As Reported by the Senate Judiciary 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
GRENDELL-SALERNO-BENDER-OPFER-VERICH- 10
SENATORS CUPP-LATTA-BLESSING 11
13
A B I L L
To amend sections 1329.54, 1329.55, 1329.56, 15
1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 16
of the Revised Code to revise the definitions of 17
trademark and service mark in the Ohio Trademark 18
Law, to modify the procedures for registering a 19
trademark or service mark, and to make other 20
changes to the Ohio Trademark Law. 21
BE IT ENACTED BY THE GENERAL ASSEMBLY OF THE STATE OF OHIO: 23
Section 1. That sections 1329.54, 1329.55, 1329.56, 25
1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 of the Revised 26
Code be amended to read as follows: 27
Sec. 1329.54. As used in sections 1329.54 to 1329.67 of 36
the Revised Code: 37
(A) "Trademark" means any word, name, symbol, or device, 39
or any combination thereof OF ANY WORD, NAME, SYMBOL, OR DEVICE, 40
THAT IS adopted and used by a person to identify goods made or 42
sold by him, and to distinguish them from THE goods made or sold 44
by others OF THAT PERSON, INCLUDING A UNIQUE PRODUCT, FROM THE 45
GOODS OF OTHER PERSONS, AND TO INDICATE THE SOURCE OF THE GOODS, 46
EVEN IF THAT SOURCE IS UNKNOWN. 47
(B) "SERVICE MARK" MEANS ANY WORD, NAME, SYMBOL, DEVICE, 49
OR COMBINATION OF ANY WORD, NAME, SYMBOL, OR DEVICE, THAT IS 50
ADOPTED AND USED BY A PERSON TO IDENTIFY AND DISTINGUISH THE 51
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SERVICES OF THAT PERSON, INCLUDING A UNIQUE SERVICE, FROM THE 52
SERVICES OF OTHER PERSONS AND TO INDICATE THE SOURCE OF THE 53
SERVICES, EVEN IF THAT SOURCE IS UNKNOWN. "SERVICE MARK" 54
INCLUDES TITLES, CHARACTER NAMES USED BY A PERSON, AND OTHER 55
DISTINCTIVE FEATURES OF RADIO OR TELEVISION PROGRAMS EVEN IF A 57
RADIO OR TELEVISION PROGRAM OR A TITLE, CHARACTER NAME, OR OTHER 58
DISTINCTIVE FEATURE OF A RADIO OR TELEVISION PROGRAM ADVERTISES
THE GOODS OF THE SPONSOR OF THAT RADIO OR TELEVISION PROGRAM. 60
(C) "MARK" MEANS ANY TRADEMARK OR SERVICE MARK THAT IS 63
ENTITLED TO REGISTRATION UNDER SECTIONS 1329.54 TO 1329.67 OF THE 64
REVISED CODE WHETHER OR NOT IT IS REGISTERED.
(D) "Person" means any individual, firm, partnership, 66
LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY COMPANY, 67
corporation, association, union of working men, or other 68
organization THAT IS CAPABLE OF SUING OR BEING SUED IN A COURT OF 69
RECORD IN THIS STATE. 70
(C)(E) "Applicant" includes MEANS the person filing an 73
application for registration of a trademark or service mark under 74
sections 1329.54 to 1329.67 of the Revised Code and his THE 75
PERSON'S legal representatives, successors, or assigns. 77
(D)(F) "Registrant" includes MEANS the person to whom the 80
registration of a trademark or service mark is issued, under 81
sections 1329.54 to 1329.67 of the Revised Code and his THE 82
PERSON'S legal representatives, successors, or assigns. 84
(E)(G) "USE" MEANS THE BONA FIDE USE OF A MARK IN THE 87
ORDINARY COURSE OF TRADE AND NOT THE MAKING USE OF A MARK MERELY
TO RESERVE A RIGHT IN A MARK. 88
(H) A trademark shall be considered "used" in this state 90
when it EITHER OF THE FOLLOWING APPLIES: 91
(1) THE TRADEMARK is placed in any manner on the goods or 93
their containers or, ON DISPLAYS ASSOCIATED WITH GOODS OR THEIR 95
CONTAINERS, OR on the tags or labels affixed to the goods or 96
THEIR containers, AND THE GOODS ARE SOLD OR TRANSPORTED IN 97
COMMERCE IN THIS STATE. 98
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(2) IF THE NATURE OF GOODS MAKES THE TYPES OF PLACEMENT 100
DESCRIBED IN DIVISION (H)(1) OF THIS SECTION IMPRACTICABLE, THE 103
TRADEMARK IS PLACED IN ANY MANNER ON DOCUMENTS ASSOCIATED WITH 104
THE GOODS OR THE SALE OF THE GOODS, and the goods are sold or 106
otherwise distributed TRANSPORTED IN COMMERCE in this state. 107
(F) "Service mark" means a mark used in the sale or 109
advertising of services to identify the services of one person 110
and distinguish them from the services of others and includes 111
without limitation the marks, names, symbols, titles, 112
designations, slogans, character names, and distinctive features 113
of radio or other advertising used in commerce. 114
(G)(I) A service mark shall be considered "used" in this 116
state when it BOTH OF THE FOLLOWING APPLY: 117
(1) THE SERVICE MARK is used to identify the services of 119
one person and TO distinguish them from the services of others 121
and the OTHER PERSONS.
(2) THE services OF THAT PERSON are sold or otherwise 124
rendered in this state. 125
(J) A MARK SHALL BE CONSIDERED "ABANDONED" WHEN EITHER OF 128
THE FOLLOWING OCCURS:
(1) ITS USE HAS BEEN DISCONTINUED WITH THE INTENT NOT TO 130
RESUME THAT USE. AN "INTENT NOT TO RESUME THAT USE" MAY BE 132
INFERRED FROM THE CIRCUMSTANCES, AND NONUSE OF A MARK FOR THREE 133
CONSECUTIVE YEARS CONSTITUTES PRIMA-FACIE EVIDENCE OF THAT 134
INTENT.
(2) ANY COURSE OF CONDUCT BY THE OWNER OF THE MARK, 136
INCLUDING ACTIONS AND OMISSIONS, CAUSES THE MARK TO LOSE ITS 137
SIGNIFICANCE AS A MARK. 138
Sec. 1329.55. A trade-mark TRADEMARK or service mark by 147
which the goods or services of any applicant for registration may 149
be distinguished from the goods or services of others OTHER 150
PERSONS shall not be registered if it consists of or comprises 151
any one or more of the following: 152
(A) Immoral, deceptive, or scandalous matter; 154
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(B) Matter which THAT may disparage or falsely suggest a 156
connection with persons, living or dead PERSONS, institutions, 158
beliefs, or national symbols, or bring them into contempt or 160
disrepute;
(C) The flag or, coat of arms, or other insignia of the 162
United States, or of any state or municipality, or of any foreign 164
nation, or any simulation thereof OF A FLAG, COAT OF ARMS, OR 165
OTHER INSIGNIA OF THOSE NATURES; 166
(D) The name, signature, or portrait of any living 168
individual, except with his THE INDIVIDUAL'S written consent; 169
(E) A (1) EXCEPT AS PROVIDED IN DIVISIONS (E)(2) AND (3) 172
OF THIS SECTION, A mark TO which ANY OF THE FOLLOWING APPLIES: 173
(1)(a) When applied to USED ON OR IN CONNECTION WITH the 176
goods or services of the applicant, THE MARK is merely 177
descriptive or deceptively misdescriptive of them; THOSE GOODS OR 178
SERVICES. 179
(2)(b) When applied to USED ON OR IN CONNECTION WITH the 182
goods or services of the applicant, THE MARK is primarily 183
geographically descriptive or deceptively misdescriptive of them; 184
THOSE GOODS OR SERVICES. 185
(3) Is (c) THE MARK IS primarily merely a surname; 187
provided, that nothing in division. 189
(2) DIVISION (E) of this section shall DOES NOT prevent 192
the registration of a mark used in this state by the applicant 194
which IF THAT MARK has become distinctive of the applicant's 195
goods or services. The secretary of state may accept as evidence 196
that the mark has become distinctive, as applied to USED ON OR IN 197
CONNECTION WITH the applicant's goods or services, proof of 198
substantially exclusive and continuous use thereof OF THE MARK as 200
a mark by the applicant in this state or elsewhere for the five 201
years next preceding the date of the filing of the application 202
for registration;.
(3) DIVISION (E)(1) OF THIS SECTION DOES NOT PREVENT THE 205
REGISTRATION OF A MARK THAT, WHEN USED ON OR IN CONNECTION WITH 207
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THE GOODS OR SERVICES OF THE APPLICANT, IS PRIMARILY
GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE OF THE GOODS OR 208
SERVICES IF THE MARK BECAME DISTINCTIVE OF THE APPLICANT'S GOODS 209
OR SERVICES IN COMMERCE PRIOR TO DECEMBER 8, 1993, THE DATE OF 210
ENACTMENT OF THE "NORTH AMERICAN FREE TRADE AGREEMENT 215
IMPLEMENTATION ACT," 107 STAT. 2057 (1993), 19 U.S.C. 3301 ET 219
SEQ.
(F) A trade-mark TRADEMARK or service mark which THAT so 222
resembles a trade-mark TRADEMARK or service mark registered in 223
this state or a trade-mark, TRADEMARK OR service mark, corporate 224
name, or trade name previously used in this state by another 225
PERSON and not abandoned BY THAT PERSON, as likely, when applied 229
to USED ON OR IN CONNECTION WITH the goods or services of the 230
applicant, to cause confusion or mistake or to deceive; 231
(G) A trade-mark (1) EXCEPT AS PROVIDED IN DIVISION 234
(G)(2) OF THIS SECTION, A TRADEMARK or service mark which THAT so 235
resembles a trade-mark TRADEMARK or service mark registered in 236
the United States patent AND TRADEMARK office by another PERSON 237
and not abandoned BY THAT PERSON, OR A TRADEMARK OR SERVICE MARK 239
THAT IS THE SUBJECT OF A PENDING INTENT TO USE APPLICATION FILED 240
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BY ANOTHER 243
PERSON, as to be likely, when applied to USED ON OR IN CONNECTION 244
WITH the goods or services of the applicant, to cause confusion 246
or mistake or to deceive; provided, that should. 247
(2) IF THE applicant prove PROVES that he THE APPLICANT is 250
the owner of a concurrent registration in the United States 253
patent AND TRADEMARK office of his trade-mark THE APPLICANT'S 254
TRADEMARK or service mark covering an area including this state, 256
THE applicant may register his trade-mark THE APPLICANT'S 257
TRADEMARK or service mark in accordance with this section 260
SECTIONS 1329.54 TO 1329.67 OF THE REVISED CODE.
Sec. 1329.56. (A) Subject to the limitations set forth in 269
sections 1329.54 to 1329.67 of the Revised Code, any person who 270
adopts and uses a trademark or service mark in this state may 271
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file in the office of the secretary of state, on a form to be 272
prescribed by the secretary of state, an application for 273
registration of that trademark or service mark setting THAT SETS 274
forth, but IS not limited to, the following information: 276
(A)(1) The name and business address of the person 278
applying for the registration; and, if THE PERSON IS a 279
corporation, the state of ITS incorporation; IF THE PERSON IS A 281
PARTNERSHIP OR LIMITED LIABILITY PARTNERSHIP, THE STATE IN WHICH 282
THE PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL 283
PARTNERS; AND, IF THE PERSON IS A LIMITED LIABILITY COMPANY, THE 284
STATE OF ITS ORGANIZATION;
(B)(2) The goods or services ON OR in connection with 286
which the mark is used and, the mode or manner in which the mark 288
is used ON OR in connection with the goods or services, and the 290
class in which the goods or services fall; 291
(C)(3) The date when the trademark or service mark was 293
first used anywhere and the date when it was first used in this 295
state by the applicant or his THE APPLICANT'S predecessor in 296
business INTEREST; 297
(D)(4) A statement that the applicant is the owner of the 299
trademark or service mark, THAT THE MARK IS IN USE, and that, TO 302
THE KNOWLEDGE OF THE PERSON VERIFYING THE APPLICATION, no other 303
person has the right to use the trademark or service mark in the 304
state either in the identical form thereof OF THE MARK, or in 305
such near resemblance thereto TO THE MARK, as might be calculated 307
to deceive or be mistaken therefor TO BE LIKELY, WHEN USED ON OR 308
IN CONNECTION WITH THE GOODS OR SERVICES OF ANOTHER PERSON, TO 309
CAUSE CONFUSION OR MISTAKE OR TO DECEIVE; 310
(E)(5) A statement that, TO THE KNOWLEDGE OF THE PERSON 313
VERIFYING THE APPLICATION, no other person has a registration OR 314
A PENDING INTENT TO USE APPLICATION of the same or a confusingly 316
similar trademark or service mark in the United States patent AND 317
TRADEMARK office for the same or similar goods or services or a 319
statement that THE applicant is the owner of a concurrent 320
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registration in the United States patent AND TRADEMARK office of 321
his trademark or service THE APPLICANT'S mark covering an area 322
including this state. 323
(B) The application shall be signed and verified by the 325
applicant or by a member of the firm or an officer of the FIRM, 327
PARTNERSHIP, LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY
COMPANY, corporation, union, or association applying, OR OTHER 329
ORGANIZATION THAT IS THE APPLICANT. 330
(C) The application shall be accompanied by a specimen or 332
facsimile of the trademark or service mark as actually used and 333
shall contain a brief description of the trademark or service 334
mark as it appears on the specimen or facsimile. 335
(D) The application for registration shall be accompanied 337
by a filing fee of twenty dollars, THAT IS payable to the 339
secretary of state. 340
Sec. 1329.57. Upon compliance by the applicant with the 349
requirements of sections 1329.54 to 1329.67 of the Revised Code, 350
the secretary of state shall cause a certificate of registration 351
to be issued and delivered to the applicant. The certificate of 352
registration shall be issued under the signature of the secretary 353
of state and the seal of the secretary of state, and it shall 354
show the name and business address and, if a corporation, the 355
state of incorporation, OR, IF A PARTNERSHIP OR LIMITED LIABILITY 356
PARTNERSHIP, THE STATE IN WHICH THE PARTNERSHIP IS ORGANIZED AND 358
THE NAMES OF THE GENERAL PARTNERS, OR, IF A LIMITED LIABILITY 359
COMPANY, THE STATE OF ORGANIZATION, of the person claiming 360
ownership of the trademark or service mark, the date claimed for 361
the first use of the trademark or service mark anywhere and, the 362
date claimed for the first use of the trademark or service mark 363
in Ohio THIS STATE, the class of goods or services and the 365
description of the goods or services on OR IN CONNECTION WITH 366
which the trademark or service mark is used, the registration 367
date, and the term of the registration. One specimen or 368
facsimile of the trademark or service mark supplied under section 369
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1329.56 of the Revised Code shall be attached to and made a part 370
of the certificate of registration. 371
Any certificate of registration issued by the secretary of 373
state or a copy of the certificate duly certified by the 374
secretary of state shall be admissible in evidence IN ANY ACTION 375
OR PROCEEDING IN ANY COURT OF RECORD IN THIS STATE as competent 376
and sufficient proof of the registration of the trademark or 377
service mark in any action or judicial proceedings in any court 378
of Ohio. 379
Sec. 1329.58. Registration of a trademark or service mark 388
under sections 1329.54 to 1329.67 of the Revised Code shall be 389
effective for a term of ten years from the date of registration 390
and, upon. UPON THE FILING OF AN application filed within six 391
months prior to the expiration of such THAT term, on a form 393
furnished by the secretary of state, the REGISTRANT MAY RENEW THE 394
registration may be renewed at the end of each ten-year period 396
for a like SIMILAR term. A renewal fee of ten dollars, THAT IS 397
payable to the secretary of state, shall accompany the RENEWAL 398
application for renewal of the registration. THE RENEWAL 400
APPLICATION SHALL REQUIRE THE APPLICANT TO STATE THAT THE MARK 402
STILL IS IN USE IN THIS STATE.
The secretary of state shall notify the registrants of 404
trademarks or service marks of the necessity of renewal within 406
the year next preceding the expiration of the ten years from the 407
date of registration by writing to the last known address of the 408
registrants.
Sec. 1329.62. The secretary of state shall cancel from the 417
register THE FOLLOWING TYPES OF REGISTRATIONS: 418
(A) Any registration concerning which the secretary of 420
state receives a voluntary request in writing, on a form 421
prescribed by the secretary of state, for cancellation of the 423
registration from the registrant or the assignee of record;
(B) Any registration THAT IS granted under sections 425
1329.54 to 1329.67 of the Revised Code, AND THAT IS not renewed 426
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in accordance with the provisions thereof THOSE SECTIONS; 428
(C) Any registration concerning which the secretary of 430
state or a court of competent jurisdiction finds that ANY OF THE 431
FOLLOWING APPLIES: 432
(1) The registered trademark or service mark has been 434
abandoned;. 435
(2) The registrant is not the owner of the trademark or 437
service mark;. 438
(3) The registration was granted improperly;. 440
(4) The registration was obtained fraudulently;. 442
(5) The (a) EXCEPT AS PROVIDED IN DIVISION (C)(5)(b) OF 445
THIS SECTION, THE registered trademark or service mark is so 446
similar, as to be likely to cause confusion or mistake or to 447
deceive, to a trademark or service mark THAT WAS registered by 448
another person in the United States patent AND TRADEMARK office, 450
WITH EITHER A PRIORITY DATE OR FIRST USE DATE prior to the date 452
of the filing of the application for registration by the 453
registrant hereunder, UNDER SECTIONS 1329.54 TO 1329.67 OF THE 454
REVISED CODE and THAT HAS not BEEN abandoned; provided, that 456
should AS TO BE LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO 457
DECEIVE.
(b) DIVISION (C)(5)(a) OF THIS SECTION DOES NOT REQUIRE 460
THE CANCELLATION OF A MARK IF the registrant prove PROVES that 462
the registrant is the owner of a concurrent registration of the 463
registrant's trademark or service mark in the United States 465
patent AND TRADEMARK office covering an area including this 466
state, the registration mentioned in this section shall not be 467
cancelled.
(6) A TRADEMARK OR SERVICE MARK IS OR HAS BECOME THE 470
GENERIC NAME FOR THE GOODS OR SERVICES, OR A PORTION OF THE GOODS 471
OR SERVICES, FOR WHICH THE MARK IS OR HAS BEEN REGISTERED.
(D) Any registration of which a court of competent 473
jurisdiction orders cancellation on any ground. 474
Sec. 1329.63. The secretary of state shall establish FOR 483
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CONVENIENCE OF ADMINISTRATION a classification of goods or 485
services THAT IS in conformity with the classification
established by the commissioner of patents AND TRADEMARKS under 487
15 U.S.C. 1112, for convenience of administration, but THAT DOES 489
not limit or extend the applicant's or registrant's rights. A 491
single application for registration of a trade-mark TRADEMARK or 492
service mark may include any or all goods and services comprised 493
in a single class upon ON OR IN CONNECTION WITH which the 495
trade-mark TRADEMARK or service mark is actually being used, but 496
in no event shall a single application SHALL NOT include goods or 497
services which THAT fall within different classes upon ON OR IN 500
CONNECTION WITH which the trade-mark TRADEMARK or service mark is 502
being used.
Sec. 1329.67. Nothing herein shall SECTIONS 1329.54 TO 512
1329.67 OF THE REVISED CODE DO NOT adversely affect the rights or 513
the enforcement of rights in trade-marks TRADEMARKS or service 514
marks acquired in good faith at any time at common law PRIOR TO 515
ANY OF THE FOLLOWING TIMES: 516
(A) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THIS STATE 519
OF A TRADEMARK OR SERVICE MARK, WITH THE REGISTRANT HAVING A 520
SUBSEQUENT FIRST USE DATE;
(B) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 524
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 525
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT FIRST USE DATE; 526
(C) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 530
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 531
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT PRIORITY DATE. 532
Section 2. That existing sections 1329.54, 1329.55, 534
1329.56, 1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 of the 535
Revised Code are hereby repealed.