As Passed by the House 1
122nd General Assembly 4
Regular Session Am. 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
GRENDELL-SALERNO-BENDER-OPFER-VERICH 10
12
A B I L L
To amend sections 1329.54, 1329.55, 1329.56, 14
1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 15
of the Revised Code to revise the definitions of 16
trademark and service mark in the Ohio Trademark 17
Law, to modify the procedures for registering a 18
trademark or service mark, and to make other 19
changes to the Ohio Trademark Law. 20
BE IT ENACTED BY THE GENERAL ASSEMBLY OF THE STATE OF OHIO: 22
Section 1. That sections 1329.54, 1329.55, 1329.56, 24
1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 of the Revised 25
Code be amended to read as follows: 26
Sec. 1329.54. As used in sections 1329.54 to 1329.67 of 35
the Revised Code: 36
(A) "Trademark" means any word, name, symbol, or device, 38
or any combination thereof OF ANY WORD, NAME, SYMBOL, OR DEVICE, 39
THAT IS adopted and used by a person to identify goods made or 41
sold by him, and to distinguish them from THE goods made or sold 43
by others OF THAT PERSON, INCLUDING A UNIQUE PRODUCT, FROM THE 44
GOODS OF OTHER PERSONS, AND TO INDICATE THE SOURCE OF THE GOODS, 45
EVEN IF THAT SOURCE IS UNKNOWN. 46
(B) "SERVICE MARK" MEANS ANY WORD, NAME, SYMBOL, DEVICE, 48
OR COMBINATION OF ANY WORD, NAME, SYMBOL, OR DEVICE, THAT IS 49
ADOPTED AND USED BY A PERSON TO IDENTIFY AND DISTINGUISH THE 50
SERVICES OF THAT PERSON, INCLUDING A UNIQUE SERVICE, FROM THE 51
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SERVICES OF OTHER PERSONS AND TO INDICATE THE SOURCE OF THE 52
SERVICES, EVEN IF THAT SOURCE IS UNKNOWN. "SERVICE MARK" 53
INCLUDES TITLES, CHARACTER NAMES USED BY A PERSON, AND OTHER 54
DISTINCTIVE FEATURES OF RADIO OR TELEVISION PROGRAMS EVEN IF A 56
RADIO OR TELEVISION PROGRAM OR A TITLE, CHARACTER NAME, OR OTHER 57
DISTINCTIVE FEATURE OF A RADIO OR TELEVISION PROGRAM ADVERTISES
THE GOODS OF THE SPONSOR OF THAT RADIO OR TELEVISION PROGRAM. 59
(C) "MARK" MEANS ANY TRADEMARK OR SERVICE MARK THAT IS 62
ENTITLED TO REGISTRATION UNDER SECTIONS 1329.54 TO 1329.67 OF THE 63
REVISED CODE WHETHER OR NOT IT IS REGISTERED.
(D) "Person" means any individual, firm, partnership, 65
LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY COMPANY, 66
corporation, association, union of working men, or other 67
organization THAT IS CAPABLE OF SUING OR BEING SUED IN A COURT OF 68
RECORD IN THIS STATE. 69
(C)(E) "Applicant" includes MEANS the person filing an 72
application for registration of a trademark or service mark under 73
sections 1329.54 to 1329.67 of the Revised Code and his THE 74
PERSON'S legal representatives, successors, or assigns. 76
(D)(F) "Registrant" includes MEANS the person to whom the 79
registration of a trademark or service mark is issued, under 80
sections 1329.54 to 1329.67 of the Revised Code and his THE 81
PERSON'S legal representatives, successors, or assigns. 83
(E)(G) "USE" MEANS THE BONA FIDE USE OF A MARK IN THE 86
ORDINARY COURSE OF TRADE AND NOT THE MAKING USE OF A MARK MERELY
TO RESERVE A RIGHT IN A MARK. 87
(H) A trademark shall be considered "used" in this state 89
when it EITHER OF THE FOLLOWING APPLIES: 90
(1) THE TRADEMARK is placed in any manner on the goods or 92
their containers or, ON DISPLAYS ASSOCIATED WITH GOODS OR THEIR 94
CONTAINERS, OR on the tags or labels affixed to the goods or 95
THEIR containers, AND THE GOODS ARE SOLD OR TRANSPORTED IN 96
COMMERCE IN THIS STATE. 97
(2) IF THE NATURE OF GOODS MAKES THE TYPES OF PLACEMENT 99
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DESCRIBED IN DIVISION (H)(1) OF THIS SECTION IMPRACTICABLE, THE 102
TRADEMARK IS PLACED IN ANY MANNER ON DOCUMENTS ASSOCIATED WITH 103
THE GOODS OR THE SALE OF THE GOODS, and the goods are sold or 105
otherwise distributed TRANSPORTED IN COMMERCE in this state. 106
(F) "Service mark" means a mark used in the sale or 108
advertising of services to identify the services of one person 109
and distinguish them from the services of others and includes 110
without limitation the marks, names, symbols, titles, 111
designations, slogans, character names, and distinctive features 112
of radio or other advertising used in commerce. 113
(G)(I) A service mark shall be considered "used" in this 115
state when it BOTH OF THE FOLLOWING APPLY: 116
(1) THE SERVICE MARK is used to identify the services of 118
one person and TO distinguish them from the services of others 120
and the OTHER PERSONS.
(2) THE services OF THAT PERSON are sold or otherwise 123
rendered in this state. 124
(J) A MARK SHALL BE CONSIDERED "ABANDONED" WHEN EITHER OF 127
THE FOLLOWING OCCURS:
(1) ITS USE HAS BEEN DISCONTINUED WITH THE INTENT NOT TO 129
RESUME THAT USE. AN "INTENT NOT TO RESUME THAT USE" MAY BE 131
INFERRED FROM THE CIRCUMSTANCES, AND NONUSE OF A MARK FOR THREE 132
CONSECUTIVE YEARS CONSTITUTES PRIMA-FACIE EVIDENCE OF THAT 133
INTENT.
(2) ANY COURSE OF CONDUCT BY THE OWNER OF THE MARK, 135
INCLUDING ACTIONS AND OMISSIONS, CAUSES THE MARK TO LOSE ITS 136
SIGNIFICANCE AS A MARK. 137
Sec. 1329.55. A trade-mark TRADEMARK or service mark by 146
which the goods or services of any applicant for registration may 148
be distinguished from the goods or services of others OTHER 149
PERSONS shall not be registered if it consists of or comprises 150
any one or more of the following: 151
(A) Immoral, deceptive, or scandalous matter; 153
(B) Matter which THAT may disparage or falsely suggest a 155
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connection with persons, living or dead PERSONS, institutions, 157
beliefs, or national symbols, or bring them into contempt or 159
disrepute;
(C) The flag or, coat of arms, or other insignia of the 161
United States, or of any state or municipality, or of any foreign 163
nation, or any simulation thereof OF A FLAG, COAT OF ARMS, OR 164
OTHER INSIGNIA OF THOSE NATURES; 165
(D) The name, signature, or portrait of any living 167
individual, except with his THE INDIVIDUAL'S written consent; 168
(E) A (1) EXCEPT AS PROVIDED IN DIVISIONS (E)(2) AND (3) 171
OF THIS SECTION, A mark TO which ANY OF THE FOLLOWING APPLIES: 172
(1)(a) When applied to USED ON OR IN CONNECTION WITH the 175
goods or services of the applicant, THE MARK is merely 176
descriptive or deceptively misdescriptive of them; THOSE GOODS OR 177
SERVICES. 178
(2)(b) When applied to USED ON OR IN CONNECTION WITH the 181
goods or services of the applicant, THE MARK is primarily 182
geographically descriptive or deceptively misdescriptive of them; 183
THOSE GOODS OR SERVICES. 184
(3) Is (c) THE MARK IS primarily merely a surname; 186
provided, that nothing in division. 188
(2) DIVISION (E) of this section shall DOES NOT prevent 191
the registration of a mark used in this state by the applicant 193
which IF THAT MARK has become distinctive of the applicant's 194
goods or services. The secretary of state may accept as evidence 195
that the mark has become distinctive, as applied to USED ON OR IN 196
CONNECTION WITH the applicant's goods or services, proof of 197
substantially exclusive and continuous use thereof OF THE MARK as 199
a mark by the applicant in this state or elsewhere for the five 200
years next preceding the date of the filing of the application 201
for registration;.
(3) DIVISION (E)(1) OF THIS SECTION DOES NOT PREVENT THE 204
REGISTRATION OF A MARK THAT, WHEN USED ON OR IN CONNECTION WITH 206
THE GOODS OR SERVICES OF THE APPLICANT, IS PRIMARILY
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GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE OF THE GOODS OR 207
SERVICES IF THE MARK BECAME DISTINCTIVE OF THE APPLICANT'S GOODS 208
OR SERVICES IN COMMERCE PRIOR TO DECEMBER 8, 1993, THE DATE OF 209
ENACTMENT OF THE "NORTH AMERICAN FREE TRADE AGREEMENT 214
IMPLEMENTATION ACT," 107 STAT. 2057 (1993), 19 U.S.C. 3301 ET 218
SEQ.
(F) A trade-mark TRADEMARK or service mark which THAT so 221
resembles a trade-mark TRADEMARK or service mark registered in 222
this state or a trade-mark TRADEMARK, service mark, corporate 223
name, or trade name previously used in this state by another 224
PERSON and not abandoned BY THAT PERSON, as likely, when applied 227
to USED ON OR IN CONNECTION WITH the goods or services of the 228
applicant, to cause confusion or mistake or to deceive; 229
(G) A trade-mark (1) EXCEPT AS PROVIDED IN DIVISION 232
(G)(2) OF THIS SECTION, A TRADEMARK or service mark which THAT so 233
resembles a trade-mark TRADEMARK or service mark registered in 234
the United States patent AND TRADEMARK office by another PERSON 235
and not abandoned BY THAT PERSON, OR A TRADEMARK OR SERVICE MARK 237
THAT IS THE SUBJECT OF A PENDING INTENT TO USE APPLICATION FILED 238
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BY ANOTHER 241
PERSON, as to be likely, when applied to USED ON OR IN CONNECTION 242
WITH the goods or services of the applicant, to cause confusion 244
or mistake or to deceive; provided, that should. 245
(2) IF THE applicant prove PROVES that he THE APPLICANT is 248
the owner of a concurrent registration in the United States 251
patent AND TRADEMARK office of his trade-mark THE APPLICANT'S 252
TRADEMARK or service mark covering an area including this state, 254
THE applicant may register his trade-mark THE APPLICANT'S 255
TRADEMARK or service mark in accordance with this section 258
SECTIONS 1329.54 TO 1329.67 OF THE REVISED CODE.
Sec. 1329.56. (A) Subject to the limitations set forth in 267
sections 1329.54 to 1329.67 of the Revised Code, any person who 268
adopts and uses a trademark or service mark in this state may 269
file in the office of the secretary of state, on a form to be 270
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prescribed by the secretary of state, an application for 271
registration of that trademark or service mark setting THAT SETS 272
forth, but IS not limited to, the following information: 274
(A)(1) The name and business address of the person 276
applying for the registration; and, if THE PERSON IS a 277
corporation, the state of ITS incorporation; IF THE PERSON IS A 279
PARTNERSHIP OR LIMITED LIABILITY PARTNERSHIP, THE STATE IN WHICH 280
THE PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL 281
PARTNERS; AND, IF THE PERSON IS A LIMITED LIABILITY COMPANY, THE 282
STATE OF ITS ORGANIZATION;
(B)(2) The goods or services ON OR in connection with 284
which the mark is used and, the mode or manner in which the mark 286
is used ON OR in connection with the goods or services, and the 288
class in which the goods or services fall; 289
(C)(3) The date when the trademark or service mark was 291
first used anywhere and the date when it was first used in this 293
state by the applicant or his THE APPLICANT'S predecessor in 294
business INTEREST; 295
(D)(4) A statement that the applicant is the owner of the 297
trademark or service mark, THAT THE MARK IS IN USE, and that, TO 300
THE KNOWLEDGE OF THE PERSON VERIFYING THE APPLICATION, no other 301
person has the right to use the trademark or service mark in the 302
state either in the identical form thereof OF THE MARK, or in 303
such near resemblance thereto TO THE MARK, as might be calculated 305
to deceive or be mistaken therefor TO BE LIKELY, WHEN USED ON OR 306
IN CONNECTION WITH THE GOODS OR SERVICES OF ANOTHER PERSON, TO 307
CAUSE CONFUSION OR MISTAKE OR TO DECEIVE; 308
(E)(5) A statement that, TO THE KNOWLEDGE OF THE PERSON 311
VERIFYING THE APPLICATION, no other person has a registration OR 312
A PENDING INTENT TO USE APPLICATION of the same or a confusingly 314
similar trademark or service mark in the United States patent AND 315
TRADEMARK office for the same or similar goods or services or a 317
statement that THE applicant is the owner of a concurrent 318
registration in the United States patent AND TRADEMARK office of 319
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his trademark or service THE APPLICANT'S mark covering an area 320
including this state. 321
(B) The application shall be signed and verified by the 323
applicant or by a member of the firm or an officer of the FIRM, 325
PARTNERSHIP, LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY
COMPANY, corporation, union, or association applying, OR OTHER 327
ORGANIZATION THAT IS THE APPLICANT. 328
(C) The application shall be accompanied by a specimen or 330
facsimile of the trademark or service mark as actually used and 331
shall contain a brief description of the trademark or service 332
mark as it appears on the specimen or facsimile. 333
(D) The application for registration shall be accompanied 335
by a filing fee of twenty dollars, THAT IS payable to the 337
secretary of state. 338
Sec. 1329.57. Upon compliance by the applicant with the 347
requirements of sections 1329.54 to 1329.67 of the Revised Code, 348
the secretary of state shall cause a certificate of registration 349
to be issued and delivered to the applicant. The certificate of 350
registration shall be issued under the signature of the secretary 351
of state and the seal of the secretary of state, and it shall 352
show the name and business address and, if a corporation, the 353
state of incorporation, OR, IF A PARTNERSHIP OR LIMITED LIABILITY 354
PARTNERSHIP, THE STATE IN WHICH THE PARTNERSHIP IS ORGANIZED AND 356
THE NAMES OF THE GENERAL PARTNERS, OR, IF A LIMITED LIABILITY 357
COMPANY, THE STATE OF ORGANIZATION, of the person claiming 358
ownership of the trademark or service mark, the date claimed for 359
the first use of the trademark or service mark anywhere and, the 360
date claimed for the first use of the trademark or service mark 361
in Ohio THIS STATE, the class of goods or services and the 363
description of the goods or services on OR IN CONNECTION WITH 364
which the trademark or service mark is used, the registration 365
date, and the term of the registration. One specimen or 366
facsimile of the trademark or service mark supplied under section 367
1329.56 of the Revised Code shall be attached to and made a part 368
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of the certificate of registration. 369
Any certificate of registration issued by the secretary of 371
state or a copy of the certificate duly certified by the 372
secretary of state shall be admissible in evidence IN ANY ACTION 373
OR PROCEEDING IN ANY COURT OF RECORD IN THIS STATE as competent 374
and sufficient proof of the registration of the trademark or 375
service mark in any action or judicial proceedings in any court 376
of Ohio. 377
Sec. 1329.58. Registration of a trademark or service mark 386
under sections 1329.54 to 1329.67 of the Revised Code shall be 387
effective for a term of ten years from the date of registration 388
and, upon. UPON THE FILING OF AN application filed within six 389
months prior to the expiration of such THAT term, on a form 391
furnished by the secretary of state, the REGISTRANT MAY RENEW THE 392
registration may be renewed at the end of each ten-year period 394
for a like SIMILAR term. A renewal fee of ten dollars, THAT IS 395
payable to the secretary of state, shall accompany the RENEWAL 396
application for renewal of the registration. THE RENEWAL 398
APPLICATION SHALL REQUIRE THE APPLICANT TO STATE THAT THE MARK 400
STILL IS IN USE IN THIS STATE.
The secretary of state shall notify the registrants of 402
trademarks or service marks of the necessity of renewal within 404
the year next preceding the expiration of the ten years from the 405
date of registration by writing to the last known address of the 406
registrants.
Sec. 1329.62. The secretary of state shall cancel from the 415
register THE FOLLOWING TYPES OF REGISTRATIONS: 416
(A) Any registration concerning which the secretary of 418
state receives a voluntary request in writing, on a form 419
prescribed by the secretary of state, for cancellation of the 421
registration from the registrant or the assignee of record;
(B) Any registration THAT IS granted under sections 423
1329.54 to 1329.67 of the Revised Code, AND THAT IS not renewed 424
in accordance with the provisions thereof THOSE SECTIONS; 426
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(C) Any registration concerning which the secretary of 428
state or a court of competent jurisdiction finds that ANY OF THE 429
FOLLOWING APPLIES: 430
(1) The registered trademark or service mark has been 432
abandoned;. 433
(2) The registrant is not the owner of the trademark or 435
service mark;. 436
(3) The registration was granted improperly;. 438
(4) The registration was obtained fraudulently;. 440
(5) The (a) EXCEPT AS PROVIDED IN DIVISION (C)(5)(b) OF 443
THIS SECTION, THE registered trademark or service mark is so 444
similar, as to be likely to cause confusion or mistake or to 445
deceive, to a trademark or service mark THAT WAS registered by 446
another person in the United States patent AND TRADEMARK office, 448
WITH EITHER A PRIORITY DATE OR FIRST USE DATE prior to the date 450
of the filing of the application for registration by the 451
registrant hereunder, UNDER SECTIONS 1329.54 TO 1329.67 OF THE 452
REVISED CODE and THAT HAS not BEEN abandoned; provided, that 454
should AS TO BE LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO 455
DECEIVE.
(b) DIVISION (C)(5)(a) OF THIS SECTION DOES NOT REQUIRE 458
THE CANCELLATION OF A MARK IF the registrant prove PROVES that 460
the registrant is the owner of a concurrent registration of the 461
registrant's trademark or service mark in the United States 463
patent AND TRADEMARK office covering an area including this 464
state, the registration mentioned in this section shall not be 465
cancelled.
(6) A TRADEMARK OR SERVICE MARK IS OR HAS BECOME THE 468
GENERIC NAME FOR THE GOODS OR SERVICES, OR A PORTION OF THE GOODS 469
OR SERVICES, FOR WHICH THE MARK IS OR HAS BEEN REGISTERED.
(D) Any registration of which a court of competent 471
jurisdiction orders cancellation on any ground. 472
Sec. 1329.63. The secretary of state shall establish FOR 481
CONVENIENCE OF ADMINISTRATION a classification of goods or 483
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services THAT IS in conformity with the classification
established by the commissioner of patents AND TRADEMARKS under 485
15 U.S.C. 1112, for convenience of administration, but THAT DOES 487
not limit or extend the applicant's or registrant's rights. A 489
single application for registration of a trade-mark TRADEMARK or 490
service mark may include any or all goods and services comprised 491
in a single class upon ON OR IN CONNECTION WITH which the 493
trade-mark TRADEMARK or service mark is actually being used, but 494
in no event shall a single application SHALL NOT include goods or 495
services which THAT fall within different classes upon ON OR IN 498
CONNECTION WITH which the trade-mark TRADEMARK or service mark is 500
being used.
Sec. 1329.67. Nothing herein shall SECTIONS 1329.54 TO 510
1329.67 OF THE REVISED CODE DO NOT adversely affect the rights or 511
the enforcement of rights in trade-marks TRADEMARKS or service 512
marks acquired in good faith at any time at common law PRIOR TO 513
ANY OF THE FOLLOWING TIMES: 514
(A) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THIS STATE 517
OF A TRADEMARK OR SERVICE MARK, WITH THE REGISTRANT HAVING A 518
SUBSEQUENT FIRST USE DATE;
(B) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 522
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 523
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT FIRST USE DATE; 524
(C) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 528
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 529
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT PRIORITY DATE. 530
Section 2. That existing sections 1329.54, 1329.55, 532
1329.56, 1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 of the 533
Revised Code are hereby repealed.