Texas 2011 - 82nd Regular

Texas House Bill HB3141 Compare Versions

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1	1	By: Hartnett (Senate Sponsor - Carona) H.B. No. 3141
2	2	(In the Senate - Received from the House April 26, 2011;
3	3	April 29, 2011, read first time and referred to Committee on
4	4	Business and Commerce; May 10, 2011, reported favorably by the
5	5	following vote: Yeas 9, Nays 0; May 10, 2011, sent to printer.)
6	6
7	7
8	8	A BILL TO BE ENTITLED
9	9	AN ACT
10	10	relating to the registration and protection of trademarks.
11	11	BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS:
12	12	SECTION 1. Chapter 16, Business & Commerce Code, is amended
13	13	to read as follows:
14	14	CHAPTER 16. TRADEMARKS
15	15	SUBCHAPTER A. GENERAL PROVISIONS
16	16	Sec. 16.001. DEFINITIONS. In this chapter:
17	17	(1) "Applicant" means a person applying for
18	18	registration of a mark under this chapter. The term includes the
19	19	person's legal representative, successor, and assignee.
20	20	(2) "Dilution" means dilution by blurring or dilution
21	21	by tarnishment, without regard to the presence or absence of:
22	22	(A) competition between the owner of a famous
23	23	mark and another person;
24	24	(B) actual or likely confusion, mistake, or
25	25	deception; or
26	26	(C) actual economic harm.
27	27	(3) "Dilution by blurring" means an association
28	28	arising from the similarity between a mark or trade name and a
29	29	famous mark that impairs the famous mark's distinctiveness.
30	30	(4) "Dilution by tarnishment" means an association
31	31	arising from the similarity between a mark or trade name and a
32	32	famous mark that harms the famous mark's reputation.
33	33	(5) "Mark" includes a trademark or service mark that
34	34	is registrable under this chapter, regardless of whether the
35	35	trademark or service mark is actually registered.
36	36	(6) "Person," with respect to the applicant or another
37	37	person who is entitled to a benefit or privilege or is rendered
38	38	liable under this chapter, includes:
39	39	(A) a natural person; and
40	40	(B) a firm, partnership, corporation,
41	41	association, union, or other organization that may sue or be sued in
42	42	that capacity.
43	43	(7) "Registrant" means the person to whom a
44	44	registration of a mark has been issued under this chapter. The term
45	45	includes the person's legal representative, successor, or
46	46	assignee.
47	47	(8) "Service mark":
48	48	(A) means a word, name, symbol, or device, or any
49	49	combination of those terms, used by a person to:
50	50	(i) identify and distinguish the services
51	51	of one person, including a unique service, from the services of
52	52	another; and
53	53	(ii) indicate the source of the services,
54	54	regardless of whether the source is unknown; and
55	55	(B) includes the titles, character names used by
56	56	a person, and other distinctive features of radio or television
57	57	programs, regardless of whether the titles, character names, or
58	58	programs advertise the sponsor's goods.
59	59	(9) "Trade name" means a name used by a person to
60	60	identify the person's business or vocation.
61	61	(10) "Trademark" means a word, name, symbol, or
62	62	device, or any combination of those terms, used by a person to:
63	63	(A) identify and distinguish the person's goods,
64	64	including a unique product, from the goods manufactured or sold by
65	65	another; and
66	66	(B) indicate the source of the goods, regardless
67	67	of whether the source is unknown.
68	68	Sec. 16.002. INAPPLICABILITY OF CHAPTER. This chapter does
69	69	not apply to the registration or use of a livestock brand or other
70	70	indicia of ownership of goods that do not qualify as a mark.
71	71	Sec. 16.003. WHEN MARK CONSIDERED TO BE IN USE. (a) A mark
72	72	is considered to be in use in this state in connection with goods
73	73	when:
74	74	(1) the mark is placed in any manner on:
75	75	(A) the goods;
76	76	(B) containers of the goods;
77	77	(C) displays associated with the goods;
78	78	(D) tags or labels affixed to the goods; or
79	79	(E) documents associated with the goods or sale
80	80	of the goods, if the nature of the goods makes placement described
81	81	by Paragraphs (A) through (D) impracticable; and
82	82	(2) the goods are sold or transported in commerce in
83	83	this state.
84	84	(b) A mark is considered to be in use in this state in
85	85	connection with services when:
86	86	(1) the mark is used or displayed in this state in
87	87	connection with selling or advertising the services; and
88	88	(2) the services are rendered in this state.
89	89	(c) A mark made merely to reserve a right in the mark is not
90	90	considered to be in use in this state in connection with goods or
91	91	services.
92	92	Sec. 16.004. WHEN MARK CONSIDERED TO BE ABANDONED. (a) A
93	93	mark is considered to be abandoned when:
94	94	(1) the mark's use has been discontinued with intent
95	95	not to resume the use; or
96	96	(2) the owner's conduct, including an omission or
97	97	commission of an act, causes the mark to lose its significance as a
98	98	mark.
99	99	(b) Intent not to resume use of a mark under Subsection
100	100	(a)(1) may be inferred from the circumstances.
101	101	(c) Nonuse of a mark as described by Subsection (a)(1) for
102	102	three consecutive years constitutes prima facie evidence of the
103	103	mark's abandonment.
104	104	[Sections 16.005-16.050 reserved for expansion]
105	105	SUBCHAPTER B. REGISTRATION OF MARK
106	106	Sec. 16.051. REGISTRABLE MARKS. (a) A mark that
107	107	distinguishes an applicant's goods or services from those of others
108	108	is registrable unless the mark:
109	109	(1) consists of or comprises matter that is immoral,
110	110	deceptive, or scandalous;
111	111	(2) consists of or comprises matter that may
112	112	disparage, falsely suggest a connection with, or bring into
113	113	contempt or disrepute:
114	114	(A) a person, whether living or dead;
115	115	(B) an institution;
116	116	(C) a belief; or
117	117	(D) a national symbol;
118	118	(3) depicts, comprises, or simulates the flag, the
119	119	coat of arms, or other insignia of:
120	120	(A) the United States;
121	121	(B) a state;
122	122	(C) a municipality; or
123	123	(D) a foreign nation;
124	124	(4) consists of or comprises the name, signature, or
125	125	portrait of a particular living individual who has not consented in
126	126	writing to the mark's registration;
127	127	(5) when used on or in connection with the applicant's
128	128	goods or services:
129	129	(A) is merely descriptive or deceptively
130	130	misdescriptive of the applicant's goods or services; or
131	131	(B) is primarily geographically descriptive or
132	132	deceptively misdescriptive of the applicant's goods or services;
133	133	(6) is primarily merely a surname; or
134	134	(7) is likely to cause confusion or mistake, or to
135	135	deceive, because, when used on or in connection with the
136	136	applicant's goods or services, it resembles:
137	137	(A) a mark registered in this state; or
138	138	(B) an unabandoned mark registered with the
139	139	United States Patent and Trademark Office.
140	140	(b) Subsection (a)(5) or (6) does not prevent the
141	141	registration of a mark used by the applicant that has become
142	142	distinctive as applied to the applicant's goods or services. The
143	143	secretary of state may accept as evidence that a mark has become
144	144	distinctive, when used on or in connection with the applicant's
145	145	goods or services, proof of continuous use of the mark as such by
146	146	the applicant in this state for the five years preceding the date on
147	147	which the claim of distinctiveness is made.
148	148	Sec. 16.052. APPLICATION FOR REGISTRATION. (a) Subject to
149	149	the limitations prescribed by this chapter, a person who uses a mark
150	150	may file an application to register the mark in the office of the
151	151	secretary of state in the manner prescribed by the secretary of
152	152	state.
153	153	(b) The application must include:
154	154	(1) the name and business address of the applicant;
155	155	(2) if the applicant is a corporation, the state under
156	156	whose laws the applicant was incorporated or organized;
157	157	(3) if the applicant is a partnership, the state under
158	158	whose laws the partnership was organized and the names of the
159	159	general partners;
160	160	(4) the names or a description of the goods or services
161	161	on or in connection with which the mark is being used;
162	162	(5) the mode or manner in which the mark is being used
163	163	on or in connection with the goods or services;
164	164	(6) the class to which the goods or services belong;
165	165	(7) the date the applicant or applicant's predecessor
166	166	in interest first used the mark anywhere;
167	167	(8) the date the applicant or the applicant's
168	168	predecessor in interest first used the mark in this state; and
169	169	(9) a statement that:
170	170	(A) the applicant is the owner of the mark;
171	171	(B) the mark is in use; and
172	172	(C) to the knowledge of the person verifying the
173	173	application, no other person:
174	174	(i) has registered the mark, either
175	175	federally or in this state; or
176	176	(ii) is entitled to use the mark in this
177	177	state:
178	178	(a) in the identical form used by the
179	179	applicant; or
180	180	(b) in a form that is likely, when
181	181	used on or in connection with the goods or services of the other
182	182	person, to cause confusion or mistake, or to deceive, because of its
183	183	resemblance to the mark.
184	184	(c) The secretary of state may also require a statement as
185	185	to whether the applicant or the applicant's predecessor in interest
186	186	has filed an application to register the mark, or a portion or
187	187	composite of the mark, with the United States Patent and Trademark
188	188	Office, and, if so, the applicant shall fully disclose information
189	189	with respect to that filing, including:
190	190	(1) the filing date and serial number of each
191	191	application;
192	192	(2) the status of the filing; and
193	193	(3) if any application was finally refused
194	194	registration or has not otherwise resulted in the issuance of a
195	195	registration, the reasons for the refusal or nonissuance.
196	196	(d) The application must be accompanied by:
197	197	(1) three specimens of the mark as actually used; and
198	198	(2) an application fee payable to the secretary of
199	199	state.
200	200	(e) The application must be signed and verified by the oath
201	201	or affirmation of:
202	202	(1) the applicant; or
203	203	(2) a member of the firm or officer of the corporation
204	204	or association that is applying for registration of the mark, as
205	205	applicable.
206	206	(f) The secretary of state may also require that a drawing
207	207	of the mark that complies with any requirement specified by the
208	208	secretary of state accompany the application.
209	209	Sec. 16.053. FILING OF APPLICATION; EXAMINATION. (a) On
210	210	the filing of an application for registration and payment of the
211	211	application fee, the secretary of state shall examine the
212	212	application for compliance with this chapter.
213	213	(b) The applicant shall provide to the secretary of state
214	214	any additional pertinent information requested by the secretary of
215	215	state, including a description of a design mark.
216	216	Sec. 16.054. AMENDMENT TO APPLICATION. (a) In response to
217	217	the secretary of state's rejection of or objection to the
218	218	registration, the applicant may amend, or authorize the secretary
219	219	of state to amend, the application on reasonable request of the
220	220	secretary of state or if the applicant considers it advisable.
221	221	(b) The secretary of state, on agreement by the applicant,
222	222	may amend the application submitted by the applicant. The
223	223	secretary of state may require the applicant to submit a new
224	224	application instead of amending the application.
225	225	Sec. 16.055. DISCLAIMER OF UNREGISTRABLE COMPONENT. (a)
226	226	The secretary of state may require the applicant to disclaim an
227	227	unregistrable component of a mark that is otherwise registrable.
228	228	An applicant may voluntarily disclaim a component of a mark sought
229	229	to be registered.
230	230	(b) A disclaimer may not prejudice or affect:
231	231	(1) the rights of the applicant or registrant in the
232	232	disclaimed matter; or
233	233	(2) the rights of the applicant or registrant to
234	234	submit another application to register the mark if the disclaimed
235	235	matter is or has become distinctive of the applicant's or
236	236	registrant's goods or services.
237	237	Sec. 16.056. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
238	238	MARK. (a) When concurrently processing applications for the same
239	239	or confusingly similar marks used on or in connection with the same
240	240	or related goods or services, the secretary of state shall grant
241	241	priority to the application that was filed first. If a prior filed
242	242	application is granted a registration, the secretary of state shall
243	243	reject any other subsequently filed application.
244	244	(b) An applicant whose application is rejected under this
245	245	section may bring an action in accordance with Section 16.106 for
246	246	cancellation of the previously issued registration on the ground
247	247	that the applicant has a prior or superior right to the mark.
248	248	Sec. 16.057. DENIAL OF REGISTRATION; NOTICE. (a) If the
249	249	secretary of state determines that the applicant is not entitled to
250	250	register the mark, the secretary of state shall:
251	251	(1) notify the applicant of the determination and the
252	252	reason for the denial of the application; and
253	253	(2) give the applicant reasonable time as prescribed
254	254	by the secretary of state in which to issue a response to the denial
255	255	or amend the application, in which event the secretary of state
256	256	shall reexamine the application.
257	257	(b) The applicant may repeat the examination procedures
258	258	described by Subsection (a) until the earlier of:
259	259	(1) the expiration of the period prescribed by the
260	260	secretary of state under Subsection (a)(2); or
261	261	(2) the date on which the secretary of state finally
262	262	refuses registration of the application.
263	263	(c) If the applicant fails to respond to the denial or to
264	264	amend the application within the period prescribed by the secretary
265	265	of state under Subsection (a)(2), the application is considered to
266	266	have been abandoned.
267	267	(d) If the secretary of state finally refuses registration
268	268	of the mark, the applicant may seek a writ of mandamus against the
269	269	secretary of state to compel registration in accordance with the
270	270	procedures prescribed by Section 16.106. The writ of mandamus may
271	271	be granted, without cost to the secretary of state, on proof that
272	272	all the statements in the application are true and that the mark is
273	273	otherwise entitled to registration.
274	274	Sec. 16.058. CERTIFICATE OF REGISTRATION. (a) If the
275	275	application complies with the requirements of this chapter, the
276	276	secretary of state shall cause a certificate of registration to be
277	277	issued and delivered to the applicant.
278	278	(b) The certificate of registration must:
279	279	(1) be signed by the secretary of state;
280	280	(2) be issued under the secretary of state's official
281	281	seal;
282	282	(3) indicate the name and business address of the
283	283	person claiming ownership of the mark;
284	284	(4) if the applicant is a corporation, indicate the
285	285	state under whose laws the applicant was incorporated or organized;
286	286	(5) if the applicant is a partnership, indicate the
287	287	state under whose laws the partnership was organized and the names
288	288	of the general partners;
289	289	(6) include a description of the goods or services on
290	290	or in connection with which the mark is being used;
291	291	(7) state the class of the goods or services;
292	292	(8) state the date claimed for the first use of the
293	293	mark anywhere;
294	294	(9) state the date claimed for the first use of the
295	295	mark in this state;
296	296	(10) show a reproduction of the mark;
297	297	(11) state the registration date; and
298	298	(12) state the term of the registration.
299	299	Sec. 16.059. TERM AND RENEWAL OF REGISTRATION. (a) The
300	300	registration of a mark under this chapter expires on the fifth
301	301	anniversary of the date of registration.
302	302	(b) The registration of a mark under this chapter may be
303	303	renewed for an additional five-year term by filing a renewal
304	304	application in the manner prescribed by the secretary of state and
305	305	paying a renewal fee not later than the 180th day before the date
306	306	the registration expires.
307	307	(c) An application for renewal under this chapter, whether
308	308	of a registration made under this chapter, or a registration that
309	309	took effect under a predecessor statute, must include:
310	310	(1) a verified statement stating that the mark has
311	311	been and is still in use in this state; and
312	312	(2) a specimen of the mark, as actually used on or in
313	313	connection with the goods or services.
314	314	(d) A mark for which a registration was in effect on August
315	315	31, 2012, continues in effect for the unexpired term of the
316	316	registration and may be renewed by complying with the requirements
317	317	for renewal under this section.
318	318	Sec. 16.060. RECORD AND PROOF OF REGISTRATION. (a) The
319	319	secretary of state shall keep for public examination a record of
320	320	all:
321	321	(1) marks registered or renewed under this chapter;
322	322	(2) assignments recorded under Section 16.061; and
323	323	(3) other instruments recorded under Section 16.062.
324	324	(b) Registration of a mark under this chapter is
325	325	constructive notice throughout this state of the registrant's claim
326	326	of ownership of the mark throughout this state.
327	327	(c) A certificate of registration issued by the secretary of
328	328	state under this chapter, or a copy of it certified by the secretary
329	329	of state, is admissible in evidence as prima facie proof of:
330	330	(1) the validity of the registration;
331	331	(2) the registrant's ownership of the mark; and
332	332	(3) the registrant's exclusive right to use the mark in
333	333	commerce in this state in connection with the goods or services
334	334	specified in the certificate, subject to any conditions and
335	335	limitations stated in the certificate.
336	336	Sec. 16.061. ASSIGNMENT OF MARK AND REGISTRATION. (a) A
337	337	mark and its registration under this chapter are assignable with
338	338	the goodwill of the business in which the mark is used, or with that
339	339	part of the goodwill of the business connected with the use of, and
340	340	symbolized by, the mark.
341	341	(b) An assignment must be made by a properly executed
342	342	written instrument and may be recorded with the secretary of state
343	343	by:
344	344	(1) filing the assignment; and
345	345	(2) paying a recording fee to the secretary of state.
346	346	(c) If an assignment has been properly filed for record
347	347	under Subsection (b), the secretary of state shall issue in the
348	348	assignee's name a new certificate of registration for the remainder
349	349	of the term of the mark's registration or last renewal.
350	350	(d) The assignment of a mark registered under this chapter
351	351	is void against a purchaser who purchases the mark for valuable
352	352	consideration after the assignment is made and without notice of it
353	353	unless the assignment is recorded by the secretary of state:
354	354	(1) not later than the 90th day after the date of the
355	355	assignment; or
356	356	(2) before the mark is purchased.
357	357	(e) An acknowledgment is prima facie evidence of the
358	358	execution of an assignment, and when recorded by the secretary of
359	359	state, the record is prima facie evidence of execution.
360	360	Sec. 16.062. RECORDING OF OTHER INSTRUMENTS. (a) A
361	361	certificate of the registrant or applicant effecting a name change
362	362	of the person to whom the mark was issued or for whom an application
363	363	was filed may be recorded with the secretary of state by paying a
364	364	recording fee to the secretary of state.
365	365	(b) Other properly executed written instruments that relate
366	366	to a mark registered or an application pending with the secretary of
367	367	state under this chapter, including a license, security interest,
368	368	or mortgage, may be recorded with the secretary of state, at the
369	369	secretary of state's discretion.
370	370	(c) An acknowledgment is prima facie evidence of the
371	371	execution of an instrument other than an assignment under this
372	372	section, and when recorded by the secretary of state, the record is
373	373	prima facie evidence of execution.
374	374	(d) The secretary of state must accept for recording a copy
375	375	of an original instrument under this section if the copy is
376	376	certified to be a true copy by any party to the transaction or the
377	377	party's successor.
378	378	Sec. 16.063. CHANGE OF REGISTRANT'S NAME. If a registrant's
379	379	name is changed during the unexpired term of a mark's registration,
380	380	a new certificate of registration may be issued for the remainder of
381	381	the unexpired term in the new name of the registrant on the filing
382	382	of a certificate under Section 16.062.
383	383	Sec. 16.064. CANCELLATION OF REGISTRATION. (a) The
384	384	secretary of state shall cancel a registration:
385	385	(1) in force on August 31, 2012, that has not been
386	386	renewed under Section 16.059;
387	387	(2) on receipt of a voluntary request for cancellation
388	388	from the registrant under this chapter or the registrant's assignee
389	389	of record;
390	390	(3) granted under this chapter and not renewed under
391	391	Section 16.059;
392	392	(4) with respect to which a court has rendered a
393	393	judgment finding that:
394	394	(A) the registered mark has been abandoned;
395	395	(B) the registrant is not the owner of the mark;
396	396	(C) the registration was granted improperly;
397	397	(D) the registration was obtained fraudulently;
398	398	(E) the registered mark is or has become the
399	399	generic name for the goods or services, or part of the goods or
400	400	services, in connection with which the mark was registered;
401	401	(F) the registered mark is so similar, as to be
402	402	likely to cause confusion or mistake or to deceive, to a mark that:
403	403	(i) is registered by another person in the
404	404	United States Patent and Trademark Office before the date the
405	405	application for registration was filed under this chapter; and
406	406	(ii) is not abandoned; or
407	407	(G) the registration was canceled by order of a
408	408	court on any ground; or
409	409	(5) when a court of competent jurisdiction orders
410	410	cancellation of a registration on any ground.
411	411	(b) If a registrant's mark is considered for cancellation
412	412	under Subsection (a)(4)(F) and the registrant proves that the
413	413	registrant is the owner of a mark concurrently registered as a mark
414	414	with the United States Patent and Trademark Office to cover a
415	415	geographical area that includes a part of this state, the secretary
416	416	of state may not cancel registration of the mark for the
417	417	geographical area of this state covered by the federal
418	418	registration.
419	419	Sec. 16.065. CLASSIFICATION OF GOODS AND SERVICES. (a) The
420	420	secretary of state by rule shall establish a classification of
421	421	goods and services for the convenient administration of this
422	422	chapter. The classifications established under this section may
423	423	not limit or expand an applicant's or registrant's rights. To the
424	424	extent practicable, the classification of goods and services must
425	425	conform to the classification of goods and services adopted by the
426	426	United States Patent and Trademark Office.
427	427	(b) An applicant may include in a single application for
428	428	registration of a mark any or all goods or services in connection
429	429	with which the mark is actually being used and the appropriate class
430	430	or classes of the goods or services.
431	431	(c) If a single application for registration of a mark
432	432	includes goods or services that belong in multiple classes, the
433	433	secretary of state may require payment of a fee for each class of
434	434	goods or services.
435	435	Sec. 16.066. FEES. (a) The secretary of state by rule
436	436	shall prescribe the amount of fees payable for the various
437	437	applications and for the filing and recording of those applications
438	438	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 16.067-16.100 reserved for expansion]
442	442	SUBCHAPTER C. ENFORCEMENT
443	443	Sec. 16.101. FRAUDULENT REGISTRATION. A person who
444	444	procures for the person or another the filing of an application or
445	445	the registration of a mark under this chapter by knowingly making a
446	446	false or fraudulent representation or declaration, oral or written,
447	447	or by any other fraudulent means, is liable to pay all damages
448	448	sustained as a result of the filing or registration. The damages
449	449	may be recovered by or on behalf of the injured party in any court of
450	450	competent jurisdiction.
451	451	Sec. 16.102. INFRINGEMENT OF REGISTERED MARK. (a) Subject
452	452	to Section 16.107, a person commits an infringement if the person:
453	453	(1) without the registrant's consent, uses anywhere in
454	454	this state a reproduction, counterfeit, copy, or colorable
455	455	imitation of a mark registered under this chapter in connection
456	456	with selling, distributing, offering for sale, or advertising goods
457	457	or services when the use is likely to deceive or cause confusion or
458	458	mistake as to the source or origin of the goods or services; or
459	459	(2) reproduces, counterfeits, copies, or colorably
460	460	imitates a mark registered under this chapter and applies the
461	461	reproduction, counterfeit, copy, or colorable imitation to a label,
462	462	sign, print, package, wrapper, receptacle, or advertisement
463	463	intended to be used in selling or distributing, or in connection
464	464	with the sale or distribution of, goods or services in this state.
465	465	(b) A registrant may sue for damages and to enjoin an
466	466	infringement proscribed by Subsection (a).
467	467	(c) If the court determines that there has been an
468	468	infringement, the court shall enjoin the act of infringement and
469	469	may:
470	470	(1) subject to Subsection (d), require the violator to
471	471	pay the registrant all profits derived from or damages resulting
472	472	from the acts of infringement; and
473	473	(2) order that the infringing counterfeits or
474	474	imitations in the possession or under the control of the violator
475	475	be:
476	476	(A) delivered to an officer of the court to be
477	477	destroyed; or
478	478	(B) delivered to the registrant to be destroyed.
479	479	(d) If the court finds that the violator acted with actual
480	480	knowledge of the registrant's mark or in bad faith, the court, in
481	481	the court's discretion, may:
482	482	(1) enter judgment in an amount not to exceed three
483	483	times the amount of profits and damages; and
484	484	(2) award reasonable attorney's fees to the prevailing
485	485	party.
486	486	(e) A registrant is entitled to recover damages under
487	487	Subsections (a)(2), (c)(1), and (d) only if the violator acted with
488	488	intent to cause confusion or mistake or to deceive.
489	489	(f) The enumeration of any right or remedy under this
490	490	section does not affect the prosecution of conduct under the penal
491	491	laws of this state.
492	492	Sec. 16.103. INJURY TO BUSINESS REPUTATION; DILUTION. (a)
493	493	Subject to the principles of equity, the owner of a mark that is
494	494	famous and distinctive, inherently or through acquired
495	495	distinctiveness, in this state is entitled to enjoin another
496	496	person's commercial use of a mark or trade name that begins after
497	497	the mark has become famous if use of the mark or trade name is likely
498	498	to cause the dilution of the famous mark.
499	499	(b) For purposes of this section, a mark is considered to be
500	500	famous if the mark is widely recognized by the public throughout
501	501	this state or in a geographic area in this state as a designation of
502	502	source of the goods or services of the mark's owner. In determining
503	503	whether a mark is famous, a court may consider factors including:
504	504	(1) the duration, extent, and geographic reach of the
505	505	advertisement and publicity of the mark in this state, regardless
506	506	of whether the mark is advertised or publicized by the owner or a
507	507	third party;
508	508	(2) the amount, volume, and geographic extent of sales
509	509	of goods or services offered under the mark in this state;
510	510	(3) the extent of actual recognition of the mark in
511	511	this state; and
512	512	(4) whether the mark is registered in this state or in
513	513	the United States Patent and Trademark Office.
514	514	(c) In an action brought under this section, the owner of a
515	515	famous mark is entitled to injunctive relief throughout the
516	516	geographic area in this state in which the mark is found to have
517	517	become famous before the use of the other mark. If the court finds
518	518	that the person against whom the injunctive relief is sought
519	519	wilfully intended to cause the dilution of the famous mark, the
520	520	owner shall also be entitled to remedies under this chapter,
521	521	subject to the court's discretion and principles of equity.
522	522	(d) A person may not bring an action under this section for:
523	523	(1) a fair use, including a nominative or descriptive
524	524	fair use, or facilitation of the fair use, of a famous mark by
525	525	another person other than as a designation of source for the
526	526	person's own goods or services, including a fair use in connection
527	527	with:
528	528	(A) advertising or promoting that permits
529	529	consumers to compare goods or services; or
530	530	(B) identifying and parodying, criticizing, or
531	531	commenting on the famous mark owner or the famous mark owner's goods
532	532	or services;
533	533	(2) a noncommercial use of the mark; or
534	534	(3) any form of news reporting or commentary.
535	535	Sec. 16.104. REMEDIES. (a) An owner of a mark registered
536	536	under this chapter may bring an action to enjoin the manufacture,
537	537	use, display, or sale of any counterfeits or imitations of a mark.
538	538	(b) If the court finds that a wrongful act described by
539	539	Subsection (a) has been committed, the court shall enjoin the
540	540	wrongful manufacture, use, display, or sale and may:
541	541	(1) subject to Subsection (c), require the violator to
542	542	pay to the owner of the mark all profits derived from or damages
543	543	resulting from the wrongful acts; and
544	544	(2) order that the wrongful counterfeits or imitations
545	545	in the possession or under the control of the defendant be:
546	546	(A) delivered to an officer of the court to be
547	547	destroyed; or
548	548	(B) delivered to the complainant to be destroyed.
549	549	(c) If the court finds that the violator committed the
550	550	wrongful acts with knowledge of the registrant's mark or in bad
551	551	faith, or otherwise as according to the circumstances of the case,
552	552	the court, in the court's discretion, may:
553	553	(1) enter judgment in an amount not to exceed three
554	554	times the amount of profits and damages; and
555	555	(2) award reasonable attorney's fees to the prevailing
556	556	party.
557	557	Sec. 16.105. OLYMPIC SYMBOLS. (a) Without the permission
558	558	of the United States Olympic Committee, a person may not, for the
559	559	purpose of trade, to induce the sale of goods or services, or to
560	560	promote a theatrical exhibition, athletic performance, or
561	561	competition, use:
562	562	(1) the symbol of the International Olympic Committee,
563	563	consisting of five interlocking rings;
564	564	(2) the emblem of the United States Olympic Committee,
565	565	consisting of an escutcheon having a blue chief and vertically
566	566	extending red and white bars on the base with five interlocking
567	567	rings displayed on the chief;
568	568	(3) a trademark, trade name, sign, symbol, or insignia
569	569	falsely representing association with or authorization by the
570	570	International Olympic Committee or the United States Olympic
571	571	Committee; or
572	572	(4) the words "Olympic," "Olympiad," or "Citius Altius
573	573	Fortius" or a combination or simulation of those words that tends to
574	574	cause confusion or mistake, to deceive, or to suggest falsely a
575	575	connection with the United States Olympic Committee or an Olympic
576	576	activity.
577	577	(b) On violation of Subsection (a), the United States
578	578	Olympic Committee is entitled to the remedies available to a
579	579	registrant on infringement of a mark registered under this chapter.
580	580	Sec. 16.106. FORUM FOR ACTIONS REGARDING REGISTRATION;
581	581	SERVICE ON OUT-OF-STATE REGISTRANTS. (a) An action to require
582	582	cancellation of a mark registered under this chapter or in mandamus
583	583	to compel registration of a mark under this chapter shall be brought
584	584	in a district court of Travis County. In an action to compel
585	585	registration of a mark, the proceeding must be based solely on the
586	586	record before the secretary of state.
587	587	(b) In an action for cancellation, the secretary of state
588	588	may not be made a party to the proceeding but shall be notified of
589	589	the filing of the complaint by the clerk of the court in which the
590	590	action is filed and shall be given the right to intervene in the
591	591	action.
592	592	(c) In an action brought against a nonresident registrant,
593	593	service may be made on the secretary of state as agent for service
594	594	of process of the registrant in accordance with the procedures
595	595	established for service on foreign corporations and business
596	596	entities under the Business Organizations Code.
597	597	Sec. 16.107. COMMON LAW RIGHTS NOT AFFECTED. No
598	598	registration under this chapter adversely affects common law rights
599	599	acquired prior to registration under this chapter. However, during
600	600	any period when the registration of a mark under this chapter is in
601	601	force and the registrant has not abandoned the mark, no common law
602	602	rights as against the registrant of the mark may be acquired.
603	603	[SUBCHAPTER A. GENERAL PROVISIONS
604	604	[Sec. 16.01. DEFINITIONS. (a) In this chapter, unless the
605	605	context requires a different definition,
606	606	[(1) "applicant" means the person applying for
607	607	registration of a mark under this chapter and includes his legal
608	608	representative, successor, assignee, and predecessor in title to
609	609	the mark sought to be registered;
610	610	[(2) "mark" includes service mark and trademark;
611	611	[(3) "registrant" means the person to whom a
612	612	registration has been issued under this chapter and includes his
613	613	legal representative, successor, assignee, and predecessor in
614	614	title to the registration;
615	615	[(4) "service mark" means a word, name, symbol,
616	616	device, slogan or any combination thereof which, whether registered
617	617	or not, has been adopted and used by a person to identify his
618	618	services and distinguish them from the services of others, and
619	619	includes the titles, designations, character names, and
620	620	distinctive features of broadcast or other advertising;
621	621	[(5) "trademark" means a word, name, symbol, device,
622	622	slogan or any combination thereof which, whether registered or not,
623	623	has been adopted and used by a person to identify his goods and
624	624	distinguish them from the goods manufactured or sold by others; and
625	625	[(6) "trade name" includes individual name, surname,
626	626	firm name, corporate name, and lawfully adopted name or title used
627	627	by a person to identify his business, vocation, or occupation.
628	628	[(b) This chapter does not apply to the registration or use
629	629	of livestock brands or other indicia of ownership of goods which do
630	630	not qualify as a "mark" as defined in this chapter.
631	631	[Sec. 16.02. WHEN MARK CONSIDERED TO BE USED. (a) A mark
632	632	is considered to be used in this state in connection with goods when
633	633	[(1) it is placed on
634	634	[(A) the goods;
635	635	[(B) containers of the goods;
636	636	[(C) displays associated with the goods; or
637	637	[(D) tags or labels affixed to the goods; and
638	638	[(2) the goods are sold, displayed for sale, or
639	639	otherwise publicly distributed in this state.
640	640	[(b) A mark is considered to be used in this state in
641	641	connection with services when
642	642	[(1) it is used or displayed in this state in
643	643	connection with selling or advertising the services; and
644	644	[(2) the services are rendered in this state.
645	645	[SUBCHAPTER B. REGISTRATION OF MARK
646	646	[Sec. 16.08. REGISTRABLE MARKS. (a) A mark in actual use
647	647	in connection with the applicant's goods or services, which
648	648	distinguishes his goods or services from those of others, is
649	649	registrable unless it
650	650	[(1) is, or includes matter which is, immoral,
651	651	deceptive, or scandalous;
652	652	[(2) may disparage, or falsely suggest a connection
653	653	with, or bring into contempt or disrepute
654	654	[(A) a person, whether living or dead;
655	655	[(B) an institution;
656	656	[(C) a belief; or
657	657	[(D) a national symbol;
658	658	[(3) depicts or simulates the flag, coat of arms, or
659	659	other insignia of
660	660	[(A) the United States;
661	661	[(B) a state;
662	662	[(C) a municipality; or
663	663	[(D) a foreign nation;
664	664	[(4) is or includes the name, signature, or portrait
665	665	of a living individual who has not consented in writing to its
666	666	registration;
667	667	[(5) is
668	668	[(A) merely descriptive or deceptively
669	669	misdescriptive of the applicant's goods or services;
670	670	[(B) primarily geographically descriptive or
671	671	deceptively misdescriptive of the applicant's goods or services; or
672	672	[(C) primarily merely a surname; or
673	673	[(6) is likely to cause confusion or mistake, or to
674	674	deceive, because, when applied to the applicant's goods or
675	675	services, it resembles another person's unabandoned mark
676	676	registered in this state.
677	677	[(b) Subsection (a)(5) of this section does not prevent the
678	678	registration of a mark that has become distinctive as applied to the
679	679	applicant's goods or services. The secretary of state may accept as
680	680	evidence that a mark has become distinctive as applied to the
681	681	applicant's goods or services proof of substantially exclusive and
682	682	continuous use of the mark by the applicant in this state for the
683	683	five years next preceding the date on which the applicant filed his
684	684	application for registration.
685	685	[(c) A trade name is not registrable under this chapter.
686	686	However, if a trade name is also a service mark or trademark, as
687	687	defined in this chapter, it is registrable as a service mark or
688	688	trademark.
689	689	[Sec. 16.09. CLASSIFICATION OF GOODS AND SERVICES. (a) The
690	690	secretary of state shall adopt rules establishing a classification
691	691	of goods and services for the convenient administration of this
692	692	chapter. The classifications established do not limit or expand an
693	693	applicant's or registrant's rights. To the extent practicable, the
694	694	classification of goods and services should conform to the
695	695	classification adopted by the United States Patent and Trademark
696	696	Office.
697	697	[(b) An applicant may include in a single application for
698	698	registration of a mark all goods or services in connection with
699	699	which the mark is actually being used and which are in a single
700	700	class. An applicant may not include in a single application for
701	701	registration goods or services which are not in a single class.
702	702	[Sec. 16.10. APPLICATION FOR REGISTRATION. (a) Subject to
703	703	the limitations prescribed by this chapter, a person may file an
704	704	application to register a mark in the office of the secretary of
705	705	state on a form prescribed by the secretary of state.
706	706	[(b) The applicant shall include in the application:
707	707	[(1) the name and business address of the applicant;
708	708	[(2) if the applicant is a corporation, limited
709	709	partnership, limited liability company, or other business entity,
710	710	the state of incorporation or organization;
711	711	[(3) an appointment of the secretary of state as the
712	712	applicant's agent for service of process only in suits relating to
713	713	the registration which may be issued if the applicant:
714	714	[(A) is or becomes a:
715	715	[(i) nonresident individual, partnership,
716	716	or association; or
717	717	[(ii) foreign corporation, limited
718	718	partnership, or limited liability company without a certificate of
719	719	authority to do business in this state; or
720	720	[(B) cannot be found in this state;
721	721	[(4) the names or a description of the goods or
722	722	services in connection with which the mark is being used;
723	723	[(5) the manner in which the mark is being used in
724	724	connection with the goods or services;
725	725	[(6) the class in which the applicant believes the
726	726	goods or services belong;
727	727	[(7) the date on which the applicant first used the
728	728	mark anywhere in connection with the goods or services;
729	729	[(8) the date on which the applicant first used the
730	730	mark in this state in connection with the goods or services;
731	731	[(9) a statement that the applicant is the owner of the
732	732	mark, and that, to the best of the applicant's knowledge, no other
733	733	person is entitled to use the mark in this state:
734	734	[(A) in the identical form used by the applicant;
735	735	or
736	736	[(B) in a form that is likely, when used in
737	737	connection with the goods or services, to cause confusion or
738	738	mistake, or to deceive, because of its resemblance to the mark used
739	739	by the applicant;
740	740	[(10) a narrative description of the mark; and
741	741	[(11) such additional information or documents as the
742	742	secretary of state may reasonably require.
743	743	[(c) The applicant shall:
744	744	[(1) prepare and file the application and a copy of the
745	745	application with the secretary of state; and
746	746	[(2) submit as part of the application to the
747	747	secretary of state:
748	748	[(A) two identical specimens or facsimiles of the
749	749	mark as actually used, one specimen or facsimile with the original
750	750	application and one specimen or facsimile with the copy;
751	751	[(B) a drawing of the mark that complies with any
752	752	requirement specified by the secretary of state; and
753	753	[(C) an application fee of $50 payable to the
754	754	secretary of state.
755	755	[(d) The applicant or the applicant's agent shall sign the
756	756	application.
757	757	[Sec. 16.105. EXAMINATION OF APPLICATION. (a) On the
758	758	filing of an application for registration and payment of the
759	759	application fee, the secretary of state shall examine the
760	760	application for compliance with this chapter.
761	761	[(b) The applicant shall provide to the secretary of state
762	762	additional pertinent information requested by the secretary of
763	763	state.
764	764	[(c) The secretary of state shall examine applications in
765	765	the order in which the applications are filed, including
766	766	applications concurrently processed for registration of the same or
767	767	confusingly similar marks used in connection with the same or
768	768	similar goods or services.
769	769	[Sec. 16.106. AMENDMENT TO APPLICATION. (a) The applicant
770	770	may make an amendment to the application as reasonably requested by
771	771	the secretary of state or in response to a rejection or objection to
772	772	the registration by the secretary of state.
773	773	[(b) An amendment to the application, other than an
774	774	amendment to the date on which the applicant first uses the mark,
775	775	may be made by the applicant's agent. The secretary of state may
776	776	require the applicant to execute and submit a new application
777	777	instead of making an amendment.
778	778	[(c) An amendment to the application made to the date on
779	779	which the applicant first used the mark may not specify a date of
780	780	use that is after the date on which the application was filed.
781	781	[Sec. 16.107. DISCLAIMER OF UNREGISTRABLE COMPONENT. The
782	782	secretary of state may require the applicant to disclaim or the
783	783	applicant may voluntarily disclaim an unregistrable component of a
784	784	mark that is otherwise registrable. A disclaimer may not prejudice
785	785	or affect the:
786	786	[(1) rights of the applicant or registrant in the
787	787	disclaimed matter; or
788	788	[(2) rights of the applicant or registrant to make an
789	789	application to register a mark if the disclaimed matter is
790	790	distinctive of the goods or services of the applicant or
791	791	registrant.
792	792	[Sec. 16.108. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
793	793	MARK. (a) When concurrently processing applications for the same
794	794	or confusingly similar marks used in connection with the same or
795	795	similar goods or services, the secretary of state shall give
796	796	priority to the application that was filed first. If the previously
797	797	filed application is registered, the secretary of state shall
798	798	reject the other application.
799	799	[(b) The applicant may bring an action for cancellation of
800	800	the previously issued registration on the ground that the applicant
801	801	has a prior or superior right to the mark under this chapter.
802	802	[Sec. 16.109. DENIAL OF REGISTRATION. (a) If the
803	803	secretary of state finds that the applicant is not entitled to
804	804	register the mark, the secretary of state shall:
805	805	[(1) notify the applicant of the reason for the denial
806	806	of the application; and
807	807	[(2) give the applicant a reasonable amount of time as
808	808	prescribed by the secretary of state in which to:
809	809	[(A) issue a response to the denial; or
810	810	[(B) amend the application.
811	811	[(b) The applicant may repeat the examination procedures
812	812	described by Subsection (a) until the earlier of:
813	813	[(1) the expiration of the period prescribed by the
814	814	secretary of state under Subsection (a)(2); or
815	815	[(2) the date on which the secretary of state finally
816	816	refuses registration of the application.
817	817	[(c) If the secretary of state finally refuses registration
818	818	of the mark, the applicant may seek a review of the decision of the
819	819	secretary of state in accordance with the procedures prescribed by
820	820	this chapter.
821	821	[Sec. 16.11. REGISTRATION BY SECRETARY OF STATE. If the
822	822	application satisfies the requirements of this chapter, and the
823	823	application fee has been paid, the secretary of state shall:
824	824	[(1) endorse on the original and the copy of the
825	825	application:
826	826	[(A) the word "filed"; and
827	827	[(B) the date on which the application was filed;
828	828	[(2) file the original in his office;
829	829	[(3) issue a certificate of registration evidencing
830	830	registration on the date on which the application was filed;
831	831	[(4) attach the copy to the certificate of
832	832	registration; and
833	833	[(5) deliver the certificate of registration with the
834	834	attached copy of the application to the applicant.
835	835	[Sec. 16.12. TERM OF REGISTRATION. (a) The registration
836	836	of a mark under this chapter is effective for a term of 10 years from
837	837	the date of registration.
838	838	[Sec. 16.13. NOTICE OF EXPIRATION OF REGISTRATION.
839	839	(a) During the period beginning 12 months and ending 6 months
840	840	before the day a registration expires, the secretary of state
841	841	shall, by writing to the last known address of the registrant under
842	842	this chapter or under a prior act, notify the registrant of the
843	843	necessity for renewing or reregistering under Section 16.14 of this
844	844	code.
845	845	[(b) Neither the secretary of state's failure to notify a
846	846	registrant nor the registrant's nonreceipt of a notice under
847	847	Subsection (a) of this section
848	848	[(1) extends the term of a registration; or
849	849	[(2) excuses the registrant's failure to renew or
850	850	reregister.
851	851	[Sec. 16.14. RENEWAL OF REGISTRATION AND REREGISTRATION.
852	852	(a) The registration of a mark under this chapter may be renewed
853	853	for an additional 10-year term by filing a renewal application
854	854	within six months before the day the registration expires. The
855	855	registrant shall submit to the secretary of state:
856	856	[(1) a renewal application stating that:
857	857	[(A) the mark is still in use in this state; or
858	858	[(B) nonuse of the mark in this state:
859	859	[(i) is due to special circumstances which
860	860	excuse the nonuse; and
861	861	[(ii) is not due to an intention to abandon
862	862	the mark in this state; and
863	863	[(2) a renewal application fee of $25 payable to the
864	864	secretary of state.
865	865	[(b) A registrant may renew a registration under Subsection
866	866	(a) of this section for successive terms of 10 years.
867	867	[(d) The renewal application must be signed by the
868	868	registrant or the registrant's agent.
869	869	[Sec. 16.15. RECORD, NOTICE, AND PROOF OF REGISTRATION.
870	870	(a) The secretary of state shall keep for public examination a
871	871	record of all:
872	872	[(1) marks registered, reregistered, or renewed under
873	873	this chapter;
874	874	[(2) assignments recorded under Section 16.18 of this
875	875	code; and
876	876	[(3) other instruments recorded under Section 16.19 of
877	877	this code.
878	878	[(b) Registration of a mark under this chapter is
879	879	constructive notice throughout this state of the registrant's claim
880	880	of ownership of the mark throughout this state.
881	881	[(c) A certificate of registration issued by the secretary
882	882	of state under this chapter, or a copy of it certified by the
883	883	secretary of state, is admissible in evidence as prima facie proof
884	884	of
885	885	[(1) the validity of the registration;
886	886	[(2) the registrant's ownership of the mark; and
887	887	[(3) the registrant's exclusive right to use the mark
888	888	in commerce in this state in connection with the goods or services
889	889	specified in the certificate, subject to any conditions and
890	890	limitations stated in the certificate.
891	891	[Sec. 16.16. CANCELLATION OF REGISTRATION. (a) The
892	892	secretary of state shall cancel
893	893	[(1) all registrations in force before May 2, 1962,
894	894	which are more than 10 years old and which have not been
895	895	reregistered under Section 16.14(c) of this code;
896	896	[(2) a registration on receipt of a voluntary request
897	897	for cancellation from the registrant under this chapter or under a
898	898	prior act as identified by the records of the secretary of state;
899	899	[(3) registrations granted under this chapter and not
900	900	renewed under Section 16.14(a) of this code;
901	901	[(4) a registration concerning which a district or
902	902	appellate court has rendered a final judgment, which has become
903	903	unappealable, cancelling the registration or finding that
904	904	[(A) the registered mark has been abandoned;
905	905	[(B) the registrant under this chapter or under a
906	906	prior act is not the owner of the mark;
907	907	[(C) the registration was granted contrary to the
908	908	provisions of this chapter;
909	909	[(D) the registration was obtained fraudulently;
910	910	or
911	911	[(E) the registered mark has become incapable of
912	912	serving as a mark.
913	913	[(b) The clerk of the court whose final judgment cancels a
914	914	registration or makes any of the findings specified in Subsection
915	915	(a)(4) of this section shall, when the judgment becomes
916	916	unappealable, transmit a certified copy of it to the secretary of
917	917	state.
918	918	[Sec. 16.17. ASSIGNMENT OF MARK AND REGISTRATION. (a) A
919	919	mark and its registration under this chapter are assignable with
920	920	the goodwill of the business in which the mark is used, or with that
921	921	part of the goodwill connected with the use of, and symbolized by,
922	922	the mark.
923	923	[(b) An assignment shall be made by duly executed written
924	924	instrument.
925	925	[Sec. 16.18. RECORDATION OF ASSIGNMENT AND ITS EFFECT.
926	926	(a) An assignment made under Section 16.17 of this code may be
927	927	recorded with the secretary of state by
928	928	[(1) filing with him
929	929	[(A) the original assignment; and
930	930	[(B) a duplicate original or legible photocopy on
931	931	durable paper of the assignment; and
932	932	[(2) paying him a fee of $10.
933	933	[(b) If an assignment has been properly filed for record
934	934	under Subsection (a) of this section, the secretary of state shall
935	935	[(1) issue in the assignee's name a new certificate of
936	936	registration for the remainder of the term of the mark's
937	937	registration, reregistration, or last renewal;
938	938	[(2) endorse on the original and duplicate original
939	939	assignment or photocopy the
940	940	[(A) words "Filed for record in the office of the
941	941	Secretary of State, State of Texas"; and
942	942	[(B) date on which the assignment was filed for
943	943	record;
944	944	[(3) file the duplicate original or photocopy of the
945	945	assignment in his office; and
946	946	[(4) return the endorsed original assignment to the
947	947	assignee or his representative.
948	948	[(c) The assignment of a mark registered under this chapter
949	949	is void against a purchaser who purchases the mark for value after
950	950	the assignment is made and without notice of it unless the
951	951	assignment is recorded by the secretary of state
952	952	[(1) within three months after the date of the
953	953	assignment; or
954	954	[(2) before the mark is purchased.
955	955	[Sec. 16.19. RECORDATION OF OTHER INSTRUMENTS. (a) An
956	956	instrument that is related to the ownership of a mark registered
957	957	under this subchapter, including articles of merger or conversion
958	958	or a document effecting a name change, may be recorded with the
959	959	secretary of state by:
960	960	[(1) filing a certified copy of the instrument; and
961	961	[(2) paying a filing fee in the amount established for
962	962	the filing of an assignment under Section 16.18.
963	963	[(b) This section does not apply to the recording of a
964	964	mortgage or a security interest or other instrument that is
965	965	recordable under the Uniform Commercial Code.
966	966	[(c) A license agreement related to a mark registered under
967	967	this chapter may not be recorded under this section.
968	968	[Sec. 16.20. TRANSFER OF MARK; CHANGE OF REGISTRANT'S
969	969	NAME; CHANGE OF ADDRESS. (a) If ownership of a registered mark is
970	970	transferred or a registrant's name is changed during the unexpired
971	971	term of a registration, a new certificate of registration may be
972	972	issued for the remainder of the unexpired term of the mark's
973	973	registration in the name of the transferee or in the new name of the
974	974	registrant upon the filing of an instrument under Section 16.19.
975	975	[(b) The secretary of state may amend the trademark records
976	976	of an effective registration to reflect a change of registrant
977	977	address upon receipt of a statement signed by the registrant or the
978	978	registrant's agent. The statement must set forth the name of the
979	979	registrant of record, a description of the registered mark, the
980	980	registration number issued by the secretary of state, and the
981	981	registrant's new address.
982	982	[Sec. 16.21. POWERS OF SECRETARY OF STATE. (a) The
983	983	secretary of state may adopt rules relating to the filing of
984	984	documents under this subchapter.
985	985	[(b) The secretary of state may prescribe forms for use in
986	986	filing documents under this subchapter.
987	987	[Sec. 16.22. ELECTRONIC FILINGS AND REPRODUCTIONS. (a) An
988	988	application for renewal of trademark registration, an assignment
989	989	under Section 16.17, or a transfer of ownership or change of
990	990	registrant name under Section 16.19 may be submitted in an
991	991	electronic format that is approved by the secretary of state. An
992	992	instrument that is filed in accordance with this subsection is
993	993	deemed to have complied with:
994	994	[(1) the filing requirements of the section pursuant
995	995	to which it is filed; and
996	996	[(2) any requirement that the document be submitted as
997	997	an originally signed instrument.
998	998	[(b) All electronic acknowledgments and certificates
999	999	required to be issued by the secretary of state for the instruments
1000	1000	filed pursuant to Subsection (a) shall be considered issued or
1001	1001	provided by the secretary of state on the initial transmission by
1002	1002	the secretary of state of the acknowledgment or certificate
1003	1003	required to be filed.
1004	1004	[(c) Any certificate issued by the secretary of state
1005	1005	concerning any instrument filed under this subchapter need not be
1006	1006	on paper or reduced to printed form.
1007	1007	[(d) If permitted by the rules adopted by the secretary of
1008	1008	state, an original instrument required or authorized to be filed
1009	1009	with the secretary of state under this subchapter may be a
1010	1010	photographic, photostatic, facsimile, or similar reproduction of a
1011	1011	signed instrument.
1012	1012	[(e) All civil and criminal penalties applicable to the
1013	1013	filing of documents under this chapter apply to all documents filed
1014	1014	pursuant to this section.
1015	1015	[SUBCHAPTER C. COURT ACTION
1016	1016	[Sec. 16.24. REVIEW OF SECRETARY OF STATE'S DECISIONS. (a)
1017	1017	If the secretary of state takes final action refusing to register a
1018	1018	mark under Section 16.109 or to renew the registration of a mark
1019	1019	under Section 16.14, the applicant or registrant may file suit for
1020	1020	review of the secretary of state's decision in one of the Travis
1021	1021	County district courts.
1022	1022	[(b) A suit filed under Subsection (a) of this section is
1023	1023	tried de novo, as an appeal from a justice court to a county court,
1024	1024	and
1025	1025	[(1) every decision or action concerning an issue in
1026	1026	the suit made or taken by the secretary of state before the suit was
1027	1027	filed is void;
1028	1028	[(2) the district court shall determine the issues in
1029	1029	the suit as if no decision had been made or action taken by the
1030	1030	secretary of state; and
1031	1031	[(3) the district court may not apply in any form the
1032	1032	substantial evidence rule in reviewing a decision or action of the
1033	1033	secretary of state.
1034	1034	[(c) The legislature declares that
1035	1035	[(1) this section is not severable from the other
1036	1036	sections of this chapter;
1037	1037	[(2) it would not have enacted this chapter without
1038	1038	this section; and
1039	1039	[(3) this chapter is void if a court in a final
1040	1040	judgment which becomes unappealable invalidates this section in
1041	1041	whole or part.
1042	1042	[Sec. 16.25. SUIT TO CANCEL REGISTRATION. (a) A person
1043	1043	who believes that he is or will be damaged by a registration under
1044	1044	this chapter may sue to cancel the registration in a district court
1045	1045	having venue.
1046	1046	[(b) The clerk of a court in which suit is filed under
1047	1047	Subsection (a) of this section shall transmit notice of the suit to
1048	1048	the secretary of state, who shall place the notice in the
1049	1049	registration file with proper notations and endorsements.
1050	1050	[(c) When the registrant's agent for service of process is
1051	1051	the secretary of state, the secretary of state shall forward notice
1052	1052	of the suit by registered mail to the registrant at his last address
1053	1053	of record.
1054	1054	[(d) If the court finds that the losing party in a suit filed
1055	1055	under Subsection (a) of this section should have known his position
1056	1056	was without merit, the court may award the successful party his
1057	1057	reasonable attorneys' fees and charge them as part of the costs
1058	1058	against the losing party.
1059	1059	[Sec. 16.26. INFRINGEMENT OF REGISTERED MARK. (a) Subject
1060	1060	to Section 16.27 of this code, a person commits an infringement if,
1061	1061	without the registrant's consent, he
1062	1062	[(1) uses anywhere in this state a reproduction,
1063	1063	counterfeit, copy, or colorable imitation of a mark registered
1064	1064	under this chapter in connection with selling, offering for sale,
1065	1065	or advertising goods or services when the use is likely to deceive
1066	1066	or cause confusion or mistake as to the source or origin of the
1067	1067	goods or services; or
1068	1068	[(2) reproduces, counterfeits, copies, or colorably
1069	1069	imitates a mark registered under this chapter and applies the
1070	1070	reproduction, counterfeit, copy, or colorable imitation to a label,
1071	1071	sign, print, package, wrapper, receptacle, or advertisement
1072	1072	intended to be used in selling, leasing, distributing, or rendering
1073	1073	goods or services in this state when the use is likely to deceive or
1074	1074	cause confusion or mistake as to the source or origin of the goods
1075	1075	or services.
1076	1076	[(b) A registrant may sue for damages and to enjoin an
1077	1077	infringement proscribed by Subsection (a) of this section in a
1078	1078	district court having venue.
1079	1079	[(c) If the district court determines that there has been an
1080	1080	infringement, it shall enjoin the act of infringement and may
1081	1081	[(1) require the infringer to pay the registrant all
1082	1082	damages resulting from the acts of infringement and occurring from
1083	1083	and after the date two years before the day the suit was filed; and
1084	1084	[(2) order that the infringing reproductions,
1085	1085	counterfeits, copies, or colorable imitations in the possession or
1086	1086	under the control of the infringer be
1087	1087	[(A) delivered to an officer of the court;
1088	1088	[(B) delivered to the registrant; or
1089	1089	[(C) destroyed.
1090	1090	[(d) A registrant is entitled to recover damages under
1091	1091	Subsection (c)(1) of this section only for an infringement that
1092	1092	occurred during the period of time the infringer had actual
1093	1093	knowledge of the registrant's mark.
1094	1094	[Sec. 16.27. EXCEPTIONS TO LIABILITY FOR INFRINGEMENT. (a)
1095	1095	No registration under this chapter adversely affects common law
1096	1096	rights acquired prior to registration under this chapter. However,
1097	1097	during any period when the registration of a mark under this chapter
1098	1098	is in force and the registrant has not abandoned the mark, no common
1099	1099	law rights as against the registrant of the mark may be acquired.
1100	1100	[(b) The owner or operator of a radio or television station,
1101	1101	or the owner or publisher of a newspaper, magazine, directory, or
1102	1102	other publication, is not liable in that business under Section
1103	1103	16.26 of this code for the use of a registered mark furnished by one
1104	1104	of his advertisers or customers.
1105	1105	[Sec. 16.28. PROCURING APPLICATION OR REGISTRATION BY
1106	1106	FRAUD. (a) No person may procure for himself or another the
1107	1107	filing of an application or the registration of a mark under this
1108	1108	chapter by knowingly making a false or fraudulent representation or
1109	1109	declaration, oral or written, or by any other fraudulent means.
1110	1110	[(b) A person injured by the false or fraudulent procurement
1111	1111	of an application or registration may sue the person who violated
1112	1112	Subsection (a) of this section in a district court having venue and
1113	1113	[(1) recover from him damages resulting from use of
1114	1114	the fraudulently registered mark, plus costs of suit, including
1115	1115	attorneys' fees; and
1116	1116	[(2) have the registration cancelled.
1117	1117	[Sec. 16.29. INJURY TO BUSINESS REPUTATION OR TRADE NAME OR
1118	1118	MARK. A person may bring an action to enjoin an act likely to
1119	1119	injure a business reputation or to dilute the distinctive quality
1120	1120	of a mark registered under this chapter or Title 15, U.S.C., or a
1121	1121	mark or trade name valid at common law, regardless of whether there
1122	1122	is competition between the parties or confusion as to the source of
1123	1123	goods or services. An injunction sought under this section shall be
1124	1124	obtained pursuant to Rule 680 et seq. of the Texas Rules of Civil
1125	1125	Procedure.
1126	1126	[Sec. 16.30. OLYMPIC SYMBOLS. (a) Without the permission
1127	1127	of the United States Olympic Committee, a person may not, for the
1128	1128	purpose of trade, to induce the sale of goods or services, or to
1129	1129	promote a theatrical exhibition, athletic performance, or
1130	1130	competition, use:
1131	1131	[(1) the symbol of the International Olympic
1132	1132	Committee, consisting of five interlocking rings;
1133	1133	[(2) the emblem of the United States Olympic
1134	1134	Committee, consisting of an escutcheon having a blue chief and
1135	1135	vertically extending red and white bars on the base with five
1136	1136	interlocking rings displayed on the chief;
1137	1137	[(3) a trademark, trade name, sign, symbol, or
1138	1138	insignia falsely representing association with or authorization by
1139	1139	the International Olympic Committee or the United States Olympic
1140	1140	Committee; or
1141	1141	[(4) the words "Olympic," "Olympiad," or "Citius
1142	1142	Altius Fortius" or a combination or simulation of those words that
1143	1143	tends to cause confusion or mistake, to deceive, or to suggest
1144	1144	falsely a connection with the United States Olympic Committee or an
1145	1145	Olympic activity.
1146	1146	[(b) On violation of Subsection (a), the United States
1147	1147	Olympic Committee is entitled to the remedies available to a
1148	1148	registrant on infringement of a mark registered under this chapter.
1149	1149	[Sec. 16.31. CRIMINAL PENALTY. (a) A person commits an
1150	1150	offense if the person knowingly or intentionally signs and presents
1151	1151	or causes to be presented for filing a document that may be or is
1152	1152	required to be filed under this chapter and that:
1153	1153	[(1) indicates that the person signing the document
1154	1154	has the authority to act on behalf of an applicant or registrant
1155	1155	when the person is not authorized to act on behalf of the applicant
1156	1156	or registrant;
1157	1157	[(2) contains a material false statement; or
1158	1158	[(3) is forged.
1159	1159	[(b) An offense under this section is a Class A misdemeanor
1160	1160	unless the actor's intent is to defraud or harm another, in which
1161	1161	event the offense is a state jail felony.]
1162	1162	SECTION 2. Sections 32.23(3), (5), and (6), Penal Code, are
1163	1163	amended to read as follows:
1164	1164	(3) "Protected mark" means a trademark or service mark
1165	1165	or an identification mark that is:
1166	1166	(A) registered with the secretary of state;
1167	1167	(B) registered on the principal register of the
1168	1168	United States Patent and Trademark Office;
1169	1169	(C) registered under the laws of another state;
1170	1170	or
1171	1171	(D) protected by Section 16.105 [16.30],
1172	1172	Business & Commerce Code, or by 36 U.S.C. Section 371 et seq.
1173	1173	(5) "Service mark" has the meaning assigned by Section
1174	1174	16.001 [16.01], Business & Commerce Code.
1175	1175	(6) "Trademark" has the meaning assigned by Section
1176	1176	16.001 [16.01], Business & Commerce Code.
1177	1177	SECTION 3. The intent of this Act is to provide a system of
1178	1178	trademark registration and protection in this state that is
1179	1179	substantially consistent with the federal system of trademark
1180	1180	registration and protection under the Trademark Act of 1946, as
1181	1181	amended. To that end, the construction given to the Trademark Act
1182	1182	of 1946 (15 U.S.C. Section 1051 et seq.) should be examined as
1183	1183	persuasive authority for interpreting and construing this Act.
1184	1184	SECTION 4. The changes in law made by this Act do not affect
1185	1185	any suit, proceeding, or appeal pending on the effective date of
1186	1186	this Act. A suit, proceeding, or appeal pending on the effective
1187	1187	date of this Act is governed by the law in effect on the date the
1188	1188	suit, proceeding, or appeal was filed, and the former law is
1189	1189	continued in effect for that purpose.
1190	1190	SECTION 5. This Act takes effect September 1, 2012.
1191	1191	* * * * *