As Passed by the Senate 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
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 trademark or service mark by which the 148
goods or services of any applicant for registration may be 149
distinguished from the goods or services of others OTHER PERSONS 150
shall not be registered if it consists of or comprises any one or 151
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 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 trademark or service mark which THAT so resembles a 222
trademark or service mark registered in this state or a 223
trademark, or service mark, corporate name, limited liability 224
company name, limited liability partnership name, limited 225
partnership name, or trade name previously used in this state by 226
another PERSON and not abandoned BY THAT PERSON, as likely, when 230
applied to USED ON OR IN CONNECTION WITH the goods or services of 231
the applicant, to cause confusion or mistake or to deceive; 232
(G) A (1) EXCEPT AS PROVIDED IN DIVISION (G)(2) OF THIS 235
SECTION, A trademark or service mark which THAT so resembles a 236
trademark or service mark registered in the United States patent 237
AND TRADEMARK office by another PERSON and not abandoned BY THAT 239
PERSON, OR A TRADEMARK OR SERVICE MARK THAT IS THE SUBJECT OF A 240
PENDING INTENT TO USE APPLICATION FILED IN THE UNITED STATES 243
PATENT AND TRADEMARK OFFICE BY ANOTHER PERSON, as to be likely, 245
when applied to USED ON OR IN CONNECTION WITH the goods or 246
services of the applicant, to cause confusion or mistake or to 247
deceive; provided, that should. 248
(2) IF the applicant prove PROVES that the applicant is 251
the owner of a concurrent registration in the United States 254
patent AND TRADEMARK office of the applicant's trademark or 255
service mark covering an area including this state, the applicant 257
may register the applicant's trademark or service mark in 260
accordance with this section SECTIONS 1329.54 TO 1329.67 OF THE 261
REVISED CODE.
Sec. 1329.56. (A) Subject to the limitations set forth in 270
sections 1329.54 to 1329.67 of the Revised Code, any person who 271
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adopts and uses a trademark or service mark in this state may 272
file in the office of the secretary of state, on a form to be 273
prescribed by the secretary of state, an application for 274
registration of that trademark or service mark setting THAT SETS 275
forth, but IS not limited to, the following information: 277
(A)(1) The name and business address of the person 279
applying for the registration; and, if THE PERSON IS a 280
corporation, the state of ITS incorporation; IF THE PERSON IS A 282
PARTNERSHIP OR LIMITED LIABILITY PARTNERSHIP, THE STATE IN WHICH 283
THE PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL 284
PARTNERS; AND, IF THE PERSON IS A LIMITED LIABILITY COMPANY, THE 285
STATE OF ITS ORGANIZATION;
(B)(2) The goods or services ON OR in connection with 287
which the mark is used and, the mode or manner in which the mark 289
is used ON OR in connection with the goods or services, and the 291
class in which the goods or services fall; 292
(C)(3) The date when the trademark or service mark was 294
first used anywhere and the date when it was first used in this 296
state by the applicant or the applicant's predecessor in business 298
INTEREST;
(D)(4) A statement that the applicant is the owner of the 300
trademark or service mark, THAT THE MARK IS IN USE, and that, TO 303
THE KNOWLEDGE OF THE PERSON VERIFYING THE APPLICATION, no other 304
person has the right to use the trademark or service mark in the 305
state either in the identical form thereof OF THE MARK, or in 306
such near resemblance thereto TO THE MARK, as might be calculated 308
to deceive or be mistaken therefor TO BE LIKELY, WHEN USED ON OR 309
IN CONNECTION WITH THE GOODS OR SERVICES OF ANOTHER PERSON, TO 310
CAUSE CONFUSION OR MISTAKE OR TO DECEIVE; 311
(E)(5) A statement that, TO THE KNOWLEDGE OF THE PERSON 314
VERIFYING THE APPLICATION, no other person has a registration OR 315
A PENDING INTENT TO USE APPLICATION of the same or a confusingly 317
similar trademark or service mark in the United States patent AND 318
TRADEMARK office for the same or similar goods or services or a 320
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statement that the applicant is the owner of a concurrent 321
registration in the United States patent AND TRADEMARK office of 322
the applicant's trademark or service mark covering an area 323
including this state. 324
(B) The application shall be signed and verified by the 326
applicant, by an authorized representative, OR BY AN OFFICER of 327
the firm, limited liability company, limited liability 328
partnership, general partnership, or limited partnership, or by 329
an officer of the corporation, union, or association applying, OR 330
OTHER ORGANIZATION THAT IS THE APPLICANT. 331
(C) The application shall be accompanied by a specimen of 334
the trademark or service mark as actually used and shall contain 335
a brief description of the trademark or service mark as it 336
appears on the specimen.
(D) The application for registration shall be accompanied 338
by a filing fee of twenty dollars, THAT IS payable to the 340
secretary of state. 341
Sec. 1329.57. Upon compliance by the applicant with the 350
requirements of sections 1329.54 to 1329.67 of the Revised Code, 351
the secretary of state shall cause a certificate of registration 352
to be issued and delivered to the applicant. The certificate of 353
registration shall be issued under the signature of the secretary 354
of state and the seal of the secretary of state, and it shall 355
show the name and business address and, if a corporation, the 356
state of incorporation, OR, IF A PARTNERSHIP OR LIMITED LIABILITY 357
PARTNERSHIP, THE STATE IN WHICH THE PARTNERSHIP IS ORGANIZED AND 359
THE NAMES OF THE GENERAL PARTNERS, OR, IF A LIMITED LIABILITY 360
COMPANY, THE STATE OF ORGANIZATION, of the person claiming 361
ownership of the trademark or service mark, the date claimed for 362
the first use of the trademark or service mark anywhere and, the 363
date claimed for the first use of the trademark or service mark 364
in Ohio THIS STATE, the class of goods or services and the 366
description of the goods or services on OR IN CONNECTION WITH 367
which the trademark or service mark is used, the registration 368
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date, and the term of the registration. One specimen or 369
facsimile of the trademark or service mark supplied under section 370
1329.56 of the Revised Code shall be attached to and made a part 371
of the certificate of registration. 372
Any certificate of registration issued by the secretary of 374
state or a copy of the certificate duly certified by the 375
secretary of state shall be admissible in evidence IN ANY ACTION 376
OR PROCEEDING IN ANY COURT OF RECORD IN THIS STATE as competent 377
and sufficient proof of the registration of the trademark or 378
service mark in any action or judicial proceedings in any court 379
of Ohio. 380
Sec. 1329.58. Registration of a trademark or service mark 389
under sections 1329.54 to 1329.67 of the Revised Code shall be 390
effective for a term of ten years from the date of registration 391
and, upon. UPON THE FILING OF AN application filed within six 392
months prior to the expiration of such THAT term, on a form 394
furnished by the secretary of state, the REGISTRANT MAY RENEW THE 395
registration may be renewed at the end of each ten-year period 397
for a like SIMILAR term. A renewal fee of ten dollars, THAT IS 398
payable to the secretary of state, shall accompany the RENEWAL 399
application for renewal of the registration. THE RENEWAL 401
APPLICATION SHALL REQUIRE THE APPLICANT TO STATE THAT THE MARK 403
STILL IS IN USE IN THIS STATE.
The secretary of state shall notify the registrants of 405
trademarks or service marks of the necessity of renewal within 407
the year next preceding the expiration of the ten years from the 408
date of registration by writing to the last known address of the 409
registrants.
Sec. 1329.62. The secretary of state shall cancel from the 418
register THE FOLLOWING TYPES OF REGISTRATIONS: 419
(A) Any registration that the secretary of state receives 422
a voluntary request in writing, on a form prescribed by the 423
secretary of state, for cancellation of the registration from the 424
registrant or the assignee of record;
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(B) Any registration THAT IS granted under sections 426
1329.54 to 1329.67 of the Revised Code, AND THAT IS not renewed 427
in accordance with the provisions thereof THOSE SECTIONS; 429
(C) Any registration that the secretary of state 432
CONCERNING WHICH A COURT OF COMPETENT JURISDICTION finds EITHER
OF THE FOLLOWING APPLIES: 435
(1) THE REGISTRATION was granted improperly;. 437
(2) A TRADEMARK OR SERVICE MARK IS OR HAS BECOME THE 440
GENERIC NAME FOR THE GOODS OR SERVICES, OR A PORTION OF THE GOODS 441
OR SERVICES, FOR WHICH THE MARK IS OR HAS BEEN REGISTERED.
(D) Any registration ordered canceled by a court of 443
competent jurisdiction on any ground. 444
Sec. 1329.63. The secretary of state shall establish FOR 453
CONVENIENCE OF ADMINISTRATION a classification of goods or 455
services THAT IS in conformity with the classification
established by the commissioner of patents AND TRADEMARKS under 457
15 U.S.C. 1112, for convenience of administration, but THAT DOES 459
not limit or extend the applicant's or registrant's rights. A 461
single application for registration of a trade-mark TRADEMARK or 462
service mark may include any or all goods and services comprised 463
in a single class upon ON OR IN CONNECTION WITH which the 465
trade-mark TRADEMARK or service mark is actually being used, but 466
in no event shall a single application SHALL NOT include goods or 467
services which THAT fall within different classes upon ON OR IN 470
CONNECTION WITH which the trade-mark TRADEMARK or service mark is 472
being used.
Sec. 1329.67. Nothing herein shall SECTIONS 1329.54 TO 482
1329.67 OF THE REVISED CODE DO NOT adversely affect the rights or 483
the enforcement of rights in trade-marks TRADEMARKS or service 484
marks acquired in good faith at any time at common law PRIOR TO 485
ANY OF THE FOLLOWING TIMES: 486
(A) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THIS STATE 489
OF A TRADEMARK OR SERVICE MARK, WITH THE REGISTRANT HAVING A 490
SUBSEQUENT FIRST USE DATE;
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(B) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 494
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 495
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT FIRST USE DATE; 496
(C) PRIOR TO ANOTHER PERSON'S REGISTRATION IN THE UNITED 500
STATES PATENT AND TRADEMARK OFFICE OF A TRADEMARK OR SERVICE 501
MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT PRIORITY DATE. 502
Section 2. That existing sections 1329.54, 1329.55, 504
1329.56, 1329.57, 1329.58, 1329.62, 1329.63, and 1329.67 of the 505
Revised Code are hereby repealed.