Texas 2009 - 81st Regular

Texas Senate Bill SB1187 Compare Versions

Only one version of the bill is available at this time.

Old	New	Differences
1	1	81R1327 CLG-F
2	2	By: Watson S.B. No. 1187
3	3
4	4
5	5	A BILL TO BE ENTITLED
6	6	AN ACT
7	7	relating to the registration and protection of trademarks.
8	8	BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS:
9	9	SECTION 1. Chapter 16, Business & Commerce Code, is amended
10	10	to read as follows:
11	11	CHAPTER 16. TRADEMARKS
12	12	SUBCHAPTER A. GENERAL PROVISIONS
13	13	Sec. 16.001. DEFINITIONS. In this chapter:
14	14	(1) "Applicant" means a person applying for
15	15	registration of a mark under this chapter and includes the person's
16	16	legal representative, successor, and assignee.
17	17	(2) "Dilution" means dilution by blurring or dilution
18	18	by tarnishment, without regard to the presence or absence of:
19	19	(A) competition between the owner of a famous
20	20	mark and another person;
21	21	(B) actual or likely confusion, mistake, or
22	22	deception; or
23	23	(C) economic harm.
24	24	(3) "Dilution by blurring" means an association
25	25	arising from the similarity between a mark or trade name and a
26	26	famous mark that impairs the famous mark's distinctiveness.
27	27	(4) "Dilution by tarnishment" means an association
28	28	arising from the similarity between a mark or trade name and a
29	29	famous mark that harms the famous mark's reputation.
30	30	(5) "Mark" includes a trademark or service mark that
31	31	is registrable under this chapter, regardless of whether the
32	32	trademark or service mark is actually registered.
33	33	(6) "Person," with respect to the applicant or another
34	34	person who is entitled to a benefit or privilege or is rendered
35	35	liable under this chapter, includes:
36	36	(A) a natural person; and
37	37	(B) a firm, partnership, corporation,
38	38	association, union, or other organization that may sue or be sued in
39	39	that capacity.
40	40	(7) "Registrant" means the person to whom a
41	41	registration of a mark has been issued under this chapter and
42	42	includes the person's legal representative, successor, or
43	43	assignee.
44	44	(8) "Service mark":
45	45	(A) means a word, name, symbol, or device, or any
46	46	combination of those terms, used by a person to:
47	47	(i) identify and distinguish the services
48	48	of one person, including a unique service, from the services of
49	49	another; and
50	50	(ii) indicate the source of the services,
51	51	regardless of whether the source is unknown; and
52	52	(B) includes the titles, character names used by
53	53	a person, and other distinctive features of radio or television
54	54	programs, regardless of whether the titles, character names, or
55	55	programs advertise the sponsor's goods.
56	56	(9) "Trade name" means a name used by a person to
57	57	identify the person's business or vocation.
58	58	(10) "Trademark" means a word, name, symbol, or
59	59	device, or any combination of those terms, used by a person to:
60	60	(A) identify and distinguish the person's goods,
61	61	including a unique product, from the goods manufactured or sold by
62	62	another; and
63	63	(B) indicate the source of the goods, regardless
64	64	of whether the source is unknown.
65	65	Sec. 16.002. INAPPLICABILITY OF CHAPTER. This chapter does
66	66	not apply to the registration or use of a livestock brand or other
67	67	indicia of ownership of goods that do not qualify as a mark.
68	68	Sec. 16.003. WHEN MARK CONSIDERED TO BE IN USE. (a) A mark
69	69	is considered to be in use in this state in connection with goods
70	70	when:
71	71	(1) the mark is placed in any manner on:
72	72	(A) the goods;
73	73	(B) containers of the goods;
74	74	(C) displays associated with the goods;
75	75	(D) tags or labels affixed to the goods; or
76	76	(E) documents associated with the goods or sale
77	77	of the goods, if the nature of the goods makes placement described
78	78	by Paragraphs (A) through (D) impracticable; and
79	79	(2) the goods are sold or transported in commerce in
80	80	this state.
81	81	(b) A mark is considered to be in use in this state in
82	82	connection with services when:
83	83	(1) the mark is used or displayed in this state in
84	84	connection with selling or advertising the services; and
85	85	(2) the services are rendered in this state.
86	86	(c) A mark made merely to reserve a right in the mark is not
87	87	considered to be in use in this state in connection with goods or
88	88	services.
89	89	Sec. 16.004. WHEN MARK CONSIDERED TO BE ABANDONED. (a) A
90	90	mark is considered to be abandoned when:
91	91	(1) the mark's use has been discontinued with intent
92	92	not to resume the use; or
93	93	(2) the owner's conduct, including an omission or
94	94	commission of an act, causes the mark to lose its significance as a
95	95	mark.
96	96	(b) Intent not to resume use of a mark under Subsection
97	97	(a)(1) may be inferred from the circumstances.
98	98	(c) Nonuse of a mark as described by Subsection (a)(1) for
99	99	three consecutive years constitutes prima facie evidence of the
100	100	mark's abandonment.
101	101	[Sections 16.005-16.050 reserved for expansion]
102	102	SUBCHAPTER B. REGISTRATION OF MARK
103	103	Sec. 16.051. REGISTRABLE MARKS. (a) A mark that
104	104	distinguishes an applicant's goods or services from those of others
105	105	is registrable unless the mark:
106	106	(1) is, or contains matter that is, immoral,
107	107	deceptive, or scandalous;
108	108	(2) is or contains matter that may disparage, falsely
109	109	suggest a connection with, or bring into contempt or disrepute:
110	110	(A) a person, whether living or dead;
111	111	(B) an institution;
112	112	(C) a belief; or
113	113	(D) a national symbol;
114	114	(3) depicts, contains, or simulates the flag, the coat
115	115	of arms, or other insignia of:
116	116	(A) the United States;
117	117	(B) a state;
118	118	(C) a municipality; or
119	119	(D) a foreign nation;
120	120	(4) is or contains the name, signature, or portrait of
121	121	a particular living individual who has not consented in writing to
122	122	the mark's registration;
123	123	(5) when used on or in connection with the applicant's
124	124	goods or services:
125	125	(A) is merely descriptive or deceptively
126	126	misdescriptive of the applicant's goods or services; or
127	127	(B) is primarily geographically descriptive or
128	128	deceptively misdescriptive of the applicant's goods or services;
129	129	(6) is primarily merely a surname; or
130	130	(7) is likely to cause confusion or mistake, or to
131	131	deceive, because, when used on or in connection with the
132	132	applicant's goods or services, it resembles:
133	133	(A) a mark registered in this state; or
134	134	(B) an unabandoned mark or trade name previously
135	135	used by another person.
136	136	(b) Subsection (a)(5) or (6) does not prevent the
137	137	registration of a mark used by the applicant that has become
138	138	distinctive as applied to the applicant's goods or services. The
139	139	secretary of state may accept as evidence that a mark has become
140	140	distinctive, when used on or in connection with the applicant's
141	141	goods or services, proof of continuous use of the mark as such by
142	142	the applicant in this state for the five years preceding the date on
143	143	which the claim of distinctiveness is made.
144	144	Sec. 16.052. CLASSIFICATION OF GOODS AND SERVICES.
145	145	(a) The secretary of state shall adopt rules establishing a
146	146	classification of goods and services for the convenient
147	147	administration of this chapter. The classifications established
148	148	under this section may not limit or expand an applicant's or
149	149	registrant's rights. To the extent practicable, the classification
150	150	of goods and services must conform to the classification of goods
151	151	and services adopted by the United States Patent and Trademark
152	152	Office.
153	153	(b) An applicant may include in a single application for
154	154	registration of a mark any or all goods or services in connection
155	155	with which the mark is actually being used and the appropriate class
156	156	or classes of the goods or services.
157	157	(c) If a single application for registration of a mark
158	158	includes goods or services that belong in multiple classes, the
159	159	secretary of state may require payment of a fee for each class of
160	160	goods or services.
161	161	Sec. 16.053. APPLICATION FOR REGISTRATION. (a) Subject to
162	162	the limitations prescribed by this chapter, a person who uses a mark
163	163	may file an application to register the mark in the office of the
164	164	secretary of state on a form and in the manner prescribed by the
165	165	secretary of state.
166	166	(b) The application must include:
167	167	(1) the name and business address of the applicant;
168	168	(2) if the applicant is a corporation, the state under
169	169	whose laws the applicant was incorporated or organized;
170	170	(3) if the applicant is a partnership, the state under
171	171	whose laws the partnership was organized and the names of the
172	172	general partners;
173	173	(4) the names or a description of the goods or services
174	174	on or in connection with which the mark is being used;
175	175	(5) the mode or manner in which the mark is being used
176	176	on or in connection with the goods or services;
177	177	(6) the class to which the applicant believes the
178	178	goods or services belong;
179	179	(7) the date the applicant or applicant's predecessor
180	180	in interest first used the mark anywhere;
181	181	(8) the date the applicant or the applicant's
182	182	predecessor in interest first used the mark in this state; and
183	183	(9) a statement that:
184	184	(A) the applicant is the owner of the mark;
185	185	(B) the mark is in use; and
186	186	(C) to the knowledge of the person verifying the
187	187	application, no other person:
188	188	(i) has registered the mark, either
189	189	federally or in this state; or
190	190	(ii) is entitled to use the mark in this
191	191	state:
192	192	(a) in the identical form used by the
193	193	applicant; or
194	194	(b) in a form that is likely, when
195	195	used on or in connection with the goods or services of the other
196	196	person, to cause confusion or mistake, or to deceive, because of its
197	197	resemblance to the mark.
198	198	(c) The secretary of state may also require the application
199	199	to include a statement as to whether the applicant or the
200	200	applicant's predecessor in interest has filed an application to
201	201	register the mark, or a portion or composite of the mark, with the
202	202	United States Patent and Trademark Office, and, if so, the
203	203	applicant shall fully disclose information with respect to that
204	204	filing, including:
205	205	(1) the filing date and serial number of each
206	206	application;
207	207	(2) the status of the filing; and
208	208	(3) if any application was finally refused
209	209	registration or has not otherwise resulted in the issuance of a
210	210	registration, the reasons for the refusal or nonissuance.
211	211	(d) The applicant shall submit as part of the application
212	212	to the secretary of state:
213	213	(1) three specimens of the mark as actually used; and
214	214	(2) an application fee payable to the secretary of
215	215	state.
216	216	(e) The application must be signed and verified by the oath
217	217	or affirmation of:
218	218	(1) the applicant; or
219	219	(2) a member of the firm or officer of the corporation
220	220	or association that is applying for registration of the mark, as
221	221	applicable.
222	222	(f) The secretary of state may also require an applicant to
223	223	submit as part of the application a drawing of the mark that
224	224	complies with any requirement specified by the secretary of state.
225	225	Sec. 16.054. EXAMINATION OF APPLICATION. (a) On the
226	226	filing of an application for registration and payment of the
227	227	application fee, the secretary of state shall examine the
228	228	application for compliance with this chapter.
229	229	(b) The applicant shall provide to the secretary of state
230	230	additional pertinent information requested by the secretary of
231	231	state, including a description of a design mark.
232	232	Sec. 16.055. AMENDMENT TO APPLICATION. (a) In response to
233	233	the secretary of state's rejection of or objection to the
234	234	registration, the applicant may amend, or authorize the secretary
235	235	of state to amend, the application on reasonable request of the
236	236	secretary of state or if the applicant considers it advisable.
237	237	(b) The secretary of state, on agreement by the applicant,
238	238	may amend the application submitted by the applicant.
239	239	(c) The secretary of state may require the applicant to
240	240	execute and submit a new application instead of amending the
241	241	application.
242	242	Sec. 16.056. DISCLAIMER OF UNREGISTRABLE COMPONENT.
243	243	(a) The secretary of state may require the applicant to disclaim
244	244	an unregistrable component of a mark that is otherwise registrable.
245	245	An applicant may voluntarily disclaim a component of a mark sought
246	246	to be registered.
247	247	(b) A disclaimer may not prejudice or affect:
248	248	(1) the rights of the applicant or registrant in the
249	249	disclaimed matter; or
250	250	(2) the rights of the applicant or registrant to
251	251	submit another application to register the mark if the disclaimed
252	252	matter is or has become distinctive of the applicant's or
253	253	registrant's goods or services.
254	254	Sec. 16.057. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
255	255	MARK. (a) When concurrently processing applications for the same
256	256	or confusingly similar marks used on or in connection with the same
257	257	or related goods or services, the secretary of state shall give
258	258	priority to the application that was filed first. If a prior filed
259	259	application is registered, the secretary of state shall reject any
260	260	other subsequently filed application.
261	261	(b) An applicant whose application is rejected under this
262	262	section may bring an action for cancellation of the previously
263	263	issued registration on the ground that the applicant has a prior or
264	264	superior right to the mark under this chapter.
265	265	Sec. 16.058. DENIAL OF REGISTRATION. (a) If the secretary
266	266	of state determines that the applicant is not entitled to register
267	267	the mark, the secretary of state shall:
268	268	(1) notify the applicant of the reason for the denial
269	269	of the application; and
270	270	(2) give the applicant reasonable time as prescribed
271	271	by the secretary of state in which to:
272	272	(A) issue a response to the denial; or
273	273	(B) amend the application.
274	274	(b) The applicant may repeat the examination procedures
275	275	described by Subsection (a) until the earlier of:
276	276	(1) the expiration of the period prescribed by the
277	277	secretary of state under Subsection (a)(2); or
278	278	(2) the date on which the secretary of state finally
279	279	refuses registration of the application.
280	280	(c) If the applicant fails to respond to the denial or to
281	281	amend the application within the period prescribed by the secretary
282	282	of state under Subsection (a)(2), the application is considered to
283	283	have been abandoned.
284	284	(d) If the secretary of state finally refuses registration
285	285	of the mark, the applicant may seek a review of the decision of the
286	286	secretary of state in accordance with the procedures prescribed by
287	287	Section 16.101.
288	288	Sec. 16.059. REGISTRATION BY SECRETARY OF STATE. (a) If the
289	289	application satisfies the requirements of this chapter, and the
290	290	application fee has been paid, the secretary of state shall:
291	291	(1) issue a certificate of registration to the
292	292	applicant; and
293	293	(2) deliver the certificate of registration to the
294	294	applicant.
295	295	(b) The certificate of registration must:
296	296	(1) be signed by the secretary of state;
297	297	(2) be issued under the secretary of state's official
298	298	seal;
299	299	(3) indicate the name and business address of the
300	300	person claiming ownership of the mark;
301	301	(4) if the applicant is a corporation, indicate the
302	302	state under whose laws the applicant was incorporated or organized;
303	303	(5) if the applicant is a partnership, indicate the
304	304	state under whose laws the partnership was organized and the names
305	305	of the general partners;
306	306	(6) include a description of the goods or services on
307	307	or in connection with which the mark is being used;
308	308	(7) state the class to which the goods or services
309	309	belong;
310	310	(8) state the date claimed for the first use of the
311	311	mark anywhere;
312	312	(9) state the date claimed for the first use of the
313	313	mark in this state;
314	314	(10) show a reproduction of the mark;
315	315	(11) state the registration date; and
316	316	(12) state the term of the registration.
317	317	Sec. 16.060. TERM OF REGISTRATION. The registration of a
318	318	mark under this chapter expires on the fifth anniversary of the date
319	319	of registration.
320	320	Sec. 16.061. RENEWAL OF REGISTRATION. (a) The
321	321	registration of a mark under this chapter may be renewed for an
322	322	additional five-year term by filing a renewal application in the
323	323	form and manner prescribed by the secretary of state not later than
324	324	the 180th day before the date the registration expires. The
325	325	registrant shall submit to the secretary of state:
326	326	(1) a renewal application that includes a verified
327	327	statement stating that the mark has been and is still in use in this
328	328	state;
329	329	(2) a specimen of the mark, as actually used on or in
330	330	connection with the goods or services; and
331	331	(3) a renewal fee payable to the secretary of state.
332	332	(b) A mark for which a registration was in effect on August
333	333	31, 2009, continues in effect for the unexpired term of the
334	334	registration and may be renewed by complying with the requirements
335	335	for renewal under this section.
336	336	Sec. 16.062. RECORD AND PROOF OF REGISTRATION. (a) The
337	337	secretary of state shall keep for public examination a record of
338	338	all:
339	339	(1) marks registered or renewed under this chapter;
340	340	(2) assignments recorded under Section 16.065; and
341	341	(3) other instruments recorded under Section 16.066.
342	342	(b) A certificate of registration issued by the secretary of
343	343	state under this chapter, or a copy of the certificate of
344	344	registration certified by the secretary of state, is admissible in
345	345	evidence in any court action as prima facie proof of the validity of
346	346	the registration.
347	347	Sec. 16.063. CANCELLATION OF REGISTRATION. (a) The
348	348	secretary of state shall cancel a registration:
349	349	(1) in force on August 31, 2009, that is more than 10
350	350	years old and has not been renewed under Section 16.061(b);
351	351	(2) on receipt of a voluntary request for cancellation
352	352	from the registrant under this chapter or the registrant's assignee
353	353	of record;
354	354	(3) granted under this chapter and not renewed under
355	355	Section 16.061(a); or
356	356	(4) with respect to which a court has rendered a
357	357	judgment finding that:
358	358	(A) the registered mark has been abandoned;
359	359	(B) the registrant under this chapter or under a
360	360	prior law of this state is not the owner of the mark;
361	361	(C) the registration was granted improperly;
362	362	(D) the registration was obtained fraudulently;
363	363	(E) the registered mark is or has become the
364	364	generic name for the goods or services, or part of the goods or
365	365	services, in connection with which the mark was registered;
366	366	(F) the registered mark is so similar, as to be
367	367	likely to cause confusion or mistake or to deceive, to a mark that:
368	368	(i) is registered by another person in the
369	369	United States Patent and Trademark Office before the date the
370	370	application for registration was filed under this chapter; and
371	371	(ii) is not abandoned; or
372	372	(G) the registration was canceled by order of a
373	373	court on any ground.
374	374	(b) If a registrant's mark is considered for cancellation
375	375	under Subsection (a)(4)(F) and the registrant proves that the
376	376	registrant is the owner of a mark concurrently registered as a mark
377	377	with the United States Patent and Trademark Office to cover a
378	378	geographical area that includes a part of this state, the secretary
379	379	of state may not cancel registration of the mark for the
380	380	geographical area of this state covered by the federal
381	381	registration.
382	382	Sec. 16.064. ASSIGNMENT OF MARK AND REGISTRATION. (a) A
383	383	mark and its registration under this chapter are assignable with
384	384	the goodwill of the business in which the mark is used, or with that
385	385	part of the goodwill of the business connected with the use of, and
386	386	symbolized by, the mark.
387	387	(b) An assignment must be made by a properly executed
388	388	written instrument.
389	389	Sec. 16.065. RECORDING OF ASSIGNMENT AND ITS EFFECT.
390	390	(a) An assignment made under Section 16.064 may be recorded with
391	391	the secretary of state by:
392	392	(1) filing the original assignment or a copy of the
393	393	original assignment certified by any party to the assignment, or
394	394	their successors; and
395	395	(2) paying a recording fee to the secretary of state.
396	396	(b) If an assignment has been properly filed for record
397	397	under Subsection (a), the secretary of state shall issue in the
398	398	assignee's name a new certificate of registration for the remainder
399	399	of the term of the mark's registration or last renewal.
400	400	(c) The assignment of a mark registered under this chapter
401	401	is void against a purchaser who purchases the mark for valuable
402	402	consideration after the assignment is made and without notice of it
403	403	unless the assignment is recorded by the secretary of state:
404	404	(1) not later than the 90th day after the date of the
405	405	assignment; or
406	406	(2) before the mark is purchased.
407	407	(d) An acknowledgment is prima facie evidence of the
408	408	execution of an assignment under this section, and when recorded by
409	409	the secretary of state, the record is admissible in evidence as
410	410	prima facie proof of the execution of the assignment.
411	411	Sec. 16.066. RECORDING OF OTHER INSTRUMENTS. (a) An
412	412	instrument of the registrant or applicant effecting a name change
413	413	of the person to whom the mark was issued or for whom an application
414	414	was filed may be recorded with the secretary of state by:
415	415	(1) filing the original instrument or a copy of the
416	416	instrument, subject to Subsection (d); and
417	417	(2) paying a recording fee to the secretary of state.
418	418	(b) Other properly executed written instruments that relate
419	419	to a mark registered or an application pending with the secretary of
420	420	state under this chapter, including a license, security interest,
421	421	or mortgage, may be recorded with the secretary of state, at the
422	422	secretary of state's discretion.
423	423	(c) An acknowledgment is prima facie evidence of the
424	424	execution of an instrument under this section, and when recorded by
425	425	the secretary of state, the record is admissible in evidence as
426	426	prima facie proof of the execution of the instrument.
427	427	(d) The secretary of state must accept for recording a copy
428	428	of an original instrument under this section if the copy is
429	429	certified by any party to the transaction or the party's successor.
430	430	Sec. 16.067. CHANGE OF REGISTRANT'S NAME. If a registrant's
431	431	name is changed during the unexpired term of a mark's registration,
432	432	a new certificate of registration may be issued for the remainder of
433	433	the unexpired term in the new name of the registrant on the filing
434	434	of an instrument under Section 16.066.
435	435	Sec. 16.068. FEES. (a) The secretary of state by rule
436	436	shall prescribe the amount of fees payable for the filing and
437	437	recording of applications and other documents under this subchapter
438	438	and for related services.
439	439	(b) Unless specified otherwise by the secretary of state, a
440	440	fee under this chapter is not refundable.
441	441	[Sections 16.069-16.100 reserved for expansion]
442	442	SUBCHAPTER C. COURT ACTION
443	443	Sec. 16.101. REVIEW OF SECRETARY OF STATE'S DECISIONS.
444	444	(a) If the secretary of state takes final action refusing to
445	445	register a mark under Section 16.058 or to renew the registration of
446	446	a mark under Section 16.061, the applicant or registrant may file
447	447	suit for review of the secretary of state's decision in a district
448	448	court of Travis County.
449	449	(b) An action brought under this section must be based
450	450	solely on the record before the secretary of state.
451	451	Sec. 16.102. SUIT TO CANCEL REGISTRATION. (a) A person
452	452	who believes that the person is or will be damaged by a registration
453	453	under this chapter may sue to cancel the registration. The
454	454	secretary of state may not be made a party to the proceeding.
455	455	(b) The clerk of a court in which suit is filed under
456	456	Subsection (a) shall give notice of the suit to the secretary of
457	457	state. The attorney general, at the request of the secretary of
458	458	state, must be given the right to intervene in the action.
459	459	Sec. 16.103. INFRINGEMENT OF REGISTERED MARK. (a) Subject
460	460	to Section 16.104, a person commits an infringement if the person:
461	461	(1) without the registrant's consent, uses anywhere in
462	462	this state a reproduction, counterfeit, copy, or colorable
463	463	imitation of a mark registered under this chapter in connection
464	464	with selling, distributing, offering for sale, or advertising goods
465	465	or services when the use is likely to deceive or cause confusion or
466	466	mistake as to the source or origin of the goods or services; or
467	467	(2) reproduces, counterfeits, copies, or colorably
468	468	imitates a mark registered under this chapter and applies the
469	469	reproduction, counterfeit, copy, or colorable imitation to a label,
470	470	sign, print, package, wrapper, receptacle, or advertisement
471	471	intended to be used in selling or distributing, or in connection
472	472	with the sale or distribution of, goods or services in this state
473	473	when the use is likely to deceive or cause confusion or mistake as
474	474	to the source or origin of the goods or services.
475	475	(b) A registrant may sue for damages and to enjoin an
476	476	infringement proscribed by Subsection (a).
477	477	(c) If the court determines that there has been an
478	478	infringement, the court shall enjoin the act of infringement and
479	479	may:
480	480	(1) subject to Subsection (d), require the violator to
481	481	pay the registrant all profits derived from or damages resulting
482	482	from the acts of infringement; and
483	483	(2) order that the infringing reproductions,
484	484	counterfeits, copies, or colorable imitations in the possession or
485	485	under the control of the violator be:
486	486	(A) delivered to an officer of the court to be
487	487	destroyed; or
488	488	(B) delivered to the registrant to be destroyed.
489	489	(d) If the court finds that the violator acted with actual
490	490	knowledge of the registrant's mark or in bad faith, the court, in
491	491	the court's discretion, may:
492	492	(1) enter judgment in an amount not to exceed three
493	493	times the amount of profits and damages; and
494	494	(2) award reasonable attorney's fees to the prevailing
495	495	party.
496	496	(e) A registrant is entitled to recover damages under
497	497	Subsections (c)(1) and (d) only if the violator acted with intent to
498	498	cause confusion or mistake or to deceive.
499	499	(f) The enumeration of any right or remedy under this
500	500	section does not affect the prosecution of conduct under the penal
501	501	laws of this state.
502	502	Sec. 16.104. EXCEPTIONS TO LIABILITY FOR INFRINGEMENT.
503	503	Nothing in this chapter adversely affects common law rights
504	504	acquired before a registration is issued under this chapter or the
505	505	enforcement of common law rights in marks acquired in good faith
506	506	before registration of the mark under this chapter.
507	507	Sec. 16.105. COURT ACTION. (a) An owner of a mark
508	508	registered under this chapter may bring an action to enjoin the
509	509	manufacture, use, display, or sale of any counterfeits or
510	510	imitations of a mark.
511	511	(b) If the court finds that a wrongful act described by
512	512	Subsection (a) has been committed, the court shall enjoin the
513	513	wrongful manufacture, use, display, or sale and may:
514	514	(1) subject to Subsection (c), require the violator to
515	515	pay to the owner of the mark all profits derived from or damages
516	516	resulting from the wrongful acts; and
517	517	(2) order that the wrongful counterfeits or imitations
518	518	in the possession or under the control of the defendant be:
519	519	(A) delivered to an officer of the court to be
520	520	destroyed; or
521	521	(B) delivered to the registrant to be destroyed.
522	522	(c) If the court finds that the violator committed the
523	523	wrongful acts with knowledge of the registrant's mark or in bad
524	524	faith, or otherwise, the court, in the court's discretion, may:
525	525	(1) enter judgment in an amount not to exceed three
526	526	times the amount of profits and damages; and
527	527	(2) award reasonable attorney's fees to the prevailing
528	528	party.
529	529	Sec. 16.106. PROCURING APPLICATION OR REGISTRATION BY
530	530	FRAUD. (a) A person may not procure for the person or another the
531	531	filing of an application or the registration of a mark under this
532	532	chapter by knowingly making a false or fraudulent representation or
533	533	declaration, oral or written, or by any other fraudulent means.
534	534	(b) A person injured by the false or fraudulent procurement
535	535	of an application or registration may sue the person who violated
536	536	Subsection (a) and recover from the violator damages resulting from
537	537	use of the fraudulently registered mark.
538	538	Sec. 16.107. INJURY TO BUSINESS REPUTATION; DILUTION. (a)
539	539	Subject to the principles of equity, the owner of a mark that is
540	540	famous and distinctive, inherently or through acquired
541	541	distinctiveness, in this state is entitled to enjoin another
542	542	person's commercial use of a mark or trade name that begins after
543	543	the mark has become famous if use of the mark or trade name is likely
544	544	to cause the dilution of the famous mark.
545	545	(b) For purposes of this section, a mark is considered to be
546	546	famous if the mark is widely recognized by the public throughout
547	547	this state or in a geographic area in this state as a designation of
548	548	source of the goods or services of the mark's owner. In determining
549	549	whether a mark is famous, a court may consider factors including:
550	550	(1) the duration, extent, and geographic reach of the
551	551	advertisement and publicity of the mark in this state, regardless
552	552	of whether the mark is advertised or publicized by the owner or a
553	553	third party;
554	554	(2) the amount, volume, and geographic extent of sales
555	555	of goods or services offered under the mark in this state;
556	556	(3) the extent of actual recognition of the mark in
557	557	this state; and
558	558	(4) whether the mark is registered in this state or in
559	559	the United States Patent and Trademark Office.
560	560	(c) In an action brought under this section, the owner of a
561	561	famous mark is entitled to injunctive relief throughout the
562	562	geographic area in this state in which the mark is found to have
563	563	become famous before the use of the other mark. If the court finds
564	564	that the person against whom the injunctive relief is sought
565	565	wilfully intended to cause the dilution of the famous mark, the
566	566	owner shall also be entitled to remedies under this chapter,
567	567	subject to the court's discretion and principles of equity.
568	568	(d) A person may not bring an action under this section for:
569	569	(1) a fair use, including a nominative or descriptive
570	570	fair use, or facilitation of the fair use, of a famous mark by
571	571	another person other than as a designation of source for the
572	572	person's own goods or services, including a fair use in connection
573	573	with:
574	574	(A) advertising or promoting that permits
575	575	consumers to compare goods or services; or
576	576	(B) identifying and parodying, criticizing, or
577	577	commenting on the famous mark owner or the famous mark owner's goods
578	578	or services;
579	579	(2) a noncommercial use of the mark; or
580	580	(3) any form of news reporting or commentary.
581	581	[SUBCHAPTER A. GENERAL PROVISIONS
582	582	[Sec. 16.01. DEFINITIONS. (a) In this chapter, unless the
583	583	context requires a different definition,
584	584	[(1) "applicant" means the person applying for
585	585	registration of a mark under this chapter and includes his legal
586	586	representative, successor, assignee, and predecessor in title to
587	587	the mark sought to be registered;
588	588	[(2) "mark" includes service mark and trademark;
589	589	[(3) "registrant" means the person to whom a
590	590	registration has been issued under this chapter and includes his
591	591	legal representative, successor, assignee, and predecessor in
592	592	title to the registration;
593	593	[(4) "service mark" means a word, name, symbol,
594	594	device, slogan or any combination thereof which, whether registered
595	595	or not, has been adopted and used by a person to identify his
596	596	services and distinguish them from the services of others, and
597	597	includes the titles, designations, character names, and
598	598	distinctive features of broadcast or other advertising;
599	599	[(5) "trademark" means a word, name, symbol, device,
600	600	slogan or any combination thereof which, whether registered or not,
601	601	has been adopted and used by a person to identify his goods and
602	602	distinguish them from the goods manufactured or sold by others; and
603	603	[(6) "trade name" includes individual name, surname,
604	604	firm name, corporate name, and lawfully adopted name or title used
605	605	by a person to identify his business, vocation, or occupation.
606	606	[(b) This chapter does not apply to the registration or use
607	607	of livestock brands or other indicia of ownership of goods which do
608	608	not qualify as a "mark" as defined in this chapter.
609	609	[Sec. 16.02. WHEN MARK CONSIDERED TO BE USED. (a) A mark
610	610	is considered to be used in this state in connection with goods when
611	611	[(1) it is placed on
612	612	[(A) the goods;
613	613	[(B) containers of the goods;
614	614	[(C) displays associated with the goods; or
615	615	[(D) tags or labels affixed to the goods; and
616	616	[(2) the goods are sold, displayed for sale, or
617	617	otherwise publicly distributed in this state.
618	618	[(b) A mark is considered to be used in this state in
619	619	connection with services when
620	620	[(1) it is used or displayed in this state in
621	621	connection with selling or advertising the services; and
622	622	[(2) the services are rendered in this state.
623	623	[SUBCHAPTER B. REGISTRATION OF MARK
624	624	[Sec. 16.08. REGISTRABLE MARKS. (a) A mark in actual use
625	625	in connection with the applicant's goods or services, which
626	626	distinguishes his goods or services from those of others, is
627	627	registrable unless it
628	628	[(1) is, or includes matter which is, immoral,
629	629	deceptive, or scandalous;
630	630	[(2) may disparage, or falsely suggest a connection
631	631	with, or bring into contempt or disrepute
632	632	[(A) a person, whether living or dead;
633	633	[(B) an institution;
634	634	[(C) a belief; or
635	635	[(D) a national symbol;
636	636	[(3) depicts or simulates the flag, coat of arms, or
637	637	other insignia of
638	638	[(A) the United States;
639	639	[(B) a state;
640	640	[(C) a municipality; or
641	641	[(D) a foreign nation;
642	642	[(4) is or includes the name, signature, or portrait
643	643	of a living individual who has not consented in writing to its
644	644	registration;
645	645	[(5) is
646	646	[(A) merely descriptive or deceptively
647	647	misdescriptive of the applicant's goods or services;
648	648	[(B) primarily geographically descriptive or
649	649	deceptively misdescriptive of the applicant's goods or services; or
650	650	[(C) primarily merely a surname; or
651	651	[(6) is likely to cause confusion or mistake, or to
652	652	deceive, because, when applied to the applicant's goods or
653	653	services, it resembles another person's unabandoned mark
654	654	registered in this state.
655	655	[(b) Subsection (a)(5) of this section does not prevent the
656	656	registration of a mark that has become distinctive as applied to the
657	657	applicant's goods or services. The secretary of state may accept as
658	658	evidence that a mark has become distinctive as applied to the
659	659	applicant's goods or services proof of substantially exclusive and
660	660	continuous use of the mark by the applicant in this state for the
661	661	five years next preceding the date on which the applicant filed his
662	662	application for registration.
663	663	[(c) A trade name is not registrable under this chapter.
664	664	However, if a trade name is also a service mark or trademark, as
665	665	defined in this chapter, it is registrable as a service mark or
666	666	trademark.
667	667	[Sec. 16.09. CLASSIFICATION OF GOODS AND SERVICES. (a) The
668	668	secretary of state shall adopt rules establishing a classification
669	669	of goods and services for the convenient administration of this
670	670	chapter. The classifications established do not limit or expand an
671	671	applicant's or registrant's rights. To the extent practicable, the
672	672	classification of goods and services should conform to the
673	673	classification adopted by the United States Patent and Trademark
674	674	Office.
675	675	[(b) An applicant may include in a single application for
676	676	registration of a mark all goods or services in connection with
677	677	which the mark is actually being used and which are in a single
678	678	class. An applicant may not include in a single application for
679	679	registration goods or services which are not in a single class.
680	680	[Sec. 16.10. APPLICATION FOR REGISTRATION. (a) Subject to
681	681	the limitations prescribed by this chapter, a person may file an
682	682	application to register a mark in the office of the secretary of
683	683	state on a form prescribed by the secretary of state.
684	684	[(b) The applicant shall include in the application:
685	685	[(1) the name and business address of the applicant;
686	686	[(2) if the applicant is a corporation, limited
687	687	partnership, limited liability company, or other business entity,
688	688	the state of incorporation or organization;
689	689	[(3) an appointment of the secretary of state as the
690	690	applicant's agent for service of process only in suits relating to
691	691	the registration which may be issued if the applicant:
692	692	[(A) is or becomes a:
693	693	[(i) nonresident individual, partnership,
694	694	or association; or
695	695	[(ii) foreign corporation, limited
696	696	partnership, or limited liability company without a certificate of
697	697	authority to do business in this state; or
698	698	[(B) cannot be found in this state;
699	699	[(4) the names or a description of the goods or
700	700	services in connection with which the mark is being used;
701	701	[(5) the manner in which the mark is being used in
702	702	connection with the goods or services;
703	703	[(6) the class in which the applicant believes the
704	704	goods or services belong;
705	705	[(7) the date on which the applicant first used the
706	706	mark anywhere in connection with the goods or services;
707	707	[(8) the date on which the applicant first used the
708	708	mark in this state in connection with the goods or services;
709	709	[(9) a statement that the applicant is the owner of the
710	710	mark, and that, to the best of the applicant's knowledge, no other
711	711	person is entitled to use the mark in this state:
712	712	[(A) in the identical form used by the applicant;
713	713	or
714	714	[(B) in a form that is likely, when used in
715	715	connection with the goods or services, to cause confusion or
716	716	mistake, or to deceive, because of its resemblance to the mark used
717	717	by the applicant;
718	718	[(10) a narrative description of the mark; and
719	719	[(11) such additional information or documents as the
720	720	secretary of state may reasonably require.
721	721	[(c) The applicant shall:
722	722	[(1) prepare and file the application and a copy of the
723	723	application with the secretary of state; and
724	724	[(2) submit as part of the application to the
725	725	secretary of state:
726	726	[(A) two identical specimens or facsimiles of the
727	727	mark as actually used, one specimen or facsimile with the original
728	728	application and one specimen or facsimile with the copy;
729	729	[(B) a drawing of the mark that complies with any
730	730	requirement specified by the secretary of state; and
731	731	[(C) an application fee of $50 payable to the
732	732	secretary of state.
733	733	[(d) The applicant or the applicant's agent shall sign the
734	734	application.
735	735	[Sec. 16.105. EXAMINATION OF APPLICATION. (a) On the
736	736	filing of an application for registration and payment of the
737	737	application fee, the secretary of state shall examine the
738	738	application for compliance with this chapter.
739	739	[(b) The applicant shall provide to the secretary of state
740	740	additional pertinent information requested by the secretary of
741	741	state.
742	742	[(c) The secretary of state shall examine applications in
743	743	the order in which the applications are filed, including
744	744	applications concurrently processed for registration of the same or
745	745	confusingly similar marks used in connection with the same or
746	746	similar goods or services.
747	747	[Sec. 16.106. AMENDMENT TO APPLICATION. (a) The applicant
748	748	may make an amendment to the application as reasonably requested by
749	749	the secretary of state or in response to a rejection or objection to
750	750	the registration by the secretary of state.
751	751	[(b) An amendment to the application, other than an
752	752	amendment to the date on which the applicant first uses the mark,
753	753	may be made by the applicant's agent. The secretary of state may
754	754	require the applicant to execute and submit a new application
755	755	instead of making an amendment.
756	756	[(c) An amendment to the application made to the date on
757	757	which the applicant first used the mark may not specify a date of
758	758	use that is after the date on which the application was filed.
759	759	[Sec. 16.107. DISCLAIMER OF UNREGISTRABLE COMPONENT. The
760	760	secretary of state may require the applicant to disclaim or the
761	761	applicant may voluntarily disclaim an unregistrable component of a
762	762	mark that is otherwise registrable. A disclaimer may not prejudice
763	763	or affect the:
764	764	[(1) rights of the applicant or registrant in the
765	765	disclaimed matter; or
766	766	[(2) rights of the applicant or registrant to make an
767	767	application to register a mark if the disclaimed matter is
768	768	distinctive of the goods or services of the applicant or
769	769	registrant.
770	770	[Sec. 16.108. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
771	771	MARK. (a) When concurrently processing applications for the same
772	772	or confusingly similar marks used in connection with the same or
773	773	similar goods or services, the secretary of state shall give
774	774	priority to the application that was filed first. If the previously
775	775	filed application is registered, the secretary of state shall
776	776	reject the other application.
777	777	[(b) The applicant may bring an action for cancellation of
778	778	the previously issued registration on the ground that the applicant
779	779	has a prior or superior right to the mark under this chapter.
780	780	[Sec. 16.109. DENIAL OF REGISTRATION. (a) If the
781	781	secretary of state finds that the applicant is not entitled to
782	782	register the mark, the secretary of state shall:
783	783	[(1) notify the applicant of the reason for the denial
784	784	of the application; and
785	785	[(2) give the applicant a reasonable amount of time as
786	786	prescribed by the secretary of state in which to:
787	787	[(A) issue a response to the denial; or
788	788	[(B) amend the application.
789	789	[(b) The applicant may repeat the examination procedures
790	790	described by Subsection (a) until the earlier of:
791	791	[(1) the expiration of the period prescribed by the
792	792	secretary of state under Subsection (a)(2); or
793	793	[(2) the date on which the secretary of state finally
794	794	refuses registration of the application.
795	795	[(c) If the secretary of state finally refuses registration
796	796	of the mark, the applicant may seek a review of the decision of the
797	797	secretary of state in accordance with the procedures prescribed by
798	798	this chapter.
799	799	[Sec. 16.11. REGISTRATION BY SECRETARY OF STATE. If the
800	800	application satisfies the requirements of this chapter, and the
801	801	application fee has been paid, the secretary of state shall:
802	802	[(1) endorse on the original and the copy of the
803	803	application:
804	804	[(A) the word "filed"; and
805	805	[(B) the date on which the application was filed;
806	806	[(2) file the original in his office;
807	807	[(3) issue a certificate of registration evidencing
808	808	registration on the date on which the application was filed;
809	809	[(4) attach the copy to the certificate of
810	810	registration; and
811	811	[(5) deliver the certificate of registration with the
812	812	attached copy of the application to the applicant.
813	813	[Sec. 16.12. TERM OF REGISTRATION. (a) The registration
814	814	of a mark under this chapter is effective for a term of 10 years from
815	815	the date of registration.
816	816	[Sec. 16.13. NOTICE OF EXPIRATION OF REGISTRATION.
817	817	(a) During the period beginning 12 months and ending 6 months
818	818	before the day a registration expires, the secretary of state
819	819	shall, by writing to the last known address of the registrant under
820	820	this chapter or under a prior act, notify the registrant of the
821	821	necessity for renewing or reregistering under Section 16.14 of this
822	822	code.
823	823	[(b) Neither the secretary of state's failure to notify a
824	824	registrant nor the registrant's nonreceipt of a notice under
825	825	Subsection (a) of this section
826	826	[(1) extends the term of a registration; or
827	827	[(2) excuses the registrant's failure to renew or
828	828	reregister.
829	829	[Sec. 16.14. RENEWAL OF REGISTRATION AND REREGISTRATION.
830	830	(a) The registration of a mark under this chapter may be renewed
831	831	for an additional 10-year term by filing a renewal application
832	832	within six months before the day the registration expires. The
833	833	registrant shall submit to the secretary of state:
834	834	[(1) a renewal application stating that:
835	835	[(A) the mark is still in use in this state; or
836	836	[(B) nonuse of the mark in this state:
837	837	[(i) is due to special circumstances which
838	838	excuse the nonuse; and
839	839	[(ii) is not due to an intention to abandon
840	840	the mark in this state; and
841	841	[(2) a renewal application fee of $25 payable to the
842	842	secretary of state.
843	843	[(b) A registrant may renew a registration under Subsection
844	844	(a) of this section for successive terms of 10 years.
845	845	[(d) The renewal application must be signed by the
846	846	registrant or the registrant's agent.
847	847	[Sec. 16.15. RECORD, NOTICE, AND PROOF OF REGISTRATION.
848	848	(a) The secretary of state shall keep for public examination a
849	849	record of all:
850	850	[(1) marks registered, reregistered, or renewed under
851	851	this chapter;
852	852	[(2) assignments recorded under Section 16.18 of this
853	853	code; and
854	854	[(3) other instruments recorded under Section 16.19 of
855	855	this code.
856	856	[(b) Registration of a mark under this chapter is
857	857	constructive notice throughout this state of the registrant's claim
858	858	of ownership of the mark throughout this state.
859	859	[(c) A certificate of registration issued by the secretary
860	860	of state under this chapter, or a copy of it certified by the
861	861	secretary of state, is admissible in evidence as prima facie proof
862	862	of
863	863	[(1) the validity of the registration;
864	864	[(2) the registrant's ownership of the mark; and
865	865	[(3) the registrant's exclusive right to use the mark
866	866	in commerce in this state in connection with the goods or services
867	867	specified in the certificate, subject to any conditions and
868	868	limitations stated in the certificate.
869	869	[Sec. 16.16. CANCELLATION OF REGISTRATION. (a) The
870	870	secretary of state shall cancel
871	871	[(1) all registrations in force before May 2, 1962,
872	872	which are more than 10 years old and which have not been
873	873	reregistered under Section 16.14(c) of this code;
874	874	[(2) a registration on receipt of a voluntary request
875	875	for cancellation from the registrant under this chapter or under a
876	876	prior act as identified by the records of the secretary of state;
877	877	[(3) registrations granted under this chapter and not
878	878	renewed under Section 16.14(a) of this code;
879	879	[(4) a registration concerning which a district or
880	880	appellate court has rendered a final judgment, which has become
881	881	unappealable, cancelling the registration or finding that
882	882	[(A) the registered mark has been abandoned;
883	883	[(B) the registrant under this chapter or under a
884	884	prior act is not the owner of the mark;
885	885	[(C) the registration was granted contrary to the
886	886	provisions of this chapter;
887	887	[(D) the registration was obtained fraudulently;
888	888	or
889	889	[(E) the registered mark has become incapable of
890	890	serving as a mark.
891	891	[(b) The clerk of the court whose final judgment cancels a
892	892	registration or makes any of the findings specified in Subsection
893	893	(a)(4) of this section shall, when the judgment becomes
894	894	unappealable, transmit a certified copy of it to the secretary of
895	895	state.
896	896	[Sec. 16.17. ASSIGNMENT OF MARK AND REGISTRATION. (a) A
897	897	mark and its registration under this chapter are assignable with
898	898	the goodwill of the business in which the mark is used, or with that
899	899	part of the goodwill connected with the use of, and symbolized by,
900	900	the mark.
901	901	[(b) An assignment shall be made by duly executed written
902	902	instrument.
903	903	[Sec. 16.18. RECORDATION OF ASSIGNMENT AND ITS EFFECT.
904	904	(a) An assignment made under Section 16.17 of this code may be
905	905	recorded with the secretary of state by
906	906	[(1) filing with him
907	907	[(A) the original assignment; and
908	908	[(B) a duplicate original or legible photocopy on
909	909	durable paper of the assignment; and
910	910	[(2) paying him a fee of $10.
911	911	[(b) If an assignment has been properly filed for record
912	912	under Subsection (a) of this section, the secretary of state shall
913	913	[(1) issue in the assignee's name a new certificate of
914	914	registration for the remainder of the term of the mark's
915	915	registration, reregistration, or last renewal;
916	916	[(2) endorse on the original and duplicate original
917	917	assignment or photocopy the
918	918	[(A) words "Filed for record in the office of the
919	919	Secretary of State, State of Texas"; and
920	920	[(B) date on which the assignment was filed for
921	921	record;
922	922	[(3) file the duplicate original or photocopy of the
923	923	assignment in his office; and
924	924	[(4) return the endorsed original assignment to the
925	925	assignee or his representative.
926	926	[(c) The assignment of a mark registered under this chapter
927	927	is void against a purchaser who purchases the mark for value after
928	928	the assignment is made and without notice of it unless the
929	929	assignment is recorded by the secretary of state
930	930	[(1) within three months after the date of the
931	931	assignment; or
932	932	[(2) before the mark is purchased.
933	933	[Sec. 16.19. RECORDATION OF OTHER INSTRUMENTS. (a) An
934	934	instrument that is related to the ownership of a mark registered
935	935	under this subchapter, including articles of merger or conversion
936	936	or a document effecting a name change, may be recorded with the
937	937	secretary of state by:
938	938	[(1) filing a certified copy of the instrument; and
939	939	[(2) paying a filing fee in the amount established for
940	940	the filing of an assignment under Section 16.18.
941	941	[(b) This section does not apply to the recording of a
942	942	mortgage or a security interest or other instrument that is
943	943	recordable under the Uniform Commercial Code.
944	944	[(c) A license agreement related to a mark registered under
945	945	this chapter may not be recorded under this section.
946	946	[Sec. 16.20. TRANSFER OF MARK; CHANGE OF REGISTRANT'S
947	947	NAME; CHANGE OF ADDRESS. (a) If ownership of a registered mark is
948	948	transferred or a registrant's name is changed during the unexpired
949	949	term of a registration, a new certificate of registration may be
950	950	issued for the remainder of the unexpired term of the mark's
951	951	registration in the name of the transferee or in the new name of the
952	952	registrant upon the filing of an instrument under Section 16.19.
953	953	[(b) The secretary of state may amend the trademark records
954	954	of an effective registration to reflect a change of registrant
955	955	address upon receipt of a statement signed by the registrant or the
956	956	registrant's agent. The statement must set forth the name of the
957	957	registrant of record, a description of the registered mark, the
958	958	registration number issued by the secretary of state, and the
959	959	registrant's new address.
960	960	[Sec. 16.21. POWERS OF SECRETARY OF STATE. (a) The
961	961	secretary of state may adopt rules relating to the filing of
962	962	documents under this subchapter.
963	963	[(b) The secretary of state may prescribe forms for use in
964	964	filing documents under this subchapter.
965	965	[Sec. 16.22. ELECTRONIC FILINGS AND REPRODUCTIONS. (a) An
966	966	application for renewal of trademark registration, an assignment
967	967	under Section 16.17, or a transfer of ownership or change of
968	968	registrant name under Section 16.19 may be submitted in an
969	969	electronic format that is approved by the secretary of state. An
970	970	instrument that is filed in accordance with this subsection is
971	971	deemed to have complied with:
972	972	[(1) the filing requirements of the section pursuant
973	973	to which it is filed; and
974	974	[(2) any requirement that the document be submitted as
975	975	an originally signed instrument.
976	976	[(b) All electronic acknowledgments and certificates
977	977	required to be issued by the secretary of state for the instruments
978	978	filed pursuant to Subsection (a) shall be considered issued or
979	979	provided by the secretary of state on the initial transmission by
980	980	the secretary of state of the acknowledgment or certificate
981	981	required to be filed.
982	982	[(c) Any certificate issued by the secretary of state
983	983	concerning any instrument filed under this subchapter need not be
984	984	on paper or reduced to printed form.
985	985	[(d) If permitted by the rules adopted by the secretary of
986	986	state, an original instrument required or authorized to be filed
987	987	with the secretary of state under this subchapter may be a
988	988	photographic, photostatic, facsimile, or similar reproduction of a
989	989	signed instrument.
990	990	[(e) All civil and criminal penalties applicable to the
991	991	filing of documents under this chapter apply to all documents filed
992	992	pursuant to this section.
993	993	[SUBCHAPTER C. COURT ACTION
994	994	[Sec. 16.24. REVIEW OF SECRETARY OF STATE'S DECISIONS. (a)
995	995	If the secretary of state takes final action refusing to register a
996	996	mark under Section 16.109 or to renew the registration of a mark
997	997	under Section 16.14, the applicant or registrant may file suit for
998	998	review of the secretary of state's decision in one of the Travis
999	999	County district courts.
1000	1000	[(b) A suit filed under Subsection (a) of this section is
1001	1001	tried de novo, as an appeal from a justice court to a county court,
1002	1002	and
1003	1003	[(1) every decision or action concerning an issue in
1004	1004	the suit made or taken by the secretary of state before the suit was
1005	1005	filed is void;
1006	1006	[(2) the district court shall determine the issues in
1007	1007	the suit as if no decision had been made or action taken by the
1008	1008	secretary of state; and
1009	1009	[(3) the district court may not apply in any form the
1010	1010	substantial evidence rule in reviewing a decision or action of the
1011	1011	secretary of state.
1012	1012	[(c) The legislature declares that
1013	1013	[(1) this section is not severable from the other
1014	1014	sections of this chapter;
1015	1015	[(2) it would not have enacted this chapter without
1016	1016	this section; and
1017	1017	[(3) this chapter is void if a court in a final
1018	1018	judgment which becomes unappealable invalidates this section in
1019	1019	whole or part.
1020	1020	[Sec. 16.25. SUIT TO CANCEL REGISTRATION. (a) A person
1021	1021	who believes that he is or will be damaged by a registration under
1022	1022	this chapter may sue to cancel the registration in a district court
1023	1023	having venue.
1024	1024	[(b) The clerk of a court in which suit is filed under
1025	1025	Subsection (a) of this section shall transmit notice of the suit to
1026	1026	the secretary of state, who shall place the notice in the
1027	1027	registration file with proper notations and endorsements.
1028	1028	[(c) When the registrant's agent for service of process is
1029	1029	the secretary of state, the secretary of state shall forward notice
1030	1030	of the suit by registered mail to the registrant at his last address
1031	1031	of record.
1032	1032	[(d) If the court finds that the losing party in a suit filed
1033	1033	under Subsection (a) of this section should have known his position
1034	1034	was without merit, the court may award the successful party his
1035	1035	reasonable attorneys' fees and charge them as part of the costs
1036	1036	against the losing party.
1037	1037	[Sec. 16.26. INFRINGEMENT OF REGISTERED MARK. (a) Subject
1038	1038	to Section 16.27 of this code, a person commits an infringement if,
1039	1039	without the registrant's consent, he
1040	1040	[(1) uses anywhere in this state a reproduction,
1041	1041	counterfeit, copy, or colorable imitation of a mark registered
1042	1042	under this chapter in connection with selling, offering for sale,
1043	1043	or advertising goods or services when the use is likely to deceive
1044	1044	or cause confusion or mistake as to the source or origin of the
1045	1045	goods or services; or
1046	1046	[(2) reproduces, counterfeits, copies, or colorably
1047	1047	imitates a mark registered under this chapter and applies the
1048	1048	reproduction, counterfeit, copy, or colorable imitation to a label,
1049	1049	sign, print, package, wrapper, receptacle, or advertisement
1050	1050	intended to be used in selling, leasing, distributing, or rendering
1051	1051	goods or services in this state when the use is likely to deceive or
1052	1052	cause confusion or mistake as to the source or origin of the goods
1053	1053	or services.
1054	1054	[(b) A registrant may sue for damages and to enjoin an
1055	1055	infringement proscribed by Subsection (a) of this section in a
1056	1056	district court having venue.
1057	1057	[(c) If the district court determines that there has been an
1058	1058	infringement, it shall enjoin the act of infringement and may
1059	1059	[(1) require the infringer to pay the registrant all
1060	1060	damages resulting from the acts of infringement and occurring from
1061	1061	and after the date two years before the day the suit was filed; and
1062	1062	[(2) order that the infringing reproductions,
1063	1063	counterfeits, copies, or colorable imitations in the possession or
1064	1064	under the control of the infringer be
1065	1065	[(A) delivered to an officer of the court;
1066	1066	[(B) delivered to the registrant; or
1067	1067	[(C) destroyed.
1068	1068	[(d) A registrant is entitled to recover damages under
1069	1069	Subsection (c)(1) of this section only for an infringement that
1070	1070	occurred during the period of time the infringer had actual
1071	1071	knowledge of the registrant's mark.
1072	1072	[Sec. 16.27. EXCEPTIONS TO LIABILITY FOR INFRINGEMENT. (a)
1073	1073	No registration under this chapter adversely affects common law
1074	1074	rights acquired prior to registration under this chapter. However,
1075	1075	during any period when the registration of a mark under this chapter
1076	1076	is in force and the registrant has not abandoned the mark, no common
1077	1077	law rights as against the registrant of the mark may be acquired.
1078	1078	[(b) The owner or operator of a radio or television station,
1079	1079	or the owner or publisher of a newspaper, magazine, directory, or
1080	1080	other publication, is not liable in that business under Section
1081	1081	16.26 of this code for the use of a registered mark furnished by one
1082	1082	of his advertisers or customers.
1083	1083	[Sec. 16.28. PROCURING APPLICATION OR REGISTRATION BY
1084	1084	FRAUD. (a) No person may procure for himself or another the
1085	1085	filing of an application or the registration of a mark under this
1086	1086	chapter by knowingly making a false or fraudulent representation or
1087	1087	declaration, oral or written, or by any other fraudulent means.
1088	1088	[(b) A person injured by the false or fraudulent procurement
1089	1089	of an application or registration may sue the person who violated
1090	1090	Subsection (a) of this section in a district court having venue and
1091	1091	[(1) recover from him damages resulting from use of
1092	1092	the fraudulently registered mark, plus costs of suit, including
1093	1093	attorneys' fees; and
1094	1094	[(2) have the registration cancelled.
1095	1095	[Sec. 16.29. INJURY TO BUSINESS REPUTATION OR TRADE NAME OR
1096	1096	MARK. A person may bring an action to enjoin an act likely to
1097	1097	injure a business reputation or to dilute the distinctive quality
1098	1098	of a mark registered under this chapter or Title 15, U.S.C., or a
1099	1099	mark or trade name valid at common law, regardless of whether there
1100	1100	is competition between the parties or confusion as to the source of
1101	1101	goods or services. An injunction sought under this section shall be
1102	1102	obtained pursuant to Rule 680 et seq. of the Texas Rules of Civil
1103	1103	Procedure.
1104	1104	[Sec. 16.30. OLYMPIC SYMBOLS. (a) Without the permission
1105	1105	of the United States Olympic Committee, a person may not, for the
1106	1106	purpose of trade, to induce the sale of goods or services, or to
1107	1107	promote a theatrical exhibition, athletic performance, or
1108	1108	competition, use:
1109	1109	[(1) the symbol of the International Olympic
1110	1110	Committee, consisting of five interlocking rings;
1111	1111	[(2) the emblem of the United States Olympic
1112	1112	Committee, consisting of an escutcheon having a blue chief and
1113	1113	vertically extending red and white bars on the base with five
1114	1114	interlocking rings displayed on the chief;
1115	1115	[(3) a trademark, trade name, sign, symbol, or
1116	1116	insignia falsely representing association with or authorization by
1117	1117	the International Olympic Committee or the United States Olympic
1118	1118	Committee; or
1119	1119	[(4) the words "Olympic," "Olympiad," or "Citius
1120	1120	Altius Fortius" or a combination or simulation of those words that
1121	1121	tends to cause confusion or mistake, to deceive, or to suggest
1122	1122	falsely a connection with the United States Olympic Committee or an
1123	1123	Olympic activity.
1124	1124	[(b) On violation of Subsection (a), the United States
1125	1125	Olympic Committee is entitled to the remedies available to a
1126	1126	registrant on infringement of a mark registered under this chapter.
1127	1127	[Sec. 16.31. CRIMINAL PENALTY. (a) A person commits an
1128	1128	offense if the person knowingly or intentionally signs and presents
1129	1129	or causes to be presented for filing a document that may be or is
1130	1130	required to be filed under this chapter and that:
1131	1131	[(1) indicates that the person signing the document
1132	1132	has the authority to act on behalf of an applicant or registrant
1133	1133	when the person is not authorized to act on behalf of the applicant
1134	1134	or registrant;
1135	1135	[(2) contains a material false statement; or
1136	1136	[(3) is forged.
1137	1137	[(b) An offense under this section is a Class A misdemeanor
1138	1138	unless the actor's intent is to defraud or harm another, in which
1139	1139	event the offense is a state jail felony.]
1140	1140	SECTION 2. The intent of this Act is to provide a system of
1141	1141	trademark registration and protection in this state that is
1142	1142	substantially consistent with the federal system of trademark
1143	1143	registration and protection under the Trademark Act of 1946, as
1144	1144	amended. To that end, the construction given to the Trademark Act
1145	1145	of 1946 (15 U.S.C. Section 1051 et seq.) should be examined as
1146	1146	persuasive authority for interpreting and construing this Act.
1147	1147	SECTION 3. The changes in law made by this Act do not affect
1148	1148	any suit, proceeding, or appeal pending on the effective date of
1149	1149	this Act.
1150	1150	SECTION 4. This Act takes effect September 1, 2009.