The secretary of state must cancel certain registrations when listed conditions are met, and may not cancel in one federal-registration exception.
Sec. 16.064. CANCELLATION OF REGISTRATION. (a) The secretary of state shall cancel a registration: (1) in force on August 31, 2012, that has not been renewed under Section 16.059; (2) on receipt of a voluntary request for cancellation from the registrant under this chapter or the registrant's assignee of record; (3) granted under this chapter and not renewed under Section 16.059; (4) with respect to which a court has rendered a judgment finding that: (A) the registered mark has been abandoned; (B) the registrant is not the owner of the mark; (C) the registration was granted improperly; (D) the registration was obtained fraudulently; (E) the registered mark is or has become the generic name for the goods or services, or part of the goods or services, in connection with which the mark was registered; (F) the registered mark is so similar, as to be likely to cause confusion or mistake or to deceive, to a mark that: (i) is registered by another person in the United States Patent and Trademark Office before the date the application for registration was filed under this chapter; and (ii) is not abandoned; or (G) the registration was canceled by order of a court on any ground; or (5) when a court of competent jurisdiction orders cancellation of a registration on any ground. (b) If a registrant's mark is considered for cancellation under Subsection (a)(4)(F) and the registrant proves that the registrant is the owner of a mark concurrently registered as a mark with the United States Patent and Trademark Office to cover a geographical area that includes a part of this state, the secretary of state may not cancel registration of the mark for the geographical area of this state covered by the federal registration. Amended by: Acts 2011, 82nd Leg., R.S., Ch. 563 (H.B. 3141), Sec. 1, eff. September 1, 2012.