As Reported by the House Civil and Commercial Law Committee 1
122nd General Assembly 4
Regular Session Sub. H. B. No. 464 5
1997-1998 6
REPRESENTATIVES MASON-METELSKY-TAYLOR-SCHULER-TERWILLEGER-LEWIS- 8
KREBS-GARCIA-TIBERI-JONES-REID-KASPUTIS-WOMER BENJAMIN 9
11
A B I L L
To amend sections 1329.54, 1329.55, 1329.56, 13
1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 14
of the 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, 1329.63, and 1329.67 of the Revised 24
Code be amended to read as follows: 25
Sec. 1329.54. As used in sections 1329.54 to 1329.67 of 34
the Revised Code: 35
(A) "Trademark" means any word, name, symbol, or device, 37
or any combination thereof OF ANY WORD, NAME, SYMBOL, OR DEVICE 38
THAT IS adopted and used by a person to identify goods made or 40
sold by him, and to distinguish them from THE goods made or sold 42
by others OF THAT PERSON, INCLUDING A UNIQUE PRODUCT, FROM THE 43
GOODS OF OTHER PERSONS, AND TO INDICATE THE SOURCE OF THE GOODS, 44
EVEN IF THAT SOURCE IS UNKNOWN. 45
(B) "SERVICE MARK" MEANS ANY WORD, NAME, SYMBOL, DEVICE, 47
OR COMBINATION OF ANY WORD, NAME, SYMBOL, OR DEVICE THAT IS 48
ADOPTED AND USED BY A PERSON TO IDENTIFY AND DISTINGUISH THE 49
SERVICES OF THAT PERSON, INCLUDING A UNIQUE SERVICE, FROM THE 50
SERVICES OF OTHER PERSONS AND TO INDICATE THE SOURCE OF THE 51
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SERVICES, EVEN IF THAT SOURCE IS UNKNOWN. "SERVICE MARK" 52
INCLUDES TITLES, CHARACTER NAMES USED BY A PERSON, AND OTHER 53
DISTINCTIVE FEATURES OF RADIO OR TELEVISION PROGRAMS EVEN IF A 55
RADIO OR TELEVISION PROGRAM OR A TITLE, CHARACTER NAME, OR OTHER 56
DISTINCTIVE FEATURE OF A RADIO OR TELEVISION PROGRAM ADVERTISES
THE GOODS OF THE SPONSOR OF THAT RADIO OR TELEVISION PROGRAM. 58
(C) "MARK" MEANS ANY TRADEMARK OR SERVICE MARK THAT IS 61
ENTITLED TO REGISTRATION UNDER SECTIONS 1329.54 TO 1329.67 OF THE 62
REVISED CODE WHETHER OR NOT IT IS REGISTERED.
(D) "Person" means any individual, firm, partnership, 64
LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY COMPANY, 65
corporation, association, union of working men, or other 66
organization THAT IS CAPABLE OF SUING OR BEING SUED IN A COURT OF 67
RECORD IN THIS STATE. 68
(C)(E) "Applicant" includes MEANS the person filing an 71
application for registration of a trademark or service mark under 72
sections 1329.54 to 1329.67 of the Revised Code and his THE 73
PERSON'S legal representatives, successors, or assigns. 75
(D)(F) "Registrant" includes MEANS the person to whom the 78
registration of a trademark or service mark is issued, under 79
sections 1329.54 to 1329.67 of the Revised Code and his THE 80
PERSON'S legal representatives, successors, or assigns. 82
(E)(G) "USE" MEANS THE BONA FIDE USE OF A MARK IN THE 85
ORDINARY COURSE OF TRADE AND NOT THE MAKING USE OF A MARK MERELY
TO RESERVE A RIGHT IN A MARK. 86
(H) A trademark shall be considered "used" in this state 88
when it EITHER OF THE FOLLOWING APPLIES: 89
(1) THE TRADEMARK is placed in any manner on the goods or 91
their containers or, ON DISPLAYS ASSOCIATED WITH GOODS OR THEIR 93
CONTAINERS, OR on the tags or labels affixed to the goods or 94
THEIR containers, AND THE GOODS ARE SOLD OR TRANSPORTED IN 95
COMMERCE IN THIS STATE. 96
(2) IF THE NATURE OF GOODS MAKES THE TYPES OF PLACEMENT 98
DESCRIBED IN DIVISION (H)(1) OF THIS SECTION IMPRACTICABLE, THE 101
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TRADEMARK IS PLACED IN ANY MANNER ON DOCUMENTS ASSOCIATED WITH 102
THE GOODS OR THE SALE OF THE GOODS, and the goods are sold or 104
otherwise distributed TRANSPORTED IN COMMERCE in this state. 105
(F) "Service mark" means a mark used in the sale or 107
advertising of services to identify the services of one person 108
and distinguish them from the services of others and includes 109
without limitation the marks, names, symbols, titles, 110
designations, slogans, character names, and distinctive features 111
of radio or other advertising used in commerce. 112
(G)(I) A service mark shall be considered "used" in this 114
state when it BOTH OF THE FOLLOWING APPLY: 115
(1) THE SERVICE MARK is used to identify the services of 117
one person and TO distinguish them from the services of others 119
and the OTHER PERSONS.
(2) THE services OF THAT PERSON are sold or otherwise 122
rendered in this state. 123
(J) A MARK SHALL BE CONSIDERED "ABANDONED" WHEN EITHER OF 126
THE FOLLOWING OCCURS:
(1) ITS USE HAS BEEN DISCONTINUED WITH THE INTENT NOT TO 128
RESUME THAT USE. AN "INTENT NOT TO RESUME THAT USE" MAY BE 130
INFERRED FROM THE CIRCUMSTANCES, AND NONUSE OF A MARK FOR THREE 131
CONSECUTIVE YEARS CONSTITUTES PRIMA-FACIE EVIDENCE OF THAT 132
INTENT.
(2) ANY COURSE OF CONDUCT BY THE OWNER OF THE MARK, 134
INCLUDING ACTIONS AND OMISSIONS, CAUSES THE MARK TO LOSE ITS 135
SIGNIFICANCE AS A MARK. 136
Sec. 1329.55. A trade-mark TRADEMARK or service mark by 145
which the goods or services of any applicant for registration may 147
be distinguished from the goods or services of others OTHER 148
PERSONS shall not be registered if it consists of or comprises 149
any one or more of the following: 150
(A) Immoral, deceptive, or scandalous matter; 152
(B) Matter which THAT may disparage or falsely suggest a 154
connection with persons, living or dead PERSONS, institutions, 156
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beliefs, or national symbols, or bring them into contempt or 158
disrepute;
(C) The flag or, coat of arms, or other insignia of the 160
United States, or of any state or municipality, or of any foreign 162
nation, or any simulation thereof OF A FLAG, COAT OF ARMS, OR 163
OTHER INSIGNIA OF THOSE NATURES; 164
(D) The name, signature, or portrait of any living 166
individual, except with his THE INDIVIDUAL'S written consent; 167
(E) A (1) EXCEPT AS PROVIDED IN DIVISIONS (E)(2) AND (3) 170
OF THIS SECTION, A mark TO which ANY OF THE FOLLOWING APPLIES: 171
(1)(a) When applied to USED ON OR IN CONNECTION WITH the 174
goods or services of the applicant, THE MARK is merely 175
descriptive or deceptively misdescriptive of them; THOSE GOODS OR 176
SERVICES. 177
(2)(b) When applied to USED ON OR IN CONNECTION WITH the 180
goods or services of the applicant, THE MARK is primarily 181
geographically descriptive or deceptively misdescriptive of them; 182
THOSE GOODS OR SERVICES. 183
(3) Is (c) THE MARK IS primarily merely a surname; 185
provided, that nothing in division. 187
(2) DIVISION (E) of this section shall DOES NOT prevent 190
the registration of a mark used in this state by the applicant 192
which IF THAT MARK has become distinctive of the applicant's 193
goods or services. The secretary of state may accept as evidence 194
that the mark has become distinctive, as applied to USED ON OR IN 195
CONNECTION WITH the applicant's goods or services, proof of 196
substantially exclusive and continuous use thereof OF THE MARK as 198
a mark by the applicant in this state or elsewhere for the five 199
years next preceding the date of the filing of the application 200
for registration;.
(3) DIVISION (E)(1) OF THIS SECTION DOES NOT PREVENT THE 203
REGISTRATION OF A MARK THAT, WHEN USED ON OR IN CONNECTION WITH 205
THE GOODS OR SERVICES OF THE APPLICANT, IS PRIMARILY
GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE OF THE GOODS OR 206
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SERVICES IF THE MARK BECAME DISTINCTIVE OF THE APPLICANT'S GOODS 207
OR SERVICES IN COMMERCE PRIOR TO DECEMBER 8, 1993, THE DATE OF 208
ENACTMENT OF THE "NORTH AMERICAN FREE TRADE AGREEMENT 213
IMPLEMENTATION ACT," 107 STAT. 2057 (1993), 19 U.S.C. 3301 et. 217
seq.
(F) A trade-mark TRADEMARK or service mark which THAT so 220
resembles a trade-mark TRADEMARK or service mark registered in 221
this state or a trade-mark TRADEMARK, service mark, corporate 222
name, or trade name previously used in this state by another 223
PERSON and not abandoned BY THAT PERSON, as likely, when applied 226
to USED ON OR IN CONNECTION WITH the goods or services of the 227
applicant, to cause confusion or mistake or to deceive; 228
(G) A trade-mark (1) EXCEPT AS PROVIDED IN DIVISION 231
(G)(2) OF THIS SECTION, A TRADEMARK or service mark which THAT so 232
resembles a trade-mark TRADEMARK or service mark registered in 233
the United States patent AND TRADEMARK office by another PERSON 234
and not abandoned BY THAT PERSON, OR A TRADEMARK OR SERVICE MARK 236
THAT IS THE SUBJECT OF A PENDING INTENT TO USE APPLICATION FILED 237
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BY ANOTHER 240
PERSON, as to be likely, when applied to USED ON OR IN CONNECTION 241
WITH the goods or services of the applicant, to cause confusion 243
or mistake or to deceive; provided, that should. 244
(2) IF THE applicant prove PROVES that he THE APPLICANT is 247
the owner of a concurrent registration in the United States 250
patent AND TRADEMARK office of his trade-mark THE APPLICANT'S 251
TRADEMARK or service mark covering an area including this state, 253
THE applicant may register his trade-mark THE APPLICANT'S 254
TRADEMARK or service mark in accordance with this section 257
SECTIONS 1329.54 TO 1329.67 OF THE REVISED CODE.
Sec. 1329.56. (A) Subject to the limitations set forth in 266
sections 1329.54 to 1329.67 of the Revised Code, any person who 267
adopts and uses a trademark or service mark in this state may 268
file in the office of the secretary of state, on a form to be 269
prescribed by the secretary of state, an application for 270
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registration of that trademark or service mark setting THAT SETS 271
forth, but IS not limited to, the following information: 273
(A)(1) The name and business address of the person 275
applying for the registration; and, if THE PERSON IS a 276
corporation, the state of ITS incorporation; IF THE PERSON IS A 278
PARTNERSHIP OR LIMITED LIABILITY PARTNERSHIP, THE STATE IN WHICH 279
THE PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL 280
PARTNERS; AND, IF THE PERSON IS A LIMITED LIABILITY COMPANY, THE 281
STATE OF ITS ORGANIZATION;
(B)(2) The goods or services ON OR in connection with 283
which the mark is used and, the mode or manner in which the mark 285
is used ON OR in connection with the goods or services, and the 287
class in which the goods or services fall; 288
(C)(3) The date when the trademark or service mark was 290
first used anywhere and the date when it was first used in this 292
state by the applicant or his THE APPLICANT'S predecessor in 293
business INTEREST; 294
(D)(4) A statement that the applicant is the owner of the 296
trademark or service mark, THAT THE MARK IS IN USE, and that, TO 299
THE KNOWLEDGE OF THE PERSON VERIFYING THE APPLICATION, no other 300
person has the right to use the trademark or service mark in the 301
state either in the identical form thereof OF THE MARK, or in 302
such near resemblance thereto TO THE MARK, as might be calculated 304
to deceive or be mistaken therefor TO BE LIKELY, WHEN USED ON OR 305
IN CONNECTION WITH THE GOODS OR SERVICES OF ANOTHER PERSON, TO 306
CAUSE CONFUSION OR MISTAKE OR TO DECEIVE; 307
(E)(5) A statement that, TO THE KNOWLEDGE OF THE PERSON 310
VERIFYING THE APPLICATION, no other person has a registration OR 311
A PENDING INTENT TO USE APPLICATION of the same or a confusingly 313
similar trademark or service mark in the United States patent AND 314
TRADEMARK office for the same or similar goods or services or a 316
statement that THE applicant is the owner of a concurrent 317
registration in the United States patent AND TRADEMARK office of 318
his trademark or service THE APPLICANT'S mark covering an area 319
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including this state. 320
(B) The application shall be signed and verified by the 322
applicant or by a member of the firm or an officer of the FIRM, 324
PARTNERSHIP, LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY
COMPANY, corporation, union, or association applying, OR OTHER 326
ORGANIZATION THAT IS THE APPLICANT. 327
(C) The application shall be accompanied by a specimen or 329
facsimile of the trademark or service mark as actually used and 330
shall contain a brief description of the trademark or service 331
mark as it appears on the specimen or facsimile. 332
(D) The application for registration shall be accompanied 334
by a filing fee of twenty dollars, THAT IS payable to the 336
secretary of state. 337
Sec. 1329.57. Upon compliance by the applicant with the 346
requirements of sections 1329.54 to 1329.67 of the Revised Code, 347
the secretary of state shall cause a certificate of registration 348
to be issued and delivered to the applicant. The certificate of 349
registration shall be issued under the signature of the secretary 350
of state and the seal of the secretary of state, and it shall 351
show the name and business address and, if a corporation, the 352
state of incorporation, OR, IF A PARTNERSHIP OR LIMITED LIABILITY 353
PARTNERSHIP, THE STATE IN WHICH THE PARTNERSHIP IS ORGANIZED AND 355
THE NAMES OF THE GENERAL PARTNERS, OR, IF A LIMITED LIABILITY 356
COMPANY, THE STATE OF ORGANIZATION, of the person claiming 357
ownership of the trademark or service mark, the date claimed for 358
the first use of the trademark or service mark anywhere and, the 359
date claimed for the first use of the trademark or service mark 360
in Ohio THIS STATE, the class of goods or services and the 362
description of the goods or services on OR IN CONNECTION WITH 363
which the trademark or service mark is used, the registration 364
date, and the term of the registration. One specimen or 365
facsimile of the trademark or service mark supplied under section 366
1329.56 of the Revised Code shall be attached to and made a part 367
of the certificate of registration. 368
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Any certificate of registration issued by the secretary of 370
state or a copy of the certificate duly certified by the 371
secretary of state shall be admissible in evidence IN ANY ACTION 372
OR PROCEEDING IN ANY COURT OF RECORD IN THIS STATE as competent 373
and sufficient proof of the registration of the trademark or 374
service mark in any action or judicial proceedings in any court 375
of Ohio. 376
Sec. 1329.58. Registration of a trademark or service mark 385
under sections 1329.54 to 1329.67 of the Revised Code shall be 386
effective for a term of ten years from the date of registration 387
and, upon. UPON THE FILING OF AN application filed within six 388
months prior to the expiration of such THAT term, on a form 390
furnished by the secretary of state, the REGISTRANT MAY RENEW THE 391
registration may be renewed at the end of each ten-year period 393
for a like SIMILAR term. A renewal fee of ten dollars, THAT IS 394
payable to the secretary of state, shall accompany the RENEWAL 395
application for renewal of the registration. THE RENEWAL 397
APPLICATION SHALL REQUIRE THE APPLICANT TO STATE THAT THE MARK 399
STILL IS IN USE IN THIS STATE.
The secretary of state shall notify the registrants of 401
trademarks or service marks of the necessity of renewal within 403
the year next preceding the expiration of the ten years from the 404
date of registration by writing to the last known address of the 405
registrants.
Sec. 1329.62. The secretary of state shall cancel from the 414
register THE FOLLOWING TYPES OF REGISTRATIONS: 415
(A) Any registration concerning which the secretary of 417
state receives a voluntary request in writing, on a form 418
prescribed by the secretary of state, for cancellation of the 420
registration from the registrant or the assignee of record;
(B) Any registration THAT IS granted under sections 422
1329.54 to 1329.67 of the Revised Code, AND THAT IS not renewed 423
in accordance with the provisions thereof THOSE SECTIONS; 425
(C) Any registration concerning which the secretary of 427
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state or a court of competent jurisdiction finds that ANY OF THE 428
FOLLOWING APPLIES: 429
(1) The registered trademark or service mark has been 431
abandoned;. 432
(2) The registrant is not the owner of the trademark or 434
service mark;. 435
(3) The registration was granted improperly;. 437
(4) The registration was obtained fraudulently;. 439
(5) The (a) EXCEPT AS PROVIDED IN DIVISION (C)(5)(b) OF 442
THIS SECTION, THE registered trademark or service mark is so 443
similar, as to be likely to cause confusion or mistake or to 444
deceive, to a trademark or service mark THAT WAS registered by 445
another person in the United States patent AND TRADEMARK office, 447
WITH EITHER A PRIORITY DATE OR FIRST USE DATE prior to the date 449
of the filing of the application for registration by the 450
registrant hereunder, UNDER SECTIONS 1329.54 TO 1329.67 OF THE 451
REVISED CODE and THAT HAS not BEEN abandoned; provided, that 453
should AS TO BE LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO 454
DECEIVE.
(b) DIVISION (C)(5)(a) OF THIS SECTION DOES NOT REQUIRE 457
THE CANCELLATION OF A MARK IF the registrant prove PROVES that 459
the registrant is the owner of a concurrent registration of the 460
registrant's trademark or service mark in the United States 462
patent AND TRADEMARK office covering an area including this 463
state, the registration mentioned in this section shall not be 464
cancelled.
(6) A TRADEMARK OR SERVICE MARK IS OR HAS BECOME THE 467
GENERIC NAME FOR THE GOODS OR SERVICES, OR A PORTION OF THE GOODS 468
OR SERVICES, FOR WHICH THE MARK IS OR HAS BEEN REGISTERED.
(D) Any registration of which a court of competent 470
jurisdiction orders cancellation on any ground. 471
Sec. 1329.63. The secretary of state shall establish FOR 480
CONVENIENCE OF ADMINISTRATION a classification of goods or 482
services THAT IS in conformity with the classification
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established by the commissioner of patents AND TRADEMARKS under 484
15 U.S.C. 1112, for convenience of administration, but THAT DOES 486
not limit or extend the applicant's or registrant's rights. A 488
single application for registration of a trade-mark TRADEMARK or 489
service mark may include any or all goods and services comprised 490
in a single class upon ON OR IN CONNECTION WITH which the 492
trade-mark TRADEMARK or service mark is actually being used, but 493
in no event shall a single application SHALL NOT include goods or 494
services which THAT fall within different classes upon ON OR IN 497
CONNECTION WITH which the trade-mark TRADEMARK or service mark is 499
being used.
Sec. 1329.67. Nothing herein shall SECTIONS 1329.54 TO 509
1329.67 OF THE REVISED CODE DO NOT adversely affect the rights or 510
the enforcement of rights in trade-marks TRADEMARKS or service 511
marks acquired in good faith at any time at common law PRIOR TO 512
ANY OF THE FOLLOWING TIMES: 513
(A) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THIS STATE 516
OF A TRADEMARK OR SERVICE MARK, WITH THE REGISTRANT HAVING A 517
SUBSEQUENT FIRST USE DATE;
(B) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 521
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 522
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT FIRST USE DATE; 523
(C) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 527
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 528
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT PRIORITY DATE. 529
Section 2. That existing sections 1329.54, 1329.55, 531
1329.56, 1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 of the 532
Revised Code are hereby repealed.