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As Reported by the Senate Judiciary Committee
122nd General Assembly
Regular Session
1997-1998 | Sub. H. B. No. 464 |
REPRESENTATIVES MASON-METELSKY-TAYLOR-SCHULER-TERWILLEGER-LEWIS-
KREBS-GARCIA-TIBERI-JONES-REID-KASPUTIS-WOMER BENJAMIN-
GRENDELL-SALERNO-BENDER-OPFER-VERICH-
SENATORS CUPP-LATTA-BLESSING
A BILL
To amend sections 1329.54, 1329.55, 1329.56, 1329.57, 1329.58,
1329.62, 1329.63, and 1329.67 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, 1329.63, and 1329.67 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 OF ANY WORD, NAME, SYMBOL, OR DEVICE,
THAT IS 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 OTHER PERSONS, AND TO INDICATE THE SOURCE OF THE GOODS, EVEN IF THAT
SOURCE IS UNKNOWN.
(B) "SERVICE MARK" MEANS ANY WORD, NAME, SYMBOL, DEVICE, OR
COMBINATION OF ANY WORD, NAME, SYMBOL, OR DEVICE, THAT IS ADOPTED AND
USED BY A PERSON TO IDENTIFY AND DISTINGUISH THE SERVICES OF THAT
PERSON, INCLUDING A UNIQUE SERVICE, FROM THE SERVICES OF OTHER PERSONS
AND TO INDICATE THE SOURCE OF THE SERVICES, EVEN IF THAT SOURCE
IS UNKNOWN. "SERVICE MARK" INCLUDES TITLES, CHARACTER NAMES USED BY A PERSON,
AND OTHER
DISTINCTIVE FEATURES OF RADIO OR TELEVISION PROGRAMS
EVEN IF A RADIO OR TELEVISION PROGRAM OR A TITLE, CHARACTER NAME, OR
OTHER DISTINCTIVE FEATURE OF A RADIO OR TELEVISION PROGRAM ADVERTISES THE
GOODS OF THE SPONSOR
OF THAT RADIO OR TELEVISION PROGRAM.
(C) "MARK" MEANS ANY
TRADEMARK OR SERVICE MARK THAT IS ENTITLED TO REGISTRATION UNDER
SECTIONS 1329.54 TO 1329.67 of the Revised Code WHETHER OR NOT IT IS REGISTERED.
(D) "Person" means any individual, firm, partnership,
LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY COMPANY,
corporation, association, union of working men, or other
organization THAT IS CAPABLE OF SUING OR BEING SUED IN A COURT OF RECORD IN
THIS STATE.
(C)(E) "Applicant" includes MEANS 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 MEANS 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) "USE" MEANS THE BONA FIDE USE OF A MARK
IN THE ORDINARY COURSE OF TRADE AND NOT THE MAKING USE OF A MARK MERELY TO
RESERVE A RIGHT IN A MARK.
(H) A trademark shall be considered "used" in this state
when it EITHER OF THE FOLLOWING APPLIES:
(1) THE TRADEMARK is placed in any manner on the goods or their
containers
or, ON DISPLAYS ASSOCIATED WITH GOODS OR THEIR
CONTAINERS, OR on the tags or labels affixed to the goods or
THEIR containers, AND THE GOODS ARE SOLD OR TRANSPORTED IN
COMMERCE IN THIS STATE.
(2) IF THE NATURE OF GOODS MAKES THE TYPES OF PLACEMENT DESCRIBED IN
DIVISION
(H)(1) OF THIS SECTION
IMPRACTICABLE, THE TRADEMARK IS PLACED IN ANY MANNER 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)(I) A service mark shall be considered "used" in this
state when it BOTH OF THE FOLLOWING APPLY:
(1) THE SERVICE MARK is used to identify the services of one person
and TO
distinguish them from the services of others and the OTHER PERSONS.
(2) THE services OF THAT PERSON are
sold or otherwise
rendered in this state.
(J) 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 THAT USE" MAY
BE INFERRED FROM THE CIRCUMSTANCES, AND NONUSE OF A MARK FOR
THREE CONSECUTIVE YEARS CONSTITUTES PRIMA-FACIE EVIDENCE OF
THAT INTENT.
(2) ANY COURSE OF CONDUCT BY THE OWNER OF THE MARK,
INCLUDING ACTIONS AND OMISSIONS, 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 PERSONS, 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 OF A FLAG, COAT OF ARMS, OR OTHER INSIGNIA OF THOSE
NATURES;
(D) The name, signature, or portrait of any living individual, except with
his THE INDIVIDUAL'S written consent;
(E) A (1) EXCEPT AS PROVIDED IN DIVISIONS (E)(2)
AND (3) OF THIS SECTION, A mark TO which ANY OF THE FOLLOWING
APPLIES:
(1)(a) When applied to USED ON OR IN CONNECTION
WITH the goods or
services of the applicant, THE MARK is merely
descriptive or deceptively misdescriptive of them; THOSE GOODS OR
SERVICES.
(2)(b) When applied to USED ON OR IN CONNECTION
WITH the goods or
services of the applicant, THE MARK is primarily
geographically descriptive or deceptively misdescriptive of them;
THOSE GOODS OR SERVICES.
(3) Is (c) THE MARK IS primarily merely a surname;
provided,
that nothing in division.
(2) DIVISION (E) of
this section shall DOES NOT prevent the registration of a mark
used in this state by
the applicant which IF THAT MARK 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 OF THE MARK
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;.
(3) DIVISION (E)(1) OF THIS SECTION
DOES NOT PREVENT THE REGISTRATION OF A MARK THAT, WHEN USED ON OR IN
CONNECTION
WITH THE GOODS OR SERVICES OF THE APPLICANT, IS PRIMARILY GEOGRAPHICALLY
DECEPTIVELY MISDESCRIPTIVE OF THE GOODS OR SERVICES IF THE MARK BECAME
DISTINCTIVE OF THE APPLICANT'S GOODS OR SERVICES IN COMMERCE PRIOR TO
DECEMBER 8, 1993, THE DATE OF ENACTMENT OF THE
"NORTH
AMERICAN FREE
TRADE
AGREEMENT
IMPLEMENTATION
ACT," 107
STAT. 2057 (1993), 19
U.S.C.
3301ET SEQ.
(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 PERSON and
not
abandoned BY THAT PERSON,
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 (1) EXCEPT AS PROVIDED IN DIVISION
(G)(2) OF THIS SECTION, A 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 PERSON and not
abandoned BY THAT PERSON,
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.
(2) IF THE
applicant prove PROVES 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 SECTIONS 1329.54 TO 1329.67 of the Revised Code.
Sec. 1329.56. (A) 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 THAT SETS
forth, but IS
not limited to, the following information:
(A)(1) The name and business address of the person applying
for the registration; and, if THE PERSON IS a corporation, the
state of ITS
incorporation; IF THE PERSON IS A PARTNERSHIP OR LIMITED LIABILITY
PARTNERSHIP, THE STATE IN WHICH THE
PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL PARTNERS; AND, IF THE
PERSON IS A LIMITED LIABILITY COMPANY, THE STATE OF ITS ORGANIZATION;
(B)(2) 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)(3) 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)(4) 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 OF THE MARK, or in such near
resemblance thereto TO THE MARK, as
might be calculated to deceive or be mistaken therefor
TO BE LIKELY, WHEN USED ON OR IN CONNECTION WITH THE GOODS OR SERVICES OF
ANOTHER PERSON, TO CAUSE CONFUSION OR MISTAKE OR TO
DECEIVE;
(E)(5) 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
trademark or service THE APPLICANT'S mark covering an area
including this state.
(B) The application shall be signed and verified by the
applicant or by a member of the firm or an officer of the
FIRM, PARTNERSHIP, LIMITED LIABILITY PARTNERSHIP, LIMITED LIABILITY
COMPANY,
corporation, union, or association applying, OR OTHER
ORGANIZATION THAT IS THE APPLICANT.
(C) 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.
(D) The application for registration shall be accompanied by
a
filing fee of twenty dollars, THAT IS 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 OR LIMITED LIABILITY
PARTNERSHIP, THE STATE IN WHICH THE
PARTNERSHIP IS ORGANIZED AND THE NAMES OF THE GENERAL PARTNERS, OR, IF A
LIMITED LIABILITY COMPANY, THE STATE OF ORGANIZATION, 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 THIS
STATE, 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 IN ANY ACTION OR
PROCEEDING IN ANY COURT OF RECORD IN THIS STATE 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. UPON THE
FILING OF AN application filed within six
months prior to the expiration of such THAT term, on a
form furnished by the
secretary of state, the REGISTRANT MAY RENEW THE registration may be
renewed at the end of each
ten-year period for a like SIMILAR term. A renewal fee of ten
dollars, THAT IS payable to the
secretary of state, shall accompany the RENEWAL 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 THE FOLLOWING TYPES OF REGISTRATIONS:
(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 THAT IS granted under sections 1329.54 to
1329.67 of the Revised Code, AND THAT IS not renewed in
accordance with the
provisions thereof THOSE SECTIONS;
(C) Any registration concerning which the secretary of
state or a court of competent jurisdiction finds that ANY OF THE
FOLLOWING APPLIES:
(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 (a) EXCEPT AS PROVIDED IN DIVISION
(C)(5)(b) OF THIS SECTION, 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 THAT WAS registered by
another
person in the United States patent AND TRADEMARK office, WITH
EITHER A PRIORITY DATE OR FIRST USE DATE prior to the
date of
the filing of the application for registration by the registrant
hereunder, UNDER SECTIONS 1329.54 TO 1329.67 OF THE REVISED
CODE and THAT HAS not BEEN abandoned; provided,
that should AS TO BE LIKELY TO CAUSE
CONFUSION OR MISTAKE OR TO DECEIVE.
(b) DIVISION (C)(5)(a) OF THIS SECTION DOES NOT
REQUIRE
THE CANCELLATION OF A MARK IF the
registrant prove PROVES 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.
(6) A TRADEMARK OR SERVICE MARK IS OR
HAS BECOME THE GENERIC NAME FOR THE GOODS OR SERVICES, OR A PORTION OF THE
GOODS OR SERVICES, FOR WHICH THE MARK IS OR HAS BEEN REGISTERED.
(D) Any registration of which a court of competent
jurisdiction orders cancellation on any ground.
Sec. 1329.63. The secretary of state shall establish FOR CONVENIENCE OF
ADMINISTRATION a classification of
goods or services THAT IS in conformity with the classification
established by the
commissioner of patents AND TRADEMARKS under 15 U.S.C. 1112, for
convenience of
administration, but THAT DOES 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 SHALL NOT include goods or services
which THAT
fall within
different classes upon ON OR IN CONNECTION WITH which the
trade-mark TRADEMARK or service
mark is being used.
Sec. 1329.67. Nothing herein shall SECTIONS 1329.54 TO 1329.67
of the Revised Code DO NOT adversely affect the rights or the
enforcement of rights in trade-marks TRADEMARKS or service marks
acquired in good faith at any time at common law PRIOR TO ANY OF THE
FOLLOWING TIMES:
(A) PRIOR TO ANOTHER PERSON'S
REGISTRATION IN THIS STATE OF A TRADEMARK OR SERVICE MARK, WITH THE REGISTRANT
HAVING A SUBSEQUENT FIRST USE DATE;
(B) PRIOR TO ANOTHER PERSON'S
REGISTRATION IN THE UNITED
STATES PATENT AND TRADEMARK OFFICE OF A
TRADEMARK OR SERVICE MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT FIRST USE
DATE;
(C) PRIOR TO ANOTHER PERSON'S
REGISTRATION IN THE UNITED
STATES PATENT AND TRADEMARK OFFICE OF A
TRADEMARK OR SERVICE MARK, WITH THE OTHER PERSON HAVING A SUBSEQUENT PRIORITY
DATE.
Section 2. That existing sections 1329.54, 1329.55, 1329.56, 1329.57, 1329.58,
1329.62, 1329.63, and 1329.67 of the Revised Code are hereby repealed.
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