H*3812 Session 110 (1993-1994)
H*3812(Rat #0573, Act #0486) General Bill, By Alexander, M.O. Alexander,
Bailey, J.J. Bailey, Cato, Gamble, S.E. Gonzales, Harrison, Harvin, M. McLeod,
Neilson, Richardson, Robinson, Simrill, R. Smith, Vaughn, L.S. Whipper and
D.A. Wright
Similar(S 453)
A Bill to amend Title 39, Chapter 15, Code of Laws of South Carolina, 1976,
relating to labels and trademarks, so as to enact the "Trademarks and Service
Marks Act of 1993" by adding Article 11 to include registration procedures,
fees, and civil and criminal penalties; to amend Section 39-15-720, relating
to use of trademarks on timber, so as to conform a reference to this Act; and
to repeal Article 3, Chapter 15, Title 39 relating to trademarks and service
marks.-amended title
03/31/93 House Introduced and read first time HJ-8
03/31/93 House Referred to Committee on Labor, Commerce and
Industry HJ-8
05/05/93 House Committee report: Favorable Labor, Commerce and
Industry HJ-3
05/13/93 House Read second time HJ-39
05/13/93 House Unanimous consent for third reading on next
legislative day HJ-40
05/14/93 House Read third time and sent to Senate HJ-2
05/17/93 Senate Introduced and read first time SJ-9
05/17/93 Senate Referred to Committee on Judiciary SJ-9
03/30/94 Senate Committee report: Favorable Judiciary SJ-22
04/26/94 Senate Special order SJ-65
04/28/94 Senate Amended SJ-62
04/28/94 Senate Read second time SJ-63
05/24/94 Senate Special order SJ-78
05/26/94 Senate Read third time and returned to House with
amendments SJ-118
06/01/94 House Concurred in Senate amendment and enrolled HJ-275
06/02/94 Ratified R 573
07/13/94 Signed By Governor
07/28/94 Effective date 07/13/94
07/28/94 See act for exception to or explanation of
effective date
07/28/94 Copies available
(A486, R573, H3812)
AN ACT TO AMEND TITLE 39, CHAPTER 15, CODE OF LAWS
OF SOUTH CAROLINA, 1976, RELATING TO LABELS AND
TRADEMARKS, SO AS TO ENACT THE "TRADEMARKS AND
SERVICE MARKS ACT OF 1993" BY ADDING ARTICLE 11 TO
INCLUDE REGISTRATION PROCEDURES, FEES, AND CIVIL AND
CRIMINAL PENALTIES; TO AMEND SECTION 39-15-720,
RELATING TO USE OF TRADEMARKS ON TIMBER, SO AS TO
CONFORM A REFERENCE TO THIS ACT; AND TO REPEAL
ARTICLE 3, CHAPTER 15, TITLE 39 RELATING TO TRADEMARKS
AND SERVICE MARKS.
Be it enacted by the General Assembly of the State of South Carolina:
Trademark and Services Marks Act
SECTION 1. Title 39, Chapter 15 of the 1976 Code is amended by
adding:
"Article 11
Trademarks and Service Marks
Section 39-15-1105. As used in this article:
(1) `Applicant' means the person filing an application for registration of
a mark under this article and the legal representatives, successors, or
assigns of that person.
(2) `Dilution' means the lessening of the capacity of a registrant's mark
to identify and distinguish goods or services, regardless of the presence or
absence of competition between the parties or the likelihood of confusion,
mistake, or deception.
(3) `Mark' includes a trademark or service mark entitled to registration
under this article whether registered or not.
(4) `Person' and any other word or term used to designate the applicant
or other party entitled to a benefit or privilege or rendered liable under the
provisions of this article includes a juristic person, as well as a natural
person. The term `juristic person' includes a firm, partnership, corporation,
union, association, or other organization capable of suing and being sued in
a court of law.
(5) `Registrant' means the person to whom the registration of a mark
under this article is issued and the legal representatives, successors, or
assigns of that person.
(6) `Secretary' means the Secretary of State or the designee of the
secretary charged with the administration of this article.
(7) `Service mark' means a word, name, symbol, or device or any
combination of these used by a person to identify and distinguish the
services of one person, including a unique service, from the services of
others and to indicate the source of the services, even if that source is
unknown. Titles, character names used by a person, and other distinctive
features of radio or television programs, motion pictures, newspapers, or
magazines may be registered as service marks notwithstanding that they or
the programs, may advertise the goods of the sponsor.
(8) `Trade name' means a name used by a person to identify a business
or vocation of that person.
(9) `Trademark' means a word, name, symbol, or device or any
combination of these used by a person to identify and distinguish the goods
of that person, including a unique product, from those manufactured and
sold by others and to indicate the source of the goods, even if that source is
unknown.
(10) `Use' means the bona fide use of a mark in the ordinary course of
trade and not made merely to reserve a right in a mark. For the purposes of
this article, a mark is considered in use:
(a) on goods when it is placed in any manner on the:
(i) goods or other containers or the displays associated with the
goods or containers;
(ii) tags or labels affixed to the goods or containers; or
(iii) if the nature of the goods makes placement impracticable, then
on documents associated with the goods or other sale and the goods are
sold or transported in commerce in this State; and
(b) on services when it is used or displayed in the sale or advertising
of services and the services are rendered in this State. For purposes of this
article, a mark is considered `abandoned' when:
(i) its use has been discontinued with intent not to resume that use.
Intent not to resume may be inferred from circumstances. Nonuse for two
consecutive years constitutes prima facie evidence of abandonment; or
(ii) a course of conduct of the owner, including acts of omission as
well as commission, causes the mark to lose its significance as a mark.
Section 39-15-1110. (A) A mark by which the goods or services of an
applicant for registration may be distinguished from the goods or services
of others may not be registered if the mark:
(1) consists of or includes immoral, deceptive, or scandalous
matter;
(2) consists of or includes matter which may disparage or falsely
suggest a connection with or bring into contempt or disrepute a person,
living or dead, an institution, belief, or national symbol;
(3) consists of or includes the flag or coat of arms or other insignia of
the United States, a state or municipality, or a foreign nation or a simulation
of the flag, coat of arms, or other insignia of any of these;
(4) consists of or includes the name, signature, or portrait identifying a
particular living individual, except by the individual's written consent;
(5) consists of a mark which:
(a) when used on or in connection with the goods or services of the
applicant is merely descriptive or deceptively misdescriptive of them;
(b) when used on or in connection with the goods or services of the
applicant is primarily geographically descriptive or deceptively
misdescriptive of them; or
(c) is primarily merely a proper name or surname;
(6) consists of or includes a mark which so resembles a mark
registered in this State or a mark or trade name previously used by another
and not abandoned as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion or mistake or to
deceive.
(B) However, nothing in subsection (A)(5) prevents the registration of a
mark used by the applicant which has become distinctive of the applicant's
goods or services. The secretary may accept as evidence that the mark has
become distinctive, as used on or in connection with the applicant's goods
or services, by proof of continuous use as a mark by the applicant in this
State for the five years before the date on which the claim of distinctiveness
is made.
Section 39-15-1115. (A) Subject to the limitations set forth in this
article, a person who uses a mark may file in the office of the secretary, in a
manner complying with the requirements of the secretary, an application
for registration of that mark setting forth, but not limited to, this
information:
(1) the name and business address of the person applying for the
registration; and if a corporation, the state of incorporation or if a
partnership, the state in which the partnership is organized and the names
of the general partners, as specified by the secretary;
(2) the goods or services on or in connection with which the mark is
used, the mode or manner in which the mark is used on or in connection
with these goods or services, and the class in which these goods or services
fall;
(3) the date when the mark was first used anywhere and the date when
it was first used in this State by the applicant or a predecessor in
interest;
(4) a statement that the applicant is the owner of the mark, that the
mark is in use, and that to the knowledge of the person verifying the
application no other person has registered either federally or in this State,
or has the right to use this mark in its identical form or in near resemblance
as to be likely, when applied to the goods or services of another person, to
cause confusion or to cause mistake or to deceive.
(B) The secretary may also require a statement whether an application
to register the mark or portions or a composite of the mark has been filed
by the applicant or a predecessor in interest in the United States Patent and
Trademark Office; and if so, the applicant shall provide full particulars
including the filing date and serial number of each application, the status of
the application, and if an application was finally refused registration or has
otherwise not resulted in a registration, the reasons for this.
(C) The secretary also may require that a drawing of the mark,
complying with requirements as the secretary may specify, accompany the
application.
(D) The application must be signed and verified by oath, affirmation, or
declaration subject to perjury laws by the applicant or by a member of the
firm or an officer of the corporation or association applying.
(E) The application must be accompanied by three specimens showing
the mark as actually used and accompanied by the application fee payable
to the Secretary of State.
Section 39-15-1120. (A) Upon the filing of an application for
registration and payment of the application fee, the secretary may examine
the application for conformity with this article.
(B) The applicant shall provide additional pertinent information
requested by the secretary including a description of a design mark and
may make or authorize the secretary to make amendments to the application
as may be reasonably requested by the secretary or considered by the
applicant to be advisable to respond to a rejection or objection.
(C) The secretary may require the applicant to disclaim an
unregisterable component of a mark otherwise registerable, and an
applicant may voluntarily disclaim a component of a mark sought to be
registered. No disclaimer may prejudice or affect the applicant's or
registrant's rights then existing or thereafter arising in the disclaimed matter
or the applicant's or registrant's rights of registration on another application
if the disclaimed matter is or becomes distinctive of the applicant's or
registrant's goods or services.
(D) Amendments may be made by the secretary to the application
submitted by the applicant with the applicant's consent, or the secretary
may require that the applicant submit a fresh application.
(E) If the applicant is found not to be entitled to registration, the
secretary shall notify the applicant of this and of the reasons registration
was denied. The applicant must be given a reasonable period of time
specified by the secretary in which to reply or to amend the application,
after which the application must be reexamined. This procedure may be
repeated until the secretary finally refuses registration of the mark or the
applicant fails to reply or amend within the specified period, at which time
the application is deemed to have been abandoned.
(F) If the secretary finally refuses registration of the mark, the applicant
may appeal the decision to the circuit court in Richland County in
accordance with the Administrative Procedures Act without costs to the
secretary.
(G) In the instance of applications concurrently being processed by the
secretary seeking registration of the same or confusingly similar marks for
the same or related goods or services, the secretary shall grant priority to
the applications in order of filing. If a prior-filed application is granted a
registration, the other application or applications must be rejected. A
rejected applicant may bring an action for cancellation of the registration
upon grounds of prior or superior rights to the mark in accordance with
Section 39-15-1145 of this article.
Section 39-15-1125. (A) Upon compliance by the applicant with the
requirements of this article, the secretary shall issue a certificate of
registration to the applicant under the signature of the secretary and the seal
of the State. The certificate shall show the name and business address and
if a corporation, the state of incorporation or if a partnership, the state in
which the partnership is organized and the names of the general partners, as
specified by the secretary, of the person claiming ownership of the mark,
the date claimed for the first use of the mark anywhere, the date claimed for
the first use of the mark in this State, the class of goods or services, a
description of the goods or services on or in connection with which the
mark is used, a reproduction of the mark, the registration date, and the term
of the registration.
(B) A certificate of registration issued by the secretary under this
section or a copy of a certificate certified by the secretary is admissible in
evidence as competent and sufficient proof of the registration of the mark
in an action or judicial proceeding in any court of this State.
Section 39-15-1130. (A) A registration of a mark is effective for five
years from the date of registration, and upon application filed within six
months before the expiration of the registration in a manner complying with
the requirements of the secretary, the registration may be renewed for five
years. A renewal fee payable to the secretary shall accompany the
application for renewal of the registration. A registration may be renewed
for successive periods of five years as provided for in this subsection.
(B) An application for renewal under this article, whether of a
registration made under this article or of a registration effected under any
prior law, shall include a verified statement that the mark has been and is
still in use and a specimen showing actual use of the mark on or in
connection with the goods or services.
Section 39-15-1135. (A) A mark and its registration under this article
is assignable with the good will of the business in which the mark is used
or with that part of the good will of the business connected with the use of
and symbolized by the mark. Assignment is by instruments in writing
properly executed and may be recorded with the secretary upon the
payment of the recording fee payable to the secretary who upon recording
of the assignment shall issue in the name of the assignee a new certificate
for the remainder of the term of the registration or of the last renewal of the
registration. An assignment of a registration under this article is void
against a subsequent purchaser for valuable consideration without notice,
unless it is recorded with the secretary within three months after the date of
the assignment or before the subsequent purchase.
(B) A registrant or applicant effecting a change of the name of the
person to whom the mark was issued or for whom an application was filed
may record a certificate of change of name of the registrant or applicant
with the secretary upon payment of the recording fee. The secretary may
issue in the name of the assignee a certificate of registration of an assigned
application. The secretary may issue in the name of the assignee a new
certificate or registration for the remainder of the term of the registration or
last renewal of the registration.
(C) Other instruments which relate to a mark registered or application
pending pursuant to this article including, but not limited to, licenses,
security interests, or mortgages, may be recorded in the discretion of the
secretary if the instrument is in writing and properly executed.
(D) Acknowledgement is prima facie evidence of the execution of an
assignment or other instrument, and when recorded by the secretary, the
record is prima facie evidence of execution.
(E) A photocopy of an instrument referred to in subsections (A), (B), or
(C) must be accepted for recording if it is certified to be a true and correct
copy of the original by a party to the instrument or their successors.
Section 39-15-1140. The secretary shall keep for public examination a
record of all marks registered or renewed under this article and a record of
all documents recorded pursuant to Section 39-15-1135.
Section 39-15-1145. The secretary shall cancel from the register, in
whole or in part:
(1) a registration concerning which the secretary receives a voluntary
request for cancellation of it from the registrant or the assignee of
record;
(2) a registration granted under this article and not renewed in
accordance with this article;
(3) a registration concerning which a court of competent jurisdiction
finds that the:
(a) registered mark has been abandoned;
(b) registrant is not the owner of the mark;
(c) registration was granted improperly;
(d) registration was obtained fraudulently;
(e) mark is or has become the generic name for the goods or services
or a portion of the goods or services for which it has been registered;
(f) registered mark is so similar, as to be likely to cause confusion or
mistake or to deceive, to a mark registered by another person in the United
States Patent and Trademark Office before the date of the filing of the
application for registration by the registrant under this article, and not
abandoned; however, if the registrant proves that the registrant is the owner
of a concurrent registration of a mark in the United States Patent and
Trademark Office covering an area including this State, the registration
under this article may not be canceled for that area of the State; or
(4) a registration when a court of competent jurisdiction orders
cancellation of the registration on any ground.
Section 39-15-1150. (A) The general classification of goods and
services provided for in subsections (B) and (C) are established for
convenience of administration of this article but does not limit or extend the
applicant's or registrant's rights, and a single application for registration of a
mark may include goods upon which or services with which the mark is
actually being used indicating the appropriate class or classes of goods or
services. When a single application includes goods or services which fall
within multiple classes, the secretary may require payment of a fee for each
class. To the extent practical the classification of goods and services shall
conform to the classification adopted by the United States Patent and
Trademark Office.
(B) The following is the international schedule of classes of goods:
(1) chemical products used in industry, science, photography,
agriculture, horticulture, forestry; artificial and synthetic resins; plastics in
the form of powders, liquids, or pastes for industrial use; manures (natural
and artificial); fire extinguishing compositions; tempering substances and
chemical preparations for soldering; chemical substances for preserving
foodstuffs, tanning substances, adhesive substances used in industry;
(2) paints, varnishes, lacquers; preservatives against rust and against
deterioration of wood, coloring matters, dyestuffs, mordants, natural resins;
metals in foil and powder form for painters and decorators;
(3) bleaching preparations and other substances for laundry use,
cleaning, polishing, scouring and abrasive preparations, soaps; perfumery,
essential oils, cosmetics, hair lotions; dentifrices;
(4) industrial oils and greases (other than oils and fats and essential
oils); lubricants; dust laying and absorbing compositions; fuels (including
motor spirit) and illuminants; candles, tapers, night lights, and wicks;
(5) pharmaceutical, veterinary, and sanitary substances; infants' and
invalids' foods; plasters, material for bandaging; material for stopping teeth,
dental wax, disinfectants; preparations for killing weeds and destroying
vermin;
(6) unwrought and partly wrought common metals and their alloys,
anchors, anvils, bells, rolled and cast building materials, rails and other
metallic materials for railway tracks, chains (except driving chains for
vehicles), cables and wires (nonelectric), locksmiths' work; metallic pipes
and tubes; safes and cash boxes, steel balls; horseshoes; nails and screws;
other goods in nonprecious metal not included in other classes; ores;
(7) machines and machine tolls; motors (except for land vehicles);
machine couplings and belting (except for land vehicles); large size
agricultural implements; incubators;
(8) hand tools and instruments; cutlery, forks, and spoons; side
arms;
(9) scientific, nautical, surveying and electrical apparatus and
instruments (including wireless), photographic, cinematographic, optical,
weighing, measuring, signaling, checking (supervision), life-saving and
teaching apparatus and instruments; coin or counterfreed apparatus; talking
machines; cash registers; calculating machines; fire extinguishing
apparatus;
(10) surgical, medical, dental, and veterinary instruments and
apparatus (including artificial limbs, eyes and teeth);
(11) installations for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply, and sanitary purposes;
(12) vehicles; apparatus for locomotion by land, air, or water;
(13) firearms; ammunition and projectiles; explosive substances;
fireworks;
(14) precious metals and their alloys and goods in precious metals or
coated therewith (except cutlery, forks, and spoons); jewelry, precious
stones, horological and other chronometric instruments;
(15) musical instruments (other than talking machines and wireless
apparatus);
(16) paper and paper articles, cardboard and cardboard articles;
printed matter, newspaper and periodicals, books; bookbinding material;
photographs; stationery, adhesive materials (stationery); artists' materials;
paint brushes; typewriters and office requisites (other than furniture);
instructional and teaching material (other than apparatus); playing cards;
printers' type and cliches (stereotype);
(17) gutta percha, india rubber, balata and substitutes, articles made
from these substances and not included in other classes; plastics in the form
of sheets, blocks and rods, being for use in manufacture, materials for
packing, stopping, or insulating; asbestos, mica and their products; hose
pipes (nonmetallic);
(18) leather and imitations of leather, and articles made from these
materials and not included in other classes; skins, hides; trunks and
traveling bags; umbrellas, parasols and walking sticks; whips, harness and
saddlery;
(19) building materials, natural and artificial stone, cement, lime,
mortar, plaster and gravel; pipes of earthenware or cement; roadmaking
materials; asphalt, pitch and bitumen, portable buildings; stone monuments;
chimney pots;
(20) furniture, mirrors, picture frames; articles (not included in other
classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone,
shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all
these materials, or of plastics;
(21) small domestic utensils and containers (not of precious metals, or
coated therewith); combs and sponges, brushes (other than paint brushes);
brushmaking materials, instruments and material for cleaning purposes,
steel wool; unworked or semi-worked glass (excluding glass used in
building); glassware, porcelain and earthenware, not included in other
classes;
(22) ropes, string, nets, tents, awnings, tarpaulins, sails, sacks,
padding and stuffing materials (hair, kapok, feathers, seaweed, etc.); raw
fibrous textile materials;
(23) yarns, threads;
(24) tissues (piece goods); bed and table covers; textile articles not
included in other classes;
(25) clothing (including boots, shoes, and slippers);
(26) lace and embroidery, ribands, and braid; buttons, press buttons,
hooks and dyes, pins and needles; artificial flowers;
(27) carpets, rugs, mats, and matting; linoleum and other materials for
covering existing floors; wall hangings (nontextile); (28) games and playthings; gymnastic and sporting articles (except
clothing); ornaments and decorations for Christmas trees;
(29) meats, fish, poultry, and game; meat extracts; preserved, dried,
and cooked fruits and vegetables; jellies, jams; eggs, milk, and other dairy
products; edible oils and fats; preserves, pickles;
(30) coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes;
flour and preparations made from cereals; bread, biscuits, cakes, pastry, and
confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard,
pepper, vinegar, sauces, spices; ice;
(31) agricultural, horticultural, and forestry products and grains not
included in other classes; living animals; fresh fruits and vegetables; seeds;
live plants and flowers; foodstuffs for animals, malt;
(32) beer, ale, and porter; mineral and aerated waters and other
nonalcoholic drinks; syrups and other preparations for making
beverages;
(33) wines, spirits, and liqueurs;
(34) tobacco, raw, or manufactures; smokers' articles; matches.
(C) The following is the international schedule of classes of
services:
(1) advertising and business;
(2) insurance and financial;
(3) construction and repair;
(4) communication;
(5) transportation and storage;
(6) material treatment;
(7) education and entertainment;
(8) miscellaneous.
Section 39-15-1155. A person who procures or who on behalf of
another person procures the filing or registration of a mark in the office of
the secretary under the provisions of this article by knowingly making a
false or fraudulent representation or declaration orally, in writing, or by any
other fraudulent means is liable to pay all damages sustained in
consequence of the filing or registration to be recovered in a court of
competent jurisdiction by or on behalf of the party injured.
Section 39-15-1160. (A) Subject to Section 39-15-1180 and subsection
(B) of this section, a person is liable in a civil action by the registrant for
the remedies provided in Section 39-15-1170 if the person:
(1) uses without the consent of the registrant a reproduction,
counterfeit, copy, or colorable imitation of a mark registered under this
article in connection with the sale, distribution, offering for sale, or
advertising of goods or services on or in connection with which this use is
likely to cause confusion or mistake or to deceive as to the source of origin
of these goods or services; or
(2) reproduces, counterfeits, copies, or colorably imitates a mark and
applies the reproduction, counterfeit, copy, or colorable imitation to a label,
sign, print, package wrapper, receptacle, or advertisement intended to be
used on or in connection with the sale or other distribution in this State of
these goods or services.
(B) Notwithstanding subsection (A) a person liable under subsection
(A)(2) is not entitled to recover profits or damages unless the acts have
been committed with the intent to cause confusion or mistake or to
deceive.
Section 39-15-1165. (A) The owner of a mark which is famous in this
State is entitled, subject to the principles of equity, to an injunction against
another's use of a mark commencing after the registrant's mark becomes
famous which causes dilution of the distinctive quality of the registrant's
mark and to obtain other relief as is provided in this section. In
determining whether a mark is famous, a court may consider, but is not
limited to considering, these factors:
(1) the degree of inherent or acquired distinctiveness of the mark in
this State;
(2) the duration and extent of use of the mark in connection with the
goods and services;
(3) the duration and extent of advertising and publicity of the mark in
this State;
(4) the geographical extent of the trading area in which the mark is
used;
(5) the channels of trade for the goods or services with which the
registrant's mark is used;
(6) the degree of recognition of the registrant's mark in its and in the
other's trading areas and channels of trade in this State; and
(7) the nature and extent of use of the same or similar mark by third
parties.
(B) The registrant is entitled only to injunctive relief in this State in an
action brought under this section unless the subsequent user wilfully
intended to trade on the registrant's reputation or to cause dilution of the
owner's mark. If wilful intent is proven, the owner is entitled to the
remedies set forth in this article, subject to the discretion of the court and
the principles of equity.
Section 39-15-1170. (A) An owner of a mark registered under this
article may bring an action to enjoin the manufacture, use, display, or sale
of a counterfeit or imitation of the registered mark, and a court of
competent jurisdiction may grant an injunction to restrain the manufacture,
use, display, or sale as the court considers just and reasonable and may
require a defendant to pay the owner profits derived from or damages
suffered due to the wrongful manufacture, use, display, or sale or to pay
both profits and damages. The court also may order that the counterfeit or
imitation in the possession or under the control of a defendant be delivered
to an officer of the court or to the complainant to be destroyed. The court
in its discretion may enter judgment for an amount not to exceed three
times the profits and damages or reasonable attorneys' fees of the prevailing
party, or both, in cases where the court finds the other party committed the
wrongful acts with knowledge or in bad faith or otherwise according to the
circumstances of the case.
(B) The enumeration of a right or remedy in this article does not affect a
registrant's right to prosecute under any penal law of this State.
Section 39-15-1175. (A) An action to require cancellation of a mark
registered pursuant to this article or an appeal from a refusal of the
secretary to register a mark pursuant to this article must be brought in the
circuit court. In an appeal the proceeding must be based solely upon the
record before the secretary. In an action for cancellation the secretary may
not be made a party to the proceeding but must be notified of the filing of
the complaint by the clerk of the court in the county in which it is filed and
must be given the right to intervene in the action.
(B) In an action brought against a nonresident registrant, service may be
effected upon the secretary as agent for service of the registrant in
accordance with the procedures established for service upon nonresident
corporations and business entities under the Rules of Civil Procedure.
Section 39-15-1180. Nothing in this article may adversely affect the
rights or the enforcement of rights in marks acquired in good faith at any
time at common law.
Section 39-15-1185. The secretary shall charge a fee of fifteen dollars
for an original application, a fee of five dollars for a renewal application,
and a fee of three dollars for recording an assignment. The fees payable
under this article are not refundable.
Section 39-15-1190. (A) Whoever intentionally traffics or attempts to
traffic in goods or services and knowingly uses or should have known a
counterfeit mark on or in connection with such goods or services shall be
deemed guilty of a misdemeanor, if an individual, be fined not more than
five thousand dollars or imprisoned not more than one year, or both, and, if
a person other than an individual, be fined not more than twenty thousand
dollars.
(B) The term `counterfeit mark' in this section means:
(1) a spurious mark:
(a) that is used in connection with trafficking goods or services;
(b) that is identical with, or substantially indistinguishable from, a
mark registered for those goods or services with the Secretary of State
under this chapter and in use, whether or not the defendant knew such mark
was so registered; and
(c) the use of which is likely to cause confusion, to cause mistake, or
to deceive.
(2) `Counterfeit mark' does not include any mark or designation used
in connection with goods or services of which the manufacturer or producer
was, at the time of the manufacture or production in question, authorized to
use the mark for designation for the type of goods or services so
manufactured or produced, by the holder of the right to use such mark or
designation.
(C) `Traffic' means transport, transfer, or otherwise dispose of, to
another, as consideration for anything of value, or make or obtain control of
with intent so to transport, transfer, or dispose of."
Timber trademark registration constitutes a
"brand"
SECTION 2. Section 39-15-720 of the 1976 Code is amended to read:
"Section 39-15-720. A person who has adopted or used a label,
trademark, term, design, or device and has obtained a registration for it
pursuant to Article 11 of this chapter may use it to mark and identify timber
and when the label, trademark, term, design, or device is stamped,
impressed, or indented on timber it constitutes a `brand' within the meaning
of this article and is notice to the world that the owner of the brand is the
owner of or has some property right or interest in the timber or lien on the
timber, as set forth in this article."
Grandparenting of current trademark registration
SECTION 3. A registration in force on this article's effective date
continues in full force and effect for the unexpired term of the registration
and may be renewed by filing an application for renewal with the secretary
complying with the requirements of the secretary and paying the renewal
fee as provided for in Section 39-15-1130(A) within six months before the
expiration of the registration.
Consistency with federal trademark law intended
SECTION 4. The intent of this act is to provide a system of state
trademark registration and protection substantially consistent with the
federal system of trademark registration and protection under the
Trademark Act of 1946, as amended. To that end, the construction given
the federal act should be examined as persuasive authority for interpreting
and construing this act.
Article repealed; exception
SECTION 5. Article 3, Chapter 15, Title 39 of the 1976 Code is repealed;
however, Article 3 is deemed not repealed and is applicable to a pending
application, suit, proceeding, or appeal for that purpose only until the
application, suit, proceeding, or appeal is finally concluded.
Time effective
SECTION 6. This act takes effect three months after approval by the
Governor but is not applicable to an application, suit, proceeding, or appeal
then pending for that purpose only.
Approved the 13th day of July, 1994. |