Key points
- Federal registration gives nationwide priority, a presumption of validity and access to federal court. Texas registration offers state-level protection.
- Infringement turns on likelihood of confusion, which the Fifth Circuit assesses through its “digits of confusion.”
- Information is a trade secret only if you take reasonable measures to keep it secret, such as NDAs, access controls and policies.
- Speed matters: temporary restraining orders and injunctions are often the most valuable remedy in misappropriation cases.
Trademark services
- Clearance searches before you invest in a name or logo;
- Registration with the U.S. Patent and Trademark Office and the Texas Secretary of State, and responses to office actions;
- Monitoring and enforcement: cease-and-desist letters, marketplace and domain disputes, and infringement litigation;
- Defense against infringement and dilution claims; and
- Licensing and assignment agreements.
Issues that decide trademark cases
| Issue | What it means |
|---|---|
| Priority of use | Who used the mark first in commerce, and where. |
| Mark strength | Fanciful and arbitrary marks get broad protection. Descriptive marks need acquired distinctiveness. |
| Similarity and likelihood of confusion | Resemblance of the marks, similarity of products and channels, intent, and evidence of actual confusion. |
| Concurrent use in separate regions | When similar marks can coexist in different geographic markets. |
| Fair use | Descriptive or nominative uses that aren’t infringing. |
| Dilution (blurring and tarnishment) | Protection for famous marks, and under Texas law, marks famous in Texas, even without confusion. |
Trade secret protection
Trade secrets can include formulas, designs, processes, software, customer and pricing information, and business methods: any confidential information that gives you an economic advantage because competitors don’t know it. Unlike trademarks, trade secrets aren’t registered. Their protection depends on how you treat them. We help businesses:
- Draft and enforce non-disclosure agreements;
- Draft non-competition and non-solicitation agreements that meet Texas Business and Commerce Code § 15.50;
- Build onboarding and exit procedures that minimize information leaks;
- Avoid inadvertently acquiring a competitor’s trade secrets when hiring; and
- Pursue misappropriation claims under the Texas Uniform Trade Secrets Act and the federal Defend Trade Secrets Act.
A key employee just left for a competitor?
Preserve their devices and accounts, don’t wipe anything, and call us. Early injunctive relief is often the difference between protecting your customers and losing them. (346) 363-0334.
Litigation: enforcing and defending
We litigate trademark and trade secret disputes in Harris County district courts and the U.S. District Court for the Southern District of Texas. Remedies may include temporary restraining orders and injunctions, damages (including lost profits, unjust enrichment or a reasonable royalty), exemplary damages for willful and malicious misappropriation, and attorney’s fees in qualifying cases. We also defend businesses accused of infringement or of hiring away employees, frequently resolving claims early with a clear-eyed analysis of the merits. Related: business fraud and fiduciary duty.
Copyrights
We also advise on copyright ownership, registration and licensing for software, marketing content and creative works, including work-for-hire and assignment issues with contractors.