As Introduced 1
122nd General Assembly 4
Regular Session H. B. No. 464 5
1997-1998 6
REPRESENTATIVES MASON-METELSKY-TAYLOR-SCHULER-TERWILLEGER-LEWIS- 8
KREBS-GARCIA-TIBERI-JONES-REID 9
11
A B I L L
To amend sections 1329.54, 1329.55, 1329.56, 13
1329.57, 1329.58, 1329.62, and 1329.63 of the 14
Revised Code to revise the definitions of 15
trademark and service mark in the Ohio Trademark 16
Law, to modify the procedures for registering a 17
trademark or service mark, and to make other 18
changes to the Ohio Trademark Law. 19
BE IT ENACTED BY THE GENERAL ASSEMBLY OF THE STATE OF OHIO: 21
Section 1. That sections 1329.54, 1329.55, 1329.56, 23
1329.57, 1329.58, 1329.62, and 1329.63 of the Revised Code be 24
amended to read as follows:
Sec. 1329.54. As used in sections 1329.54 to 1329.67 of 33
the Revised Code: 34
(A) "Trademark" means any word, name, symbol, or device or 36
any combination thereof adopted and used by a person to identify 37
goods made or sold by him, and to distinguish them from THE goods 39
made or sold by others OF THAT PERSON, INCLUDING A UNIQUE 41
PRODUCT, FROM THE GOODS OF OTHERS, AND TO INDICATE THE SOURCE OF 42
THE GOODS, EVEN IF THAT SOURCE IS UNKNOWN. 43
(B) "SERVICE MARK" MEANS ANY WORD, NAME, SYMBOL, DEVICE, 45
OR ANY COMBINATION OF WORDS, NAMES, SYMBOLS, OR DEVICES, ADOPTED 46
AND USED BY A PERSON TO IDENTIFY AND DISTINGUISH THE SERVICES OF 47
ONE PERSON, INCLUDING A UNIQUE SERVICE, FROM THE SERVICES OF 48
OTHERS AND TO INDICATE THE SOURCE OF THE SERVICES, EVEN IF THAT 49
SOURCE IS UNKNOWN. TITLES, CHARACTER NAMES USED BY A PERSON, AND 50
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OTHER DISTINCTIVE FEATURES OF RADIO OR TELEVISION PROGRAMS MAY BE 51
REGISTERED AS SERVICE MARKS EVEN IF THE TITLE, CHARACTER NAME, OR 52
RADIO OR TELEVISION PROGRAM ADVERTISES THE GOODS OF THE SPONSOR 53
OF THAT RADIO OR TELEVISION PROGRAM. 54
(C) "MARK" INCLUDES ANY TRADEMARK OR SERVICE MARK ENTITLED 57
TO REGISTRATION UNDER THIS CHAPTER WHETHER REGISTERED OR NOT. 58
(D) "Person" means any individual, firm, partnership, 60
LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY COMPANY, 61
corporation, association, union of working men WORKERS, or other 62
organization. 63
(C)(E) "Applicant" includes the person filing an 65
application for registration of a trademark or service mark under 66
sections 1329.54 to 1329.67 of the Revised Code and his THE 67
PERSON'S legal representatives, successors, or assigns. 69
(D)(F) "Registrant" includes the person to whom the 71
registration of a trademark or service mark is issued, under 72
sections 1329.54 to 1329.67 of the Revised Code and his THE 73
PERSON'S legal representatives, successors, or assigns. 75
(E)(G) A trademark shall be considered "used" in this 77
state when it is placed in any manner on the goods or their 78
containers or, ON THE DISPLAYS ASSOCIATED WITH THE GOODS OR 79
CONTAINERS, on the tags or labels affixed to the goods or 80
containers, OR IF THE NATURE OF THE GOODS MAKES THAT PLACEMENT 81
IMPRACTICABLE, THEN ON DOCUMENTS ASSOCIATED WITH THE GOODS OR THE 82
SALE OF THE GOODS, and the goods are sold or otherwise 84
distributed TRANSPORTED IN COMMERCE in this state. 85
(F) "Service mark" means a mark used in the sale or 87
advertising of services to identify the services of one person 88
and distinguish them from the services of others and includes 89
without limitation the marks, names, symbols, titles, 90
designations, slogans, character names, and distinctive features 91
of radio or other advertising used in commerce. 92
(G)(H) A service mark shall be considered "used" in this 94
state when it is used to identify the services of one person and 95
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distinguish them from the services of others and the services are 96
sold or otherwise THAT ARE rendered in this state. 97
(I) A MARK SHALL BE CONSIDERED ABANDONED WHEN EITHER OF 100
THE FOLLOWING OCCURS:
(1) ITS USE HAS BEEN DISCONTINUED WITH THE INTENT NOT TO 102
RESUME THAT USE. AN INTENT NOT TO RESUME THE USE OF A MARK MAY 103
BE INFERRED FROM THE CIRCUMSTANCES, AND NONUSE OF A MARK FOR TWO 105
CONSECUTIVE YEARS CONSTITUTES PRIMA-FACIE EVIDENCE OF
ABANDONMENT. 106
(2) ANY COURSE OF CONDUCT BY THE OWNER OF THE MARK, 108
INCLUDING ACTS OF OMISSION, CAUSES THE MARK TO LOSE ITS 109
SIGNIFICANCE AS A MARK. 110
Sec. 1329.55. A trade-mark TRADEMARK or service mark by 119
which the goods or services of any applicant for registration may 121
be distinguished from the goods or services of others OTHER 122
PERSONS shall not be registered if it consists of or comprises 123
any one or more of the following: 124
(A) Immoral, deceptive, or scandalous matter; 126
(B) Matter which THAT may disparage or falsely suggest a 128
connection with persons, living or dead, institutions, beliefs, 130
or national symbols, or bring them into contempt or disrepute; 131
(C) The flag or coat of arms or other insignia of the 133
United States, or of any state or municipality, or of any foreign 134
nation, or any simulation thereof; 135
(D) The name, signature, or portrait of any living 137
individual, except with his THE INDIVIDUAL'S written consent; 138
(E) A mark which THAT: 140
(1) When applied to USED ON OR IN CONNECTION WITH the 142
goods or services of the applicant, is merely descriptive or 144
deceptively misdescriptive of them THOSE GOODS OR SERVICES; 145
(2) When applied to USED ON OR IN CONNECTION WITH the 147
goods or services of the applicant is primarily geographically 149
descriptive or deceptively misdescriptive of them THOSE GOODS OR 150
SERVICES;
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(3) Is primarily merely a surname; provided HOWEVER, that 153
nothing in division (E) of this section shall prevent the 154
registration of a mark used in this state by the applicant which 155
THAT has become distinctive of the applicant's goods or services. 157
The secretary of state may accept as evidence that the mark has
become distinctive, as applied to USED ON OR IN CONNECTION WITH 158
the applicant's goods or services, proof of substantially 160
exclusive and continuous use thereof as a mark by the applicant
in this state or elsewhere for the five years next preceding the 161
date of the filing of the application for registration; 162
(F) A trade-mark TRADEMARK or service mark which THAT so 165
resembles a trade-mark TRADEMARK or service mark registered in 166
this state or a trade-mark, TRADEMARK OR service mark, corporate 167
name, or trade name previously used in this state by another and 168
not abandoned, as likely, when applied to USED ON OR IN 170
CONNECTION WITH the goods or services of the applicant, to cause 171
confusion or mistake or to deceive; 172
(G) A trade-mark TRADEMARK or service mark which THAT so 175
resembles a trade-mark TRADEMARK or service mark registered in 176
the United States patent AND TRADEMARK office by another and not 177
abandoned, OR A TRADEMARK OR SERVICE MARK THAT IS THE SUBJECT OF 179
A PENDING INTENT TO USE APPLICATION FILED IN THE UNITED STATES 182
PATENT AND TRADEMARK OFFICE BY ANOTHER PERSON, as to be likely, 184
when applied to USED ON OR IN CONNECTION WITH the goods or 185
services of the applicant, to cause confusion or mistake or to 186
deceive; provided, that should THE applicant prove that he THE 188
APPLICANT is the owner of a concurrent registration in the United 190
States patent AND TRADEMARK office of his trade-mark THE 191
APPLICANT'S TRADEMARK or service mark covering an area including 193
this state, THE applicant may register his trade-mark THE 194
APPLICANT'S TRADEMARK or service mark in accordance with this 197
section.
Sec. 1329.56. Subject to the limitations set forth in 206
sections 1329.54 to 1329.67 of the Revised Code, any person who 207
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adopts and uses a trademark or service mark in this state may 208
file in the office of the secretary of state, on a form to be 209
prescribed by the secretary of state, an application for 210
registration of that trademark or service mark setting forth, but 211
not limited to, the following information: 212
(A) The name and business address of the person applying 214
for the registration; and, if a corporation, the state of 215
incorporation, OR, IF A PARTNERSHIP, THE STATE IN WHICH THE 216
PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL PARTNERS; 217
(B) The goods or services ON OR in connection with which 219
the mark is used and the mode or manner in which the mark is used 220
ON OR in connection with the goods or services and the class in 221
which the goods or services fall; 222
(C) The date when the trademark or service mark was first 224
used anywhere and the date when it was first used in this state 225
by the applicant or his THE APPLICANT'S predecessor in business 227
INTEREST;
(D) A statement that the applicant is the owner of the 229
trademark or service mark, THAT THE MARK IS IN USE, and that, TO 231
THE KNOWLEDGE OF THE PERSON VERIFYING THE APPLICATION, no other 232
person has the right to use the trademark or service mark in the 233
state either in the identical form thereof, or in such near 234
resemblance thereto, as might be calculated to deceive or be 235
mistaken therefor TO BE LIKELY, WHEN APPLIED TO THE GOODS OR 236
SERVICES OF THAT OTHER PERSON, TO CAUSE CONFUSION OR MISTAKE OR 237
TO DECEIVE; 238
(E) A statement that, TO THE KNOWLEDGE OF THE PERSON 240
VERIFYING THE APPLICATION, no other person has a registration OR 241
A PENDING INTENT TO USE APPLICATION of the same or a confusingly 243
similar trademark or service mark in the United States patent AND 244
TRADEMARK office for the same or similar goods or services or a 246
statement that THE applicant is the owner of a concurrent 247
registration in the United States patent AND TRADEMARK office of 248
his THE APPLICANT'S trademark or service mark covering an area 250
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including this state.
The application shall be signed and verified by the 252
applicant or by a member of the firm or an officer of the 253
corporation, union, or association applying. 254
The application shall be accompanied by a specimen or 256
facsimile of the trademark or service mark as actually used and 257
shall contain a brief description of the trademark or service 258
mark as it appears on the specimen or facsimile. 259
The application for registration shall be accompanied by a 261
filing fee of twenty dollars, payable to the secretary of state. 262
Sec. 1329.57. Upon compliance by the applicant with the 271
requirements of sections 1329.54 to 1329.67 of the Revised Code, 272
the secretary of state shall cause a certificate of registration 273
to be issued and delivered to the applicant. The certificate of 274
registration shall be issued under the signature of the secretary 275
of state and the seal of the secretary of state, and it shall 276
show the name and business address and, if a corporation, the 277
state of incorporation, OR IF A PARTNERSHIP, THE STATE IN WHICH 278
THE PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL 279
PARTNERS, of the person claiming ownership of the trademark or 281
service mark, the date claimed for the first use of the trademark 282
or service mark anywhere and the date claimed for the first use 283
of the trademark or service mark in Ohio, the class of goods or 284
services and the description of the goods or services on OR IN 285
CONNECTION WITH which the trademark or service mark is used, the 286
registration date, and the term of the registration. One 287
specimen or facsimile of the trademark or service mark supplied 288
under section 1329.56 of the Revised Code shall be attached to 289
and made a part of the certificate of registration. 290
Any certificate of registration issued by the secretary of 292
state or a copy of the certificate duly certified by the 293
secretary of state shall be admissible in evidence as competent 294
and sufficient proof of the registration of the trademark or 295
service mark in any action or judicial proceedings in any court 296
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of Ohio. 297
Sec. 1329.58. Registration of a trademark or service mark 306
under sections 1329.54 to 1329.67 of the Revised Code shall be 307
effective for a term of ten years from the date of registration 308
and, upon application filed within six months prior to the 309
expiration of such term, on a form furnished by the secretary of 310
state, the registration may be renewed at the end of each
ten-year period for a like term. A renewal fee of ten dollars, 311
payable to the secretary of state, shall accompany the 312
application for renewal of the registration. THE RENEWAL 313
APPLICATION SHALL REQUIRE THE APPLICANT TO STATE THAT THE MARK 314
STILL IS IN USE IN THIS STATE.
The secretary of state shall notify the registrants of 316
trademarks or service marks of the necessity of renewal within 318
the year next preceding the expiration of the ten years from the 319
date of registration by writing to the last known address of the 320
registrants.
Sec. 1329.62. The secretary of state shall cancel from the 329
register: 330
(A) Any registration concerning which the secretary of 332
state receives a voluntary request in writing, on a form 333
prescribed by the secretary of state, for cancellation of the 335
registration from the registrant or the assignee of record;
(B) Any registration granted under sections 1329.54 to 337
1329.67 of the Revised Code, not renewed in accordance with the 338
provisions thereof; 339
(C) Any registration concerning which the secretary of 341
state or a court of competent jurisdiction finds that: 342
(1) The registered trademark or service mark has been 344
abandoned; 345
(2) The registrant is not the owner of the trademark or 347
service mark; 348
(3) The registration was granted improperly; 350
(4) The registration was obtained fraudulently; 352
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(5) The registered trademark or service mark is so 354
similar, as to be likely to cause confusion or mistake or to 355
deceive, to a trademark or service mark registered by another 356
person in the United States patent AND TRADEMARK office, prior to 357
the date of the filing of the application for registration by the 359
registrant hereunder, and not abandoned; provided HOWEVER, that 360
should the registrant prove that the registrant is the owner of a 362
concurrent registration of the registrant's trademark or service 364
mark in the United States patent AND TRADEMARK office covering an 365
area including this state, the registration mentioned in this 367
section shall not be cancelled.
(D) Any registration of which a court of competent 369
jurisdiction orders cancellation on any ground. 370
Sec. 1329.63. The secretary of state shall establish a 379
classification of goods or services in conformity with the 380
classification established by the commissioner of patents under 381
15 U.S.C. 1112, for convenience of administration, but not limit 382
or extend the applicant's or registrant's rights. A single 383
application for registration of a trade-mark TRADEMARK or service 384
mark may include any or all goods and services comprised in a 385
single class upon ON OR IN CONNECTION WITH which the trade-mark 387
TRADEMARK or service mark is actually being used, but in no event 388
shall a single application include goods or services which THAT 389
fall within different classes upon which the trade-mark TRADEMARK 391
or service mark is being used. 392
Section 2. That existing sections 1329.54, 1329.55, 394
1329.56, 1329.57, 1329.58, 1329.62, and 1329.63 of the Revised 395
Code are hereby repealed.