Citations Affected: IC 24-2-1.
Synopsis: Trademarks. Replaces the Indiana trademark act with the
model state trademark act. Repeals superseded references to and
transitional provisions concerning the Indiana trademark act.
Effective: July 1, 2004.
January 6, 2004, read first time and referred to Committee on Judiciary.
A BILL FOR AN ACT to amend the Indiana Code concerning trade
regulations and consumer sales and credit.
SECTION 1. IC 24-2-1-2 IS AMENDED TO READ AS FOLLOWS
[EFFECTIVE JULY 1, 2004]: Sec. 2. As used in The following
definitions apply throughout this chapter:
(1) "Abandoned" means when either of the following occurs
to a mark:
(A) When its use has been discontinued with the intent not
to resume the use. Intent not to resume may be inferred
from circumstances. Two (2) consecutive years without use
constitutes prima facie evidence of abandonment.
(B) When the conduct of the owner, including acts of
omission and commission, causes the mark to lose its
significance as a mark.
(2) "Applicant" means a person who files an application for
registration of a mark under this chapter and the legal
representatives, successors, or assigns of the person.
(3) "Dilution" means the lessening of the capacity of a famous
mark to identify and distinguish goods or services, regardless
of the presence or absence of:
(A) competition between the owner of the famous mark
and other parties; or
(B) the likelihood of confusion, mistake, or deception.
(4) "Juristic person" means a firm, a partnership, a
corporation, a union, an association, or another organization
capable of suing and being sued in a court of law.
(5) "Mark" means a trademark or service mark that is
entitled to registration under this chapter, whether the mark
is registered or not.
(6) "Person" means:
(A) a human being;
(B) a corporation;
(C) a partnership; or
(D) a limited liability company.
The term includes an applicant or another person who is
entitled to a benefit or privilege under this chapter or who is
rendered liable under this chapter.
(7) "Registrant" means a person to whom the registration of
a mark under this chapter is issued and the legal
representatives, successors, or assigns of the person.
(8) "Secretary" means the secretary of state or the designee
of the secretary charged with the administration of this
chapter.
( 9) "Service mark" means a word, name, symbol, or device,
or any combination of a word, name, symbol, or device, that
is used by a person to:
(A) identify the services, including a unique service, of one
(1) person and distinguish that person's services from the
services of another person; and
(B) indicate the source of the services or, if that source is
unknown, to indicate that the source is unknown.
Titles, character names, and other distinctive features of radio
or television programs used by a person may be registered as
service marks even though titles, character names, and other
distinctive features of a program on which they appear may
advertise the goods of the sponsor.
(a) The term (10) "Trademark" means any a word, name, symbol,
or device, or any combination thereof adopted and of a word,
name, symbol, or device, that is used by a person to:
(A) identify goods or services made, sold, or rendered by him
and to distinguish them from goods or services made, sold, or
rendered by others. and distinguish the goods, including a
unique product, of the person from those manufactured or
sold by another person; and
(B) indicate the source of the goods or, if that source is
unknown, to indicate that the source is unknown.
(b) The term "person" means any individual, firm, partnership,
corporation, limited liability company, association, union of
workingmen, or other organization.
(c) The term "applicant" embraces the person filing an application
for registration of a trademark under this chapter, his legal
representatives, successors, or assigns.
(d) The term "registrant" embraces the person to whom the
registration of a trademark under this chapter is issued, his legal
representatives, successors, or assigns.
(e) For the purposes of this chapter, a trademark shall be deemed to
be "used" in this state when it is placed in any manner on the goods or
their containers or on the tags or labels affixed thereto, or when it is
used to identify the services of one person and distinguish them from
the services of others, and such goods or services are sold, otherwise
distributed, or rendered in this state.
(11) "Trade name" means a name used by a person to identify
a business or vocation of the person.
(12) "Use" means the bona fide use of a mark in the ordinary
course of trade and not a use made merely to reserve a right
in a mark. For purposes of this chapter, a mark is considered
to be in use:
(A) on goods when the mark is placed in any manner on:
(i) the goods;
(ii) other containers;
(iii) displays associated with the goods; or
(iv) the tags or labels affixed to the goods;
(B) on goods if the nature of the goods makes placement as
described in clause (A) impracticable and:
(i) the mark is placed in any manner on documents
associated with the goods or with the sale of the goods;
and
(ii) the goods are sold or transported in commerce in
Indiana; and
(C) on services when:
(i) the mark is used or displayed in the sale or
advertising of the services; and
(ii) the services are rendered in Indiana.
and not abandoned, as to be likely, when applied to used on or
in connection with the goods or services of the applicant, to
cause deception, confusion, or mistake. or to deceive. unless
there shall be filed with the secretary of state the written consent
of the registrant of such trademark, signed and verified under oath
by the registrant or one (1) of its officers or partners.
SECTION 3. IC 24-2-1-4 IS AMENDED TO READ AS FOLLOWS
[EFFECTIVE JULY 1, 2004]: Sec. 4. (a) Subject to the limitations set
forth in this chapter, any a person who adopts and uses a trademark in
this state mark may file in the office of the secretary, of state, on a
form to be furnished by the secretary of state, in a manner that
complies with the requirements of the secretary, an application for
registration of that trademark setting mark. The application must set
forth, but is not limited to, the following information:
(a) (1) The name and business address of the person applying for
such registration, and:
(A) if a corporation, the state of incorporation; or
(B) if a partnership, the state in which the partnership is
organized and the names of the general partners, as
specified by the secretary.
(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 such the goods or services, and the class
in which such goods or services fall.
(c) (3) The date when the trademark mark was first used in the
United States anywhere and the date of its first use in this state
Indiana by the applicant or his a predecessor in business.
(d) (4) A statement:
(A) that the applicant is the owner of the trademark mark;
(B) that the mark is in use; and
(C) that to the knowledge of the person verifying the
application, no other person has registered, either federally
or in Indiana, or has the right to use such trademark in this
state the mark either in the identical form thereof or in such
near resemblance thereto to the form as might be calculated
to deceive or to be mistaken therefor; however, this statement
shall not be required if written consent is obtained in the
manner provided for in section 3(f) of this chapter. to be
likely, when applied to the goods or services of that other
person, to cause deception, confusion, or mistake.
(b) The secretary may also require:
(1) a statement indicating whether an application to register
the mark, or parts or a composite of an application, has been
filed by the applicant or a predecessor in interest in the
United States Patent and Trademark Office. If an application
has previously been filed in the United States Patent and
Trademark Office, the applicant must provide full particulars
with respect to the previous application, including the filing
date and serial number of each application, the status of each
application, and, if an application was finally refused
registration or has otherwise not resulted in a registration, the
reasons for the refusal or nonregistration; and
(2) that a drawing of the mark that complies with the
requirements the secretary specifies accompanies the
application.
(c) The application shall must be signed and verified by oath,
affirmation, or declaration subject to perjury laws by the applicant
or by a member of the firm or limited liability company, or an officer
of the corporation or association applying. The application shall must
be accompanied by three (3) specimens or facsimiles of such trademark
and shall contain a brief description of such trademark as it appears on
such specimens or facsimiles. showing actual use of the mark. The
application for registration shall must be accompanied by a filing fee
of ten dollars ($10) the application fee, payable to the secretary. of
state.
SECTION 4. IC 24-2-1-4.5 IS ADDED TO THE INDIANA CODE
AS A NEW SECTION TO READ AS FOLLOWS [EFFECTIVE JULY
1, 2004]: Sec. 4.5. (a) Upon the filing of an application for
registration and payment of the application fee, the secretary may
examine the application for conformity with this chapter.
(b) The applicant must provide any additional pertinent
information requested by the secretary, including a description of
a design mark, and may make or authorize the secretary to make
reasonable amendments to the application requested by the
secretary or considered by the applicant to be advisable to respond
to any rejection or objection.
(c) The secretary may require the applicant to disclaim an
unregisterable component of a mark otherwise registerable, and an
applicant may voluntarily disclaim a component of a mark sought
to be registered. A disclaimer does not prejudice or affect the
applicant's or registrant's rights:
(1) then existing or thereafter arising in the disclaimed
matter; or
(2) on another application if the disclaimed matter is or
becomes distinctive of the applicant's or registrant's goods or
services.
(d) An amendment may be made to the application by the
secretary with the applicant's agreement, or the submission of a
new application may be required.
(e) If the applicant is found not to be entitled to registration, the
secretary shall advise the applicant of the reasons the applicant is
not entitled to registration. The applicant has a reasonable time
specified by the secretary to reply to or to amend the application.
If the applicant fails to reply to the secretary or to amend the
application in a reasonable time, the application must be
reexamined. This procedure may be repeated until the:
(1) secretary finally refuses registration of the mark; or
(2) applicant fails to reply or amend within the specified time,
at which time the application is considered to have been
abandoned.
(f) If the secretary finally refuses registration of the mark, the
applicant may seek a writ of mandamus to compel the registration.
A writ may be granted without costs to the applicant on proof that
all the statements in the application are true and that the mark is
otherwise entitled to registration.
(g) If applications concurrently being processed by the secretary
seek registration of the same or confusingly similar marks for the
same or related goods or services, the secretary shall grant priority
to the applications in order of filing. If a prior filed application is
granted a registration, the other application or applications must
be rejected. A rejected applicant may bring an action under section
10 of this chapter for cancellation of the registration upon grounds
of prior or superior rights to the mark.
SECTION 5. IC 24-2-1-5 IS AMENDED TO READ AS FOLLOWS
[EFFECTIVE JULY 1, 2004]: Sec. 5. (a) Upon compliance by the
applicant with the requirements of this chapter, the secretary of state
shall cause issue a certificate of registration to be issued and delivered
deliver it to the applicant. The certificate of registration shall must be
issued under the signature of the secretary of state and the seal of the
state of Indiana, and it shall must show all the following:
(1) The name and business address and, if of the person claiming
ownership of the mark. If the person claiming ownership of
the mark is a corporation, the certificate of registration must
show the state of incorporation. of the person claiming ownership
of the trademark, If the person claiming ownership of the mark
is a partnership, the certificate of registration must show the
state in which the partnership is organized and the names of
the general partners, as specified by the secretary. If the
person claiming ownership of the mark is a limited liability
company, the certificate of registration must show the state in
which the limited liability company is organized.
(2) The date claimed for the first use of the trademark in the
United States and this state; mark anywhere and the date
claimed for the first use of the mark in Indiana.
(3) The class of goods or services and a description of the goods
or services on or in connection with which the trademark mark
is used.
(4) A reproduction of the mark.
(5) The registration date. and
(6) The term of the registration. One (1) specimen or facsimile of
the trademark supplied under section 4 of this chapter shall be
attached to and made a part of the certificate of registration.
(b) Any A certificate of registration issued by the secretary of state
under the provisions of subsection (a) or a copy thereof duly certified
by the secretary of state shall be is admissible in evidence as competent
and sufficient proof of the registration of such trademark the mark in
any action or judicial proceedings proceeding in any court of this state.
Indiana.
SECTION 6. IC 24-2-1-6 IS AMENDED TO READ AS FOLLOWS
[EFFECTIVE JULY 1, 2004]: Sec. 6. Registration of a trade-mark
hereunder shall be mark under this chapter is effective for a term of
ten (10) five (5) years from the date of registration and, upon
application filed within not more than six (6) months prior to before
the expiration of such the term, on a form to be furnished by the
secretary of state, in a manner complying with the requirements of
the secretary, the registration may be renewed for a like term from the
end of the expiring term. A renewal fee of ten dollars ($10.00),
payable to the secretary of state, shall must accompany the application
for renewal of the registration. A trade-mark registration may be
renewed for successive periods of ten (10) five (5) years in like
manner.
The secretary of state shall notify the registrants of trade-marks of
the necessity of renewal within the year next preceding the expiration
of the ten (10) years from the date of the registration by writing to the
last known address of the registrants.
SECTION 7. IC 24-2-1-7 IS AMENDED TO READ AS FOLLOWS
[EFFECTIVE JULY 1, 2004]: Sec. 7. (a) Any A registration in force
on March 8, 1955, shall expire March 8, 1956, unless July 1, 2004,
continues in full force and effect for the unexpired term of the
registration and may be renewed by filing an application for renewal
with the secretary, of state on a form furnished by him complying with
the requirements of the secretary, and paying the renewal fee
described in section 6 of this chapter within six (6) months prior to
before the expiration of the registration.
(b) All applications for renewal under this chapter, whether for
registrations made under this chapter or under a prior law, must
include:
(1) a verified statement that the mark has been and is still in
use; and
(2) a specimen showing actual use of the mark on or in
connection with goods or services.
SECTION 8. IC 24-2-1-8 IS AMENDED TO READ AS FOLLOWS
[EFFECTIVE JULY 1, 2004]: Sec. 8. Any trademark A mark and its
registration under this chapter shall be are assignable with the good
will of the business in which the trademark mark is used or with that
part of the good will of the business connected with the use of and
symbolized by the trademark. mark. Assignment shall must be by
instrument in writing duly executed and shall may be recorded with the
secretary of state upon the payment of a recording fee of ten dollars
($10) payable to the secretary. of state who, Upon the recording of the
assignment, the secretary shall issue in the name of the assignee a new
certificate for the remainder of the term of the registration or of the last
renewal thereof. of the term. An assignment of any registration under
this chapter shall be is void as against any subsequent purchaser for
valuable consideration without notice unless it is recorded with the
secretary of state. within three (3) months after the date of the
assignment or before the subsequent purchase.
SECTION 9. IC 24-2-1-8.5 IS ADDED TO THE INDIANA CODE
AS A NEW SECTION TO READ AS FOLLOWS [EFFECTIVE JULY
1, 2004]: Sec. 8.5. (a) A registrant or an applicant who changes the
name of the person to whom the mark was issued or for whom an
application was filed may record a certificate of change of name of
the registrant or applicant with the secretary upon the payment of
the recording fee. The secretary may issue in the name of the
assignee a certificate of registration or an assigned application. The
secretary may issue in the name of the assignee a new certificate or
registration for the remainder of the term of the registration or last
renewal of the registration.
(b) Other instruments that relate to a mark registered or an
application for registration pending under this chapter, such as
licenses, security interests, or mortgages, may be recorded at the
discretion of the secretary, if the instrument is in writing and is
executed.
(c) Acknowledgment is prima facie evidence of the execution of
an assignment or other instrument and, when recorded by the
secretary, the record is prima facie evidence of execution.
(d) A photocopy of any instrument referred to in subsection (a),
(b), or (c) must be accepted for recording if it is certified by any of
the parties or their successors to be a true and correct copy of the
original.
SECTION 10. IC 24-2-1-9 IS AMENDED TO READ AS
FOLLOWS [EFFECTIVE JULY 1, 2004]: Sec. 9. The secretary of state
shall keep for public examination a record of all trademarks marks
registered or renewed under this chapter as well as a record of all
documents recorded under sections 8 and 8.5 of this chapter.
SECTION 11. IC 24-2-1-10 IS AMENDED TO READ AS
FOLLOWS [EFFECTIVE JULY 1, 2004]: Sec. 10. The secretary of
state shall cancel from the register in whole or in part:
(1) after March 8, 1956, all registrations under prior statutes
which have not been renewed in accordance with this chapter;
(2) (1) any registration concerning for which the secretary of state
shall receive receives a voluntary request for cancellation thereof
from the registrant or the assignee of record;
(3) (2) all registrations granted under this chapter and not
renewed in accordance with the provisions of this chapter;
(4) (3) any registration concerning for which a court of competent
with jurisdiction shall find: finds that:
(A) that the registered trademark mark has been abandoned;
(B) that the registrant is not the owner of the trademark;
mark;
(C) that the registration was granted improperly; or
(D) that the registration was obtained fraudulently; and
(5) (4) a registration when a court of competent with jurisdiction
shall order orders cancellation of a the registration on any
ground;
(5) a mark that is or has become the generic name for the
goods or services or a part of the goods or services for which
the mark was registered; and
(6) a registered mark that is so similar as to be likely to cause
deception, confusion, or mistake with a mark registered by
another person in the United States Patent and Trademark
Office before the filing of the application for registration by
the registrant under this chapter. However, a mark is not
abandoned and may not be canceled under this subdivision if
the registrant proves that the registrant is the owner of a
concurrent registration of a mark in the United States Patent
and Trademark Office covering an area including Indiana.
SECTION 12. IC 24-2-1-11 IS AMENDED TO READ AS
FOLLOWS [EFFECTIVE JULY 1, 2004]: Sec. 11. (a) The following
general classes secretary shall adopt rules under IC 4-22-2 to
establish:
(1) a classification of goods and services are established for
convenience of administration of this chapter but not to limit or
extend the applicant's or registrant's rights; and
(2) a single application for registration of a trademark mark that
may include any or all goods or services upon which or in
connection services with which the trademark mark is actually
being used comprised in a single class, but in no event shall a
single application include goods or services upon or in connection
with which the trademark is being used which fall within different
and that indicates the appropriate class or classes of the goods
or services.
To the extent practical, the classification of goods and services
should conform to the classification adopted by the United States
Patent and Trademark Office.
(b) If a single application includes goods or services that fall
within multiple classes, the secretary may require payment of a fee
for each class.
(b) The said classes are as follows:
(1) Raw or partly prepared materials.
(2) Receptacles.
(3) Baggage, animal equipments, portfolio, and pocketbooks.
(4) Abrasives and polishing materials.
(5) Adhesives.
(6) Chemicals and chemical compositions.
(7) Cordage.
(8) Smokers' articles, not including tobacco products.
(9) Explosives, firearms, equipments, and projectiles.
(10) Fertilizers.
(11) Inks and inking materials.
(12) Construction materials.
(13) Hardware and plumbing and steam-fitting supplies.
(14) Metals and metal castings and forgings.
(15) Oils and greases.
equity and terms as the court considers reasonable, to an
injunction and other relief under this section against another
person's commercial use of a mark or trade name if the other
person's use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark. In determining
whether a mark is distinctive and famous, a court may consider
factors such as, but not limited to:
(1) the degree of inherent or acquired distinctiveness of the
mark in Indiana;
(2) the duration and extent of use of the mark in connection
with the goods and services with which the mark is used;
(3) the duration and extent of advertising and publicity of the
mark in Indiana;
(4) the geographical extent of the trading area in which the
mark is used;
(5) the channels of trade for the goods or services with which
the mark is used;
(6) the degree of recognition of the mark in the trading areas
and channels of trade in Indiana used by the mark's owner
and the person against whom the injunction is sought;
(7) the nature and extent of use of the same or a similar mark
by third parties; and
(8) whether the mark is the subject of a registration in
Indiana or a federal registration under the Act of March 3,
1881, or under the Act of February 20, 1905, or on the
principal register.
(b) In an action brought under this section, the owner of a
famous mark is entitled only to injunctive relief in Indiana unless
the person against whom the injunctive relief is sought willfully
intended to trade on the owner's reputation or to cause dilution of
the famous mark. If willful intent is proven, the owner is also
entitled to the remedies set forth in this chapter, subject to the
discretion of the court and the principles of equity.
(c) The following are not actionable under this section:
(1) Fair use of a famous mark by another person in
comparative commercial advertising or promotion to identify
the competing goods or services of the owner of the famous
mark.
(2) Noncommercial use of the mark.
(3) All forms of news reporting and news commentary.
SECTION 16. IC 24-2-1-14 IS AMENDED TO READ AS
FOLLOWS [EFFECTIVE JULY 1, 2004]: Sec. 14. (a) Any An owner
of a trademark mark registered under this chapter may proceed by suit
to enjoin the manufacture, use, display, or sale of any counterfeits or
imitations thereof, of the mark, and any court of competent with
jurisdiction may grant injunctions to restrain such manufacture, use,
display, or sale as may be by the said the court deemed may consider
just and reasonable. and The court may require the defendant to pay
to such the owner all profits derived from and/or and all damages
suffered by reason of such the wrongful manufacture, use, display, or
sale. and such The court may also order that any such counterfeits or
imitations in the possession or under the control of any defendant in
such the case be delivered to an officer of the court or to the
complainant to be destroyed. The court may enter judgment for an
amount not to exceed three (3) times the profits, damages, and
reasonable attorney's fees of the prevailing party if the court finds
that the other party committed wrongful acts with knowledge, in
bad faith, or otherwise as according to the circumstances of the
case.
(b) The enumeration of any right or remedy in this chapter shall
does not affect a registrant's right to prosecute under any penal law of
this state. Indiana.
SECTION 17. IC 24-2-1-14.5 IS ADDED TO THE INDIANA
CODE AS A NEW SECTION TO READ AS FOLLOWS
[EFFECTIVE JULY 1, 2004]: Sec. 14.5. (a) An action to require
cancellation of a mark registered under this chapter or in
mandamus to compel registration of a mark under this chapter
must be brought in the circuit court of the county in which the
registrant or person seeking registration is located. In an action in
mandamus, the proceeding is based solely upon the record before
the secretary. In an action for cancellation, the secretary may not
be made a party to the proceeding but must be notified of the filing
of the complaint by the clerk of the court in which it is filed. The
secretary is entitled to intervene in the action.
(b) In an action brought under this section against a nonresident
registrant, service may be effected upon the secretary as agent for
service of the registrant in accordance with the procedures
established for service upon nonresident corporations and business
entities under the Indiana trial rules.
SECTION 18. IC 24-2-1-15 IS AMENDED TO READ AS
FOLLOWS [EFFECTIVE JULY 1, 2004]: Sec. 15. Nothing herein
shall in this chapter adversely affect affects the rights or the
enforcement of rights in trade-marks a mark acquired in good faith at
any time at common law.