts.
(b) A suit filed under Subsection (a) of this section is tried
de novo, as an appeal from a justice court to a county court, and
(1) every decision or action concerning an issue in the suit
made or taken by the secretary of state before the suit was filed
is void;
(2) the district court shall determine the issues in the suit as
if no decision had been made or action taken by the secretary of
state; and
(3) the district court may not apply in any form the substantial
evidence rule in reviewing a decision or action of the secretary
of state.
(c) The legislature declares that
(1) this section is not severable from the other sections of
this chapter;
(2) it would not have enacted this chapter without this section;
and
(3) this chapter is void if a court in a final judgment which
becomes unappealable invalidates this section in whole or part.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967. Amended by Acts 1999, 76th Leg., ch. 1215, Sec. 1, eff.
Sept. 1, 1999.
Sec. 16.25. SUIT TO CANCEL REGISTRATION. (a) A person who
believes that he is or will be damaged by a registration under
this chapter may sue to cancel the registration in a district
court having venue.
(b) The clerk of a court in which suit is filed under Subsection
(a) of this section shall transmit notice of the suit to the
secretary of state, who shall place the notice in the
registration file with proper notations and endorsements.
(c) When the registrant's agent for service of process is the
secretary of state, the secretary of state shall forward notice
of the suit by registered mail to the registrant at his last
address of record.
(d) If the court finds that the losing party in a suit filed
under Subsection (a) of this section should have known his
position was without merit, the court may award the successful
party his reasonable attorneys' fees and charge them as part of
the costs against the losing party.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.26. INFRINGEMENT OF REGISTERED MARK. (a) Subject to
Section 16.27 of this code, a person commits an infringement if,
without the registrant's consent, he
(1) uses anywhere in this state a reproduction, counterfeit,
copy, or colorable imitation of a mark registered under this
chapter in connection with selling, offering for sale, or
advertising goods or services when the use is likely to deceive
or cause confusion or mistake as to the source or origin of the
goods or services; or
(2) reproduces, counterfeits, copies, or colorably imitates a
mark registered under this chapter and applies the reproduction,
counterfeit, copy, or colorable imitation to a label, sign,
print, package, wrapper, receptacle, or advertisement intended to
be used in selling, leasing, distributing, or rendering goods or
services in this state when the use is likely to deceive or cause
confusion or mistake as to the source or origin of the goods or
services.
(b) A registrant may sue for damages and to enjoin an
infringement proscribed by Subsection (a) of this section in a
district court having venue.
(c) If the district court determines that there has been an
infringement, it shall enjoin the act of infringement and may
(1) require the infringer to pay the registrant all damages
resulting from the acts of infringement and occurring from and
after the date two years before the day the suit was filed; and
(2) order that the infringing reproductions, counterfeits,
copies, or colorable imitations in the possession or under the
control of the infringer be
(A) delivered to an officer of the court;
(B) delivered to the registrant; or
(C) destroyed.
(d) A registrant is entitled to recover damages under Subsection
(c)(1) of this section only for an infringement that occurred
during the period of time the infringer had actual knowledge of
the registrant's mark.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.27. EXCEPTIONS TO LIABILITY FOR INFRINGEMENT. (a) No
registration under this chapter adversely affects common law
rights acquired prior to registration under this chapter.
However, during any period when the registration of a mark under
this chapter is in force and the registrant has not abandoned the
mark, no common law rights as against the registrant of the mark
may be acquired.
(b) The owner or operator of a radio or television station, or
the owner or publisher of a newspaper, magazine, directory, or
other publication, is not liable in that business under Section
16.26 of this code for the use of a registered mark furnished by
one of his advertisers or customers.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.28. PROCURING APPLICATION OR REGISTRATION BY FRAUD. (a)
No person may procure for himself or another the filing of an
application or the registration of a mark under this chapter by
knowingly making a false or fraudulent representation or
declaration, oral or written, or by any other fraudulent means.
(b) A person injured by the false or fraudulent procurement of
an application or registration may sue the person who violated
Subsection (a) of this section in a district court having venue
and
(1) recover from him damages resulting from use of the
fraudulently registered mark, plus costs of suit, including
attorneys' fees; and
(2) have the registration cancelled.
Acts 1967, 60th Leg., p. 2343, ch. 785, Sec. 1, eff. Sept. 1,
1967.
Sec. 16.29. INJURY TO BUSINESS REPUTATION OR TRADE NAME OR MARK.
A person may bring an action to enjoin an act likely to injure a
business reputation or to dilute the distinctive quality of a
mark registered under this chapter or Title 15, U.S.C., or a mark
or trade name valid at common law, regardless of whether there is
competition between the parties or confusion as to the source of
goods or services. An injunction sought under this section shall
be obtained pursuant to Rule 680 et seq. of the Texas Rules of
Civil Procedure.
Added by Acts 1989, 71st Leg., ch. 932, Sec. 1, eff. June 14,
1989.
Sec. 16.30. OLYMPIC SYMBOLS. (a) Without the permission of the
United States Olympic Committee, a person may not, for the
purpose of trade, to induce the sale of goods or services, or to
promote a theatrical exhibition, athletic performance, or
competition, use:
(1) the symbol of the International Olympic Committee,
consisting of five interlocking rings;
(2) the emblem of the United States Olympic Committee,
consisting of an escutcheon having a blue chief and vertically
extending red and white bars on the base with five interlocking
rings displayed on the chief;
(3) a trademark, trade name, sign, symbol, or insignia falsely
representing association with or authorization by the
International Olympic Committee or the United States Olympic
Committee; or
(4) the words "Olympic," "Olympiad," or "Citius Altius Fortius"
or a combination or simulation of those words that tends to cause
confusion or mistake, to deceive, or to suggest falsely a
connection with the United States Olympic Committee or an Olympic
activity.
(b) On violation of Subsection (a), the United States Olympic
Committee is entitled to the remedies available to a registrant
on infringement of a mark registered under this chapter.
Added by Acts 1995, 74th Leg., ch. 113, Sec. 1, eff. Sept. 1,
1995.
Sec. 16.31. CRIMINAL PENALTY. (a) A person commits an offense
if the person knowingly or intentionally signs and presents or
causes to be presented for filing a document that may be or is
required to be filed under this chapter and that:
(1) indicates that the person signing the document has the
authority to act on behalf of an applicant or registrant when the
person is not authorized to act on behalf of the applicant or
registrant;
(2) contains a material false statement; or
(3) is forged.
(b) An offense under this section is a Class A misdemeanor
unless the actor's intent is to defraud or harm another, in which
event the offense is a state jail felony.
Added by Acts 1997, 75th Leg., ch. 248, Sec. 7, eff. Sept. 1,
1997.