130th Ohio General Assembly
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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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