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As Introduced
122nd General Assembly
Regular Session
1997-1998 | H. B. No. 464 |
REPRESENTATIVES MASON-METELSKY-TAYLOR-SCHULER-TERWILLEGER-LEWIS-
KREBS-GARCIA-TIBERI-JONES-REID
A BILL
To amend sections 1329.54, 1329.55, 1329.56, 1329.57, 1329.58,
1329.62, and 1329.63 of the Revised Code to revise
the definitions of
trademark and service mark in the Ohio Trademark Law, to modify
the procedures for registering a trademark or service mark, and
to make other changes to the Ohio Trademark
Law.
BE IT ENACTED BY THE GENERAL ASSEMBLY OF THE STATE OF OHIO:
Section 1. That sections 1329.54, 1329.55, 1329.56, 1329.57, 1329.58,
1329.62, and 1329.63 of the Revised Code be amended to read as follows:
Sec. 1329.54. As used in sections 1329.54 to 1329.67 of
the Revised Code:
(A) "Trademark" means any word, name, symbol, or device or
any combination thereof adopted and used by a person to identify
goods made or sold by him, and to distinguish them
from THE goods
made or sold by others
OF THAT PERSON, INCLUDING A UNIQUE PRODUCT, FROM THE GOODS
OF OTHERS, AND TO INDICATE THE SOURCE OF THE GOODS, EVEN IF THAT
SOURCE IS UNKNOWN.
(B) "SERVICE MARK" MEANS ANY WORD, NAME, SYMBOL, DEVICE, OR
ANY COMBINATION OF WORDS, NAMES, SYMBOLS, OR DEVICES, ADOPTED AND
USED BY A PERSON TO IDENTIFY AND DISTINGUISH THE SERVICES OF ONE
PERSON, INCLUDING A UNIQUE SERVICE, FROM THE SERVICES OF OTHERS
AND TO INDICATE THE SOURCE OF THE SERVICES, EVEN IF THAT SOURCE
IS UNKNOWN. TITLES, CHARACTER NAMES USED BY A PERSON, AND OTHER
DISTINCTIVE FEATURES OF RADIO OR TELEVISION PROGRAMS MAY BE
REGISTERED AS SERVICE MARKS EVEN IF THE TITLE, CHARACTER NAME, OR
RADIO OR TELEVISION PROGRAM ADVERTISES THE GOODS OF THE SPONSOR
OF THAT RADIO OR TELEVISION PROGRAM.
(C) "MARK" INCLUDES ANY
TRADEMARK OR SERVICE MARK ENTITLED TO REGISTRATION UNDER THIS
CHAPTER WHETHER REGISTERED OR NOT.
(D) "Person" means any individual, firm, partnership,
LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY COMPANY,
corporation, association, union of working men WORKERS, or other
organization.
(C)(E) "Applicant" includes the person filing an application
for registration of a trademark or service mark under sections
1329.54 to 1329.67 of the Revised Code and his THE PERSON'S
legal
representatives, successors, or assigns.
(D)(F) "Registrant" includes the person to whom the
registration of a trademark or service mark is issued, under
sections 1329.54 to 1329.67 of the Revised Code and his THE
PERSON'S legal
representatives, successors, or assigns.
(E)(G) A trademark shall be considered "used" in this state
when it is placed in any manner on the goods or their containers
or, ON THE DISPLAYS ASSOCIATED WITH THE GOODS OR
CONTAINERS, on the tags or labels affixed to the goods or
containers, OR IF THE NATURE OF THE GOODS MAKES THAT PLACEMENT
IMPRACTICABLE, THEN ON DOCUMENTS ASSOCIATED WITH THE GOODS OR THE SALE OF THE
GOODS, and
the goods are sold or otherwise distributed TRANSPORTED IN
COMMERCE in this state.
(F) "Service mark" means a mark used in the sale or
advertising of services to identify the services of one person
and distinguish them from the services of others and includes
without limitation the marks, names, symbols, titles,
designations, slogans, character names, and distinctive features
of radio or other advertising used in commerce.
(G)(H) A service mark shall be considered "used" in this
state when it is used to identify the services of one person and
distinguish them from the services of others and the services are
sold or otherwise THAT ARE rendered in this state.
(I) A MARK SHALL BE CONSIDERED ABANDONED
WHEN EITHER OF THE FOLLOWING OCCURS:
(1) ITS USE HAS BEEN DISCONTINUED WITH THE INTENT NOT TO
RESUME THAT USE. AN INTENT NOT TO RESUME THE USE OF A MARK MAY
BE INFERRED FROM THE CIRCUMSTANCES, AND NONUSE OF A MARK FOR
TWO CONSECUTIVE YEARS CONSTITUTES PRIMA-FACIE EVIDENCE OF
ABANDONMENT.
(2) ANY COURSE OF CONDUCT BY THE OWNER OF THE MARK,
INCLUDING ACTS OF OMISSION, CAUSES THE MARK TO LOSE ITS
SIGNIFICANCE AS A MARK.
Sec. 1329.55. A trade-mark TRADEMARK or service mark by which
the goods or services of
any applicant for registration may be distinguished from the goods or services
of others OTHER PERSONS shall not be registered if it consists
of or comprises any one or
more of the following:
(A) Immoral, deceptive, or scandalous matter;
(B) Matter which THAT may disparage or falsely suggest a
connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring them into
contempt or disrepute;
(C) The flag or coat of arms or other insignia of the United States, or of
any state or municipality, or of any foreign nation, or any simulation
thereof;
(D) The name, signature, or portrait of any living individual, except with
his THE INDIVIDUAL'S written consent;
(E) A mark which THAT:
(1) When applied to USED ON OR IN CONNECTION WITH the goods or
services of the applicant, is merely
descriptive or deceptively misdescriptive of them THOSE GOODS OR
SERVICES;
(2) When applied to USED ON OR IN CONNECTION WITH the goods or
services of the applicant is primarily
geographically descriptive or deceptively misdescriptive of them
THOSE GOODS OR SERVICES;
(3) Is primarily merely a surname; provided HOWEVER,
that nothing in division (E) of
this section shall prevent the registration of a mark used in this state by
the applicant which THAT has become distinctive of the
applicant's goods or
services. The secretary of state may accept as evidence that the mark has
become distinctive, as applied to USED ON OR IN CONNECTION WITH
the applicant's goods or services, proof of
substantially exclusive and continuous use thereof as a mark by the applicant
in this state or elsewhere for the five years next preceding the date of the
filing of the application for registration;
(F) A trade-mark TRADEMARK or service mark which
THAT so resembles a trade-mark TRADEMARK or service
mark registered in this state or a trade-mark, TRADEMARK OR
service mark, corporate name,
or trade name previously used in this state by another and not abandoned,
as
likely, when applied to USED ON OR IN CONNECTION WITH the goods
or services of the applicant, to cause
confusion or mistake or to deceive;
(G) A trade-mark TRADEMARK or service mark which
THAT so resembles a trade-mark TRADEMARK or service
mark registered in the United States patent AND TRADEMARK office by
another and not
abandoned,
OR A TRADEMARK OR SERVICE MARK THAT IS THE SUBJECT OF A
PENDING INTENT TO USE APPLICATION FILED IN THE
UNITED
STATES PATENT AND TRADEMARK
OFFICE BY ANOTHER PERSON,
as to be likely, when applied to USED ON OR IN CONNECTION WITH
the goods or services of the
applicant, to cause confusion or mistake or to deceive; provided, that should
THE
applicant prove that he THE APPLICANT is the owner of a
concurrent registration in the
United States patent AND TRADEMARK office of his trade-mark
THE APPLICANT'S TRADEMARK or
service mark covering an area
including this state, THE applicant may register his trade-mark
THE APPLICANT'S TRADEMARK
or service mark
in
accordance with this section.
Sec. 1329.56. Subject to the limitations set forth in
sections 1329.54 to 1329.67 of the Revised Code, any person who
adopts and uses a trademark or service mark in this state may
file in the office of the secretary of state, on a form to be
prescribed by the secretary of state, an application for
registration of that trademark or service mark setting forth, but
not limited to, the following information:
(A) The name and business address of the person applying
for the registration; and, if a corporation, the state of
incorporation, OR, IF A PARTNERSHIP, THE STATE IN WHICH THE
PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL PARTNERS;
(B) The goods or services ON OR in connection with which the
mark is used and the mode or manner in which the mark is used ON OR in
connection with the goods or services and the class in which the
goods or services fall;
(C) The date when the trademark or service mark was first
used anywhere and the date when it was first used in this state
by the applicant or his THE APPLICANT'S predecessor in
business INTEREST;
(D) A statement that the applicant is the owner of the
trademark or service mark, THAT THE MARK IS IN USE, and
that, TO THE KNOWLEDGE OF THE PERSON VERIFYING THE
APPLICATION, no other person has the right
to use the trademark or service mark in the state either in the
identical form thereof, or in such near resemblance thereto, as
might be calculated to deceive or be mistaken therefor
TO BE LIKELY, WHEN APPLIED TO THE GOODS OR SERVICES OF
THAT OTHER PERSON, TO CAUSE CONFUSION OR MISTAKE OR TO
DECEIVE;
(E) A statement that, TO THE KNOWLEDGE OF THE PERSON VERIFYING THE
APPLICATION, no other person has a registration OR A PENDING
INTENT TO USE APPLICATION of
the same or a confusingly similar trademark or service mark in
the United States patent AND TRADEMARK office for the same or similar
goods or
services or a statement that THE applicant is the owner of a
concurrent registration in the United States patent AND TRADEMARK
office of his
THE APPLICANT'S
trademark or service mark covering an area including this state.
The application shall be signed and verified by the
applicant or by a member of the firm or an officer of the
corporation, union, or association applying.
The application shall be accompanied by a specimen or
facsimile of the trademark or service mark as actually used and
shall contain a brief description of the trademark or service
mark as it appears on the specimen or facsimile.
The application for registration shall be accompanied by a
filing fee of twenty dollars, payable to the secretary of state.
Sec. 1329.57. Upon compliance by the applicant with the
requirements of sections 1329.54 to 1329.67 of the Revised Code,
the secretary of state shall cause a certificate of registration
to be issued and delivered to the applicant. The certificate of
registration shall be issued under the signature of the secretary
of state and the seal of the secretary of state, and it shall
show the name and business address and, if a corporation, the
state of incorporation, OR IF A PARTNERSHIP, THE STATE IN WHICH THE
PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL PARTNERS, of
the person claiming ownership of the
trademark or service mark, the date claimed for the first use of
the trademark or service mark anywhere and the date claimed for
the first use of the trademark or service mark in Ohio, the class
of goods or services and the description of the goods or services
on OR IN CONNECTION WITH which the trademark or service mark is used,
the registration
date, and the term of the registration. One specimen or
facsimile of the trademark or service mark supplied under section
1329.56 of the Revised Code shall be attached to and made a part
of the certificate of registration.
Any certificate of registration issued by the secretary of
state or a copy of the certificate duly certified by the
secretary of state shall be admissible in evidence as competent
and sufficient proof of the registration of the trademark or
service mark in any action or judicial proceedings in any court
of Ohio.
Sec. 1329.58. Registration of a trademark or service mark under sections
1329.54 to 1329.67 of the Revised Code shall be effective for a term of ten
years from the date of registration and, upon application filed within six
months prior to the expiration of such term, on a form furnished by the
secretary of state, the registration may be renewed at the end of each
ten-year period for a like term. A renewal fee of ten dollars, payable to the
secretary of state, shall accompany the application for renewal of the
registration. THE RENEWAL APPLICATION SHALL REQUIRE THE APPLICANT TO STATE
THAT THE MARK STILL IS IN USE IN THIS STATE.
The secretary of state shall notify the registrants of trademarks or
service
marks of the necessity of renewal within the year next preceding the
expiration of the ten years from the date of registration by writing to the
last known address of the registrants.
Sec. 1329.62. The secretary of state shall cancel from the
register:
(A) Any registration concerning which the secretary of
state receives a voluntary request in writing, on a form prescribed
by the secretary of state, for cancellation of
the registration from the registrant or the assignee of record;
(B) Any registration granted under sections 1329.54 to
1329.67 of the Revised Code, not renewed in accordance with the
provisions thereof;
(C) Any registration concerning which the secretary of
state or a court of competent jurisdiction finds that:
(1) The registered trademark or service mark has been
abandoned;
(2) The registrant is not the owner of the trademark or
service mark;
(3) The registration was granted improperly;
(4) The registration was obtained fraudulently;
(5) The registered trademark or service mark is so
similar, as to be likely to cause confusion or mistake or to
deceive, to a trademark or service mark registered by another
person in the United States patent AND TRADEMARK office, prior to the
date of
the filing of the application for registration by the registrant
hereunder, and not abandoned; provided HOWEVER, that
should the
registrant prove that the registrant is the owner of a
concurrent registration of the registrant's trademark or
service mark in the United
States patent AND TRADEMARK office covering an area including this
state, the
registration mentioned in this section shall not be cancelled.
(D) Any registration of which a court of competent
jurisdiction orders cancellation on any ground.
Sec. 1329.63. The secretary of state shall establish a classification of
goods or services in conformity with the classification established by the
commissioner of patents under 15 U.S.C. 1112, for convenience of
administration, but not limit or extend the applicant's or registrant's
rights. A single application for registration of a trade-mark
TRADEMARK or service mark
may include any or all goods and services comprised in a single class
upon ON OR IN CONNECTION WITH
which the trade-mark TRADEMARK or service mark is actually being
used, but in no event
shall a single application include goods or services which THAT
fall within
different classes upon which the trade-mark TRADEMARK or service
mark is being used.
Section 2. That existing sections 1329.54, 1329.55, 1329.56, 1329.57, 1329.58,
1329.62, and 1329.63 of the Revised Code are hereby repealed.
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