Introduced Version
SENATE BILL No. 313
_____
DIGEST OF INTRODUCED BILL
Citations Affected: IC 24-2-1.
Synopsis: Trademarks. Establishes that a color mark, scent mark,
flavor mark, sound mark, or three dimensional mark may be registered
under the state registration system if the mark meets certain conditions.
Provides that: (1) a person may file an application to register a
trademark or service mark if the person has a bona fide intention to use
the mark and if certain requirements are met; and (2) a court may
award attorney's fees to a prevailing party in an action concerning
marks. Removes the provisions concerning trade names from the
trademark law. Eliminates the authority of the secretary of state to
require a person applying for registration of a mark to provide
information on whether an application to register the mark has been
filed in the United States Patent and Trademark Office.
Effective: July 1, 2007.
Ford
January 11, 2007, read first time and referred to Committee on Economic Development
and Technology.
Introduced
First Regular Session 115th General Assembly (2007)
PRINTING CODE. Amendments: Whenever an existing statute (or a section of the Indiana
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SENATE BILL No. 313
A BILL FOR AN ACT to amend the Indiana Code concerning trade
regulation.
Be it enacted by the General Assembly of the State of Indiana:
SOURCE: IC 24-2-1-2; (07)IN0313.1.1. -->
SECTION 1. IC 24-2-1-2, AS AMENDED BY P.L.135-2006,
SECTION 2, IS AMENDED TO READ AS FOLLOWS [EFFECTIVE
JULY 1, 2007]: Sec. 2. The following definitions apply throughout this
chapter:
(1) "Abandoned" means either of the following:
(A) The person who owns the mark has discontinued use of the
mark and does not intend to resume use of the mark. A
person's intent not to resume use of the mark may be inferred
from the circumstances. Three (3) consecutive years without
use of a mark constitutes prima facie evidence that the use of
the mark has been abandoned.
(B) The conduct of the owner, including an act or omission,
has caused the mark to lose its significance as a mark.
(2) "Applicant" means a person who files an application for
registration of a mark under this chapter and the legal
representatives, successors, or assigns of the person.
(3) "Dilution" means the lessening of the capacity of a famous
mark to identify and distinguish goods or services, regardless of
the presence or absence of:
(A) competition between the owner of the famous mark and
other parties; or
(B) the likelihood of confusion, mistake, or deception.
(4) "Mark" means a trademark or service mark that is entitled to
registration under this chapter, whether the mark is registered or
not.
(5) "Person" means:
(A) a human being;
(B) a corporation;
(C) a partnership;
(D) a limited liability company; or
(E) any other entity or organization:
(i) capable of suing and being sued in a court of law;
(ii) entitled to a benefit or privilege under this chapter; or
(iii) rendered liable under this chapter.
(6) "Prevailing party" means:
(A) a plaintiff that has succeeded in obtaining a decision on
the merits or a court ordered decree on a significant claim
in an action that affords the plaintiff some form of relief
sought by the plaintiff in bringing the action; or
(B) a party that has succeeded in obtaining a decision by
the court that the other party:
(i) brought or pursued a frivolous, unreasonable, or
groundless claim or defense; or
(ii) litigated an action in bad faith.
(6) (7) "Registrant" means a person to whom the registration of a
mark under this chapter is issued and the legal representatives,
successors, or assigns of the person.
(7) (8) "Secretary" means the secretary of state or the designee of
the secretary charged with the administration of this chapter.
(8) (9) "Service mark" means a word, name, symbol, device, or
combination of a word, name, symbol, or device that is used by a
person, or which the person has a bona fide intention to use,
to:
(A) identify a service, including a unique service, of a person
and distinguish the person's service from the service of another
person; and
(B) indicate the source of a service, even if the source is
unknown.
Titles and character names and other distinctive features of radio
or television programs used by a person may be registered as a
service mark even though the radio or television programs may
advertise the goods of the sponsor.
(9) (10) "Trademark" means any word, name, symbol, or device
or any combination of a word, name, symbol, or device that is
used by a person, or which the person has a bona fide intention
to use, to:
(A) identify and distinguish goods, including a unique product,
of a person and distinguish the person's goods from goods
manufactured or sold by another person; and
(B) indicate the source of the goods, even if the source is
unknown.
(10) "Trade name" means a name used by a person to identify a
business or vocation of the person.
(11) "Use" means the bona fide use of a mark in the ordinary
course of trade and not a use made merely to reserve a right in a
mark. A mark is considered to be in use:
(A) on or in connection with a good if the:
(i) mark is placed in any manner on the good, a container for
the good, a display associated with the good, or a tag or label
affixed to the good; or
(ii) nature of the good makes placement of the mark as
described in item (i) impracticable and the mark is placed on
a document associated with the good or with the sale of the
good; and
(B) if the good described in clause (A) is sold or transported
in Indiana.
A mark is considered to be in use on or in connection with a
service if the mark is used or displayed in the sale or advertising
of the service and the service is rendered in Indiana.
SOURCE: IC 24-2-1-3; (07)IN0313.1.2. -->
SECTION 2. IC 24-2-1-3, AS AMENDED BY P.L.135-2006,
SECTION 3, IS AMENDED TO READ AS FOLLOWS [EFFECTIVE
JULY 1, 2007]: Sec. 3. A mark by which the goods or services of an
applicant may be distinguished from other goods or services may not
be registered if the mark:
(1) consists of or comprises immoral, deceptive, or scandalous
matter;
(2) consists of or comprises matter that may:
(A) disparage or falsely suggest a connection with:
(i) persons living or dead;
(ii) institutions;
(iii) beliefs; or
(iv) national symbols; or
(B) bring into contempt or disrepute:
(i) persons living or dead;
(ii) institutions;
(iii) beliefs; or
(iv) national symbols;
(3) consists of or comprises the flag, coat of arms, or other
insignia of:
(A) the United States;
(B) a state or municipality;
(C) the United Nations; or
(D) a foreign nation;
(4) consists of or comprises the name, signature, or portrait
identifying a particular living individual, unless the individual
provides written consent; or
(5) is a mark that:
(A) if used on or in connection with the goods or services of
the applicant, is merely descriptive or deceptively
misdescriptive of the goods or services;
(B) if used on or in connection with the goods or services of
the applicant, is primarily geographically descriptive or
deceptively geographically misdescriptive of the goods or
services; or
(C) is primarily merely a surname.
This subdivision does not prevent the registration of a mark that
is used in Indiana by the applicant and has become distinctive of
the applicant's goods or services. The secretary may accept proof
of continuous use of a mark by the applicant in Indiana for the
five (5) years immediately preceding the date on which the claim
of distinctiveness is made as evidence that the mark has become
distinctive, as used on or in connection with the applicant's goods
or services; or
(6) is a mark that so resembles a mark registered in Indiana or a
mark or trade name previously used by another person in Indiana
and not abandoned, as to be likely, if used on or in connection
with the goods or services of the applicant, to cause deception,
confusion, or mistake.
SOURCE: IC 24-2-1-3.5; (07)IN0313.1.3. -->
SECTION 3. IC 24-2-1-3.5 IS ADDED TO THE INDIANA CODE
AS A NEW SECTION TO READ AS FOLLOWS [EFFECTIVE JULY
1, 2007]: Sec. 3.5. (a) A color mark, scent mark, flavor mark, sound
mark, or three dimensional mark may be registered if the mark:
(1) functions as a trademark;
(2) is not functional; and
(3) has become a distinctive mark of the applicant's goods or
services.
(b) For purposes of subsection (a)(3), the secretary may accept
proof of continuous use of a mark by the applicant in Indiana for
the five (5) years immediately preceding the date on which the
claim of distinctiveness is made as evidence that the mark has
become distinctive, as used on or in connection with the applicant's
goods or services.
SOURCE: IC 24-2-1-4; (07)IN0313.1.4. -->
SECTION 4. IC 24-2-1-4, AS AMENDED BY P.L.135-2006,
SECTION 4, IS AMENDED TO READ AS FOLLOWS [EFFECTIVE
JULY 1, 2007]: Sec. 4. (a) Subject to the limitations of this chapter, a
person who uses a mark in Indiana may file in the office of the
secretary, in a manner that complies with the requirements of the
secretary, an application for registration of the mark. The application
must
be accompanied by three (3) specimens showing actual use of
the mark and must include the following information:
(1) The name and business address of the person applying for
registration of the mark, and:
(A) if the applicant is a corporation, the state of incorporation;
(B) if the applicant is a partnership, the:
(i) state in which the partnership is organized; and
(ii) names of the general partners, as specified by the
secretary; or
(C) if the applicant is another form of legal entity, the
jurisdiction in which the legal entity was organized.
(2) The:
(A) goods or services on or in connection with which the mark
is used;
(B) mode or manner in which the mark is used on or in
connection with the goods or services; and
(C) class in which the goods or services fall.
(3) The date on which the mark was first used anywhere and the
date on which the mark was first used in Indiana by the applicant
or the applicant's predecessor in business.
(4) A statement that:
(A) the applicant is the owner of the mark;
(B) the mark is in use; and
(C) to the knowledge of the person verifying the application,
another person:
(i) has not registered the mark, either federally or in Indiana;
or
(ii) does not have the right to use the mark either in the
identical form or in such near resemblance to the form as to
be likely, if applied to the goods or services of the other
person, to cause deception, confusion, or mistake.
(b) Subject to the limitations of this chapter, a person who has
a bona fide intention, under circumstances showing the good faith
of the person, to use a trademark or service mark in Indiana may
file in the office of the secretary, in a manner that complies with
the requirements of the secretary, an application for registration
of the trademark or service mark. The application must include the
following information:
(1) The name and business address of the person applying for
registration of the trademark or service mark and:
(A) if the applicant is a corporation, the state of
incorporation;
(B) if the applicant is a partnership, the:
(i) state in which the partnership is organized; and
(ii) names of the general partners, as specified by the
secretary; or
(C) if the applicant is a legal entity of another form, the
jurisdiction in which the legal entity was organized.
(2) The:
(A) goods or services on or in connection with which the
mark is intended to be used;
(B) mode or manner in which the mark is intended to be
used on or in connection with the goods or services; and
(C) class into which the goods or services fall.
(3) A statement that:
(A) the applicant is entitled to use the mark in Indiana;
(B) the applicant has a bona fide intention to use the mark
in Indiana; and
(C) to the knowledge of the person verifying the
application, no other person;
(i) has registered the mark, either federally or in
Indiana; or
(ii) has the right to use the mark either in the identical
form or in such a near resemblance to the form as to be
likely, if applied to the goods or services of the other
person, to cause deception, confusion, or mistake.
Subject to the limitations of this chapter and the ultimate issuance
of a registration for the mark, an application filed under this
subsection establishes constructive use priority rights of the mark
throughout Indiana. However, a mark may not be registered under
this subsection unless the applicant meets the requirements set
forth in subsection (c).
(c) An applicant who filed an application for registration of a
trademark or service mark under subsection (b) shall, not later
than one (1) year after the date the application is filed under
subsection (b), file in the office of the secretary:
(1) a verified statement that the mark is in use in Indiana; and
(2) a statement that specifies:
(A) the date on which the mark was first used anywhere;
and
(B) the date on which the mark was first used in Indiana;
and
(3) three (3) specimens showing actual use of the mark.
If the applicant does not make a filing under this subsection within
one (1) year after the date on which the application was filed, the
secretary shall issue a final order refusing registration of the mark.
(b) (d) The secretary may also require on an application
(1) a statement indicating whether an application to register a
mark, parts of a mark, or a composite of a mark, has been filed by
the applicant or a predecessor in the interest of the applicant in
the United States Patent and Trademark Office. If an application
has previously been filed in the United States Patent and
Trademark Office, the applicant must provide full particulars with
respect to the previous application, including the:
(A) filing date and serial number of each application;
(B) status of each application; and
(C) reason or reasons for the refusal of the application or the
nonregistration of the mark if an application to register the
mark was finally refused registration or if an application to
register the mark has not resulted in a registration; and
(2) a drawing of the mark that complies with the requirements of
the secretary.
(c) (e) The application must be signed and verified under oath,
affirmation, or declaration subject to perjury laws by:
(1) the applicant;
(2) a member of the applicant firm or applicant limited liability
company; or
(3) an officer of the applicant corporation, association, or other
form of legal entity.
The application must be accompanied by three (3) specimens showing
actual use of the mark.
(f) The application must be accompanied by an application fee
payable to the secretary.
SOURCE: IC 24-2-1-13.5; (07)IN0313.1.5. -->
SECTION 5. IC 24-2-1-13.5, AS ADDED BY P.L.135-2006,
SECTION 16, IS AMENDED TO READ AS FOLLOWS [EFFECTIVE
JULY 1, 2007]: Sec. 13.5. (a) This section applies only to fanciful
marks, except in cases where the other person's use tarnishes the
reputation of the famous mark.
(b) An owner of a mark that is famous in Indiana is entitled, subject
to the principles of equity and terms a court considers reasonable, to an
injunction against another person's commercial use of the mark
or trade
name if the other person's use begins after the mark has become famous
and the other person's use causes dilution of the distinctive quality of
the mark, and to other relief provided in this section. In determining
whether a mark is distinctive and famous, a court may consider factors
such as:
(1) the degree of inherent or acquired distinctiveness of the mark
in Indiana;
(2) the duration and extent of use of the mark in connection with
the goods or services with which the mark is used;
(3) the duration and extent of advertising and publicity of the
mark in Indiana;
(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
mark is used;
(6) the degree of recognition of the mark in the trading areas and
channels of trade in Indiana as it relates to the use of the mark by
the:
(A) mark's owner; and
(B) person against whom the injunction is sought;
(7) the nature and extent of use of the same or a similar mark by
a third party; and
(8) whether the mark is the subject of a:
(A) registration in Indiana;
(B) federal registration under the Act of March 3, 1881;
(C) federal registration under the Act of February 20, 1905; or
(D) registration on the principal register.
(c) In an action brought under this section, the owner of a famous
mark is entitled only to injunctive relief unless the person against
whom the injunctive relief is sought willfully intended to trade on the
owner's reputation or to cause dilution of the famous mark. If willful
intent is proven, the owner of the famous mark is entitled to the other
remedies set forth in this section, subject to the discretion of the court
and the principles of equity.
(d) A court may require a defendant to pay to the owner of a mark
all profits derived from and damages suffered by reason of the use of
the mark in violation of this section. and, in exceptional cases, may
award reasonable attorney's fees to the prevailing party.
(e) A court may award reasonable attorney's fees to the
prevailing party as a result of an action brought under this section.
(e) (f) The following are not actionable under this section:
(1) Fair use of a famous mark by another person in comparative
commercial advertising or promotion to identify the competing
goods or services of the owner of the famous mark.
(2) Noncommercial use of the mark.
(3) All forms of news reporting and news commentary.
SOURCE: IC 24-2-1-14; (07)IN0313.1.6. -->
SECTION 6. IC 24-2-1-14, AS AMENDED BY P.L.135-2006,
SECTION 17, IS AMENDED TO READ AS FOLLOWS [EFFECTIVE
JULY 1, 2007]: Sec. 14. (a) An owner of a mark registered under this
chapter may bring an action to enjoin the use of any mark in violation
of section 13 of this chapter and the manufacture, display, or sale of
any goods or services identified by the mark and a court of competent
jurisdiction may grant an injunction to restrain the use of the mark and
the manufacture, display, or sale of the goods or services as the court
considers just and reasonable.
(b) A court may:
(1) require a defendant to pay to the owner of a mark all:
(A) profits derived from; and
(B) damages suffered by reason of; the wrongful manufacture,
display, or sale of the goods or services; and
(2) order that the goods or item bearing the mark in the possession
or under the control of a defendant in the case be delivered to an
officer of the court or to the complainant to be destroyed.
(c) In addition to amounts a court awards under subsection (b),
a court may award reasonable attorney's fees to the prevailing
party.
(c) (d) In addition to amounts a court may award under
subsection
subsections (b)
and (c), a court may enter judgment for
(1) an amount not to exceed the greater of:
(A) (1) three (3) times the profits derived from; or
(B) (2) three (3) times the damages suffered by reason of;
the intentional use of a counterfeit mark, knowing it to be a
counterfeit in connection with the goods or services for which the
mark is registered.
and
(2) in exceptional cases, reasonable attorney's fees to the
prevailing party.
(d) (e) The invocation of a right or remedy in this chapter does not
affect a registrant's right to prosecution under a penal law.