By: Hartnett (Senate Sponsor - Carona) H.B. No. 3141
(In the Senate - Received from the House April 26, 2011;
April 29, 2011, read first time and referred to Committee on
Business and Commerce; May 10, 2011, reported favorably by the
following vote: Yeas 9, Nays 0; May 10, 2011, sent to printer.)
A BILL TO BE ENTITLED
AN ACT
relating to the registration and protection of trademarks.
BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS:
SECTION 1. Chapter 16, Business & Commerce Code, is amended
to read as follows:
CHAPTER 16. TRADEMARKS
SUBCHAPTER A. GENERAL PROVISIONS
Sec. 16.001. DEFINITIONS. In this chapter:
(1) "Applicant" means a person applying for
registration of a mark under this chapter. The term includes the
person's legal representative, successor, and assignee.
(2) "Dilution" means dilution by blurring or dilution
by tarnishment, without regard to the presence or absence of:
(A) competition between the owner of a famous
mark and another person;
(B) actual or likely confusion, mistake, or
deception; or
(C) actual economic harm.
(3) "Dilution by blurring" means an association
arising from the similarity between a mark or trade name and a
famous mark that impairs the famous mark's distinctiveness.
(4) "Dilution by tarnishment" means an association
arising from the similarity between a mark or trade name and a
famous mark that harms the famous mark's reputation.
(5) "Mark" includes a trademark or service mark that
is registrable under this chapter, regardless of whether the
trademark or service mark is actually registered.
(6) "Person," with respect to the applicant or another
person who is entitled to a benefit or privilege or is rendered
liable under this chapter, includes:
(A) a natural person; and
(B) a firm, partnership, corporation,
association, union, or other organization that may sue or be sued in
that capacity.
(7) "Registrant" means the person to whom a
registration of a mark has been issued under this chapter. The term
includes the person's legal representative, successor, or
assignee.
(8) "Service mark":
(A) means a word, name, symbol, or device, or any
combination of those terms, used by a person to:
(i) identify and distinguish the services
of one person, including a unique service, from the services of
another; and
(ii) indicate the source of the services,
regardless of whether the source is unknown; and
(B) includes the titles, character names used by
a person, and other distinctive features of radio or television
programs, regardless of whether the titles, character names, or
programs advertise the sponsor's goods.
(9) "Trade name" means a name used by a person to
identify the person's business or vocation.
(10) "Trademark" means a word, name, symbol, or
device, or any combination of those terms, used by a person to:
(A) identify and distinguish the person's goods,
including a unique product, from the goods manufactured or sold by
another; and
(B) indicate the source of the goods, regardless
of whether the source is unknown.
Sec. 16.002. INAPPLICABILITY OF CHAPTER. This chapter does
not apply to the registration or use of a livestock brand or other
indicia of ownership of goods that do not qualify as a mark.
Sec. 16.003. WHEN MARK CONSIDERED TO BE IN USE. (a) A mark
is considered to be in use in this state in connection with goods
when:
(1) the mark is placed in any manner on:
(A) the goods;
(B) containers of the goods;
(C) displays associated with the goods;
(D) tags or labels affixed to the goods; or
(E) documents associated with the goods or sale
of the goods, if the nature of the goods makes placement described
by Paragraphs (A) through (D) impracticable; and
(2) the goods are sold or transported in commerce in
this state.
(b) A mark is considered to be in use in this state in
connection with services when:
(1) the mark is used or displayed in this state in
connection with selling or advertising the services; and
(2) the services are rendered in this state.
(c) A mark made merely to reserve a right in the mark is not
considered to be in use in this state in connection with goods or
services.
Sec. 16.004. WHEN MARK CONSIDERED TO BE ABANDONED. (a) A
mark is considered to be abandoned when:
(1) the mark's use has been discontinued with intent
not to resume the use; or
(2) the owner's conduct, including an omission or
commission of an act, causes the mark to lose its significance as a
mark.
(b) Intent not to resume use of a mark under Subsection
(a)(1) may be inferred from the circumstances.
(c) Nonuse of a mark as described by Subsection (a)(1) for
three consecutive years constitutes prima facie evidence of the
mark's abandonment.
[Sections 16.005-16.050 reserved for expansion]
SUBCHAPTER B. REGISTRATION OF MARK
Sec. 16.051. REGISTRABLE MARKS. (a) A mark that
distinguishes an applicant's goods or services from those of others
is registrable unless the mark:
(1) consists of or comprises matter that is immoral,
deceptive, or scandalous;
(2) consists of or comprises matter that may
disparage, falsely suggest a connection with, or bring into
contempt or disrepute:
(A) a person, whether living or dead;
(B) an institution;
(C) a belief; or
(D) a national symbol;
(3) depicts, comprises, or simulates the flag, the
coat of arms, or other insignia of:
(A) the United States;
(B) a state;
(C) a municipality; or
(D) a foreign nation;
(4) consists of or comprises the name, signature, or
portrait of a particular living individual who has not consented in
writing to the mark's registration;
(5) when used on or in connection with the applicant's
goods or services:
(A) is merely descriptive or deceptively
misdescriptive of the applicant's goods or services; or
(B) is primarily geographically descriptive or
deceptively misdescriptive of the applicant's goods or services;
(6) is primarily merely a surname; or
(7) is likely to cause confusion or mistake, or to
deceive, because, when used on or in connection with the
applicant's goods or services, it resembles:
(A) a mark registered in this state; or
(B) an unabandoned mark registered with the
United States Patent and Trademark Office.
(b) Subsection (a)(5) or (6) does not prevent the
registration of a mark used by the applicant that has become
distinctive as applied to the applicant's goods or services. The
secretary of state may accept as evidence that a mark has become
distinctive, when used on or in connection with the applicant's
goods or services, proof of continuous use of the mark as such by
the applicant in this state for the five years preceding the date on
which the claim of distinctiveness is made.
Sec. 16.052. APPLICATION FOR REGISTRATION. (a) Subject to
the limitations prescribed by this chapter, a person who uses a mark
may file an application to register the mark in the office of the
secretary of state in the manner prescribed by the secretary of
state.
(b) The application must include:
(1) the name and business address of the applicant;
(2) if the applicant is a corporation, the state under
whose laws the applicant was incorporated or organized;
(3) if the applicant is a partnership, the state under
whose laws the partnership was organized and the names of the
general partners;
(4) the names or a description of the goods or services
on or in connection with which the mark is being used;
(5) the mode or manner in which the mark is being used
on or in connection with the goods or services;
(6) the class to which the goods or services belong;
(7) the date the applicant or applicant's predecessor
in interest first used the mark anywhere;
(8) the date the applicant or the applicant's
predecessor in interest first used the mark in this state; and
(9) a statement that:
(A) the applicant is the owner of the mark;
(B) the mark is in use; and
(C) to the knowledge of the person verifying the
application, no other person:
(i) has registered the mark, either
federally or in this state; or
(ii) is entitled to use the mark in this
state:
(a) in the identical form used by the
applicant; or
(b) in a form that is likely, when
used on or in connection with the goods or services of the other
person, to cause confusion or mistake, or to deceive, because of its
resemblance to the mark.
(c) The secretary of state may also require a statement as
to whether the applicant or the applicant's predecessor in interest
has filed an application to register the mark, or a portion or
composite of the mark, with the United States Patent and Trademark
Office, and, if so, the applicant shall fully disclose information
with respect to that filing, including:
(1) the filing date and serial number of each
application;
(2) the status of the filing; and
(3) if any application was finally refused
registration or has not otherwise resulted in the issuance of a
registration, the reasons for the refusal or nonissuance.
(d) The application must be accompanied by:
(1) three specimens of the mark as actually used; and
(2) an application fee payable to the secretary of
state.
(e) The application must be signed and verified by the oath
or affirmation of:
(1) the applicant; or
(2) a member of the firm or officer of the corporation
or association that is applying for registration of the mark, as
applicable.
(f) The secretary of state may also require that a drawing
of the mark that complies with any requirement specified by the
secretary of state accompany the application.
Sec. 16.053. FILING OF APPLICATION; EXAMINATION. (a) On
the filing of an application for registration and payment of the
application fee, the secretary of state shall examine the
application for compliance with this chapter.
(b) The applicant shall provide to the secretary of state
any additional pertinent information requested by the secretary of
state, including a description of a design mark.
Sec. 16.054. AMENDMENT TO APPLICATION. (a) In response to
the secretary of state's rejection of or objection to the
registration, the applicant may amend, or authorize the secretary
of state to amend, the application on reasonable request of the
secretary of state or if the applicant considers it advisable.
(b) The secretary of state, on agreement by the applicant,
may amend the application submitted by the applicant. The
secretary of state may require the applicant to submit a new
application instead of amending the application.
Sec. 16.055. DISCLAIMER OF UNREGISTRABLE COMPONENT. (a)
The secretary of state may require the applicant to disclaim an
unregistrable component of a mark that is otherwise registrable.
An applicant may voluntarily disclaim a component of a mark sought
to be registered.
(b) A disclaimer may not prejudice or affect:
(1) the rights of the applicant or registrant in the
disclaimed matter; or
(2) the rights of the applicant or registrant to
submit another application to register the mark if the disclaimed
matter is or has become distinctive of the applicant's or
registrant's goods or services.
Sec. 16.056. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
MARK. (a) When concurrently processing applications for the same
or confusingly similar marks used on or in connection with the same
or related goods or services, the secretary of state shall grant
priority to the application that was filed first. If a prior filed
application is granted a registration, the secretary of state shall
reject any other subsequently filed application.
(b) An applicant whose application is rejected under this
section may bring an action in accordance with Section 16.106 for
cancellation of the previously issued registration on the ground
that the applicant has a prior or superior right to the mark.
Sec. 16.057. DENIAL OF REGISTRATION; NOTICE. (a) If the
secretary of state determines that the applicant is not entitled to
register the mark, the secretary of state shall:
(1) notify the applicant of the determination and the
reason for the denial of the application; and
(2) give the applicant reasonable time as prescribed
by the secretary of state in which to issue a response to the denial
or amend the application, in which event the secretary of state
shall reexamine the application.
(b) The applicant may repeat the examination procedures
described by Subsection (a) until the earlier of:
(1) the expiration of the period prescribed by the
secretary of state under Subsection (a)(2); or
(2) the date on which the secretary of state finally
refuses registration of the application.
(c) If the applicant fails to respond to the denial or to
amend the application within the period prescribed by the secretary
of state under Subsection (a)(2), the application is considered to
have been abandoned.
(d) If the secretary of state finally refuses registration
of the mark, the applicant may seek a writ of mandamus against the
secretary of state to compel registration in accordance with the
procedures prescribed by Section 16.106. The writ of mandamus may
be granted, without cost to the secretary of state, on proof that
all the statements in the application are true and that the mark is
otherwise entitled to registration.
Sec. 16.058. CERTIFICATE OF REGISTRATION. (a) If the
application complies with the requirements of this chapter, the
secretary of state shall cause a certificate of registration to be
issued and delivered to the applicant.
(b) The certificate of registration must:
(1) be signed by the secretary of state;
(2) be issued under the secretary of state's official
seal;
(3) indicate the name and business address of the
person claiming ownership of the mark;
(4) if the applicant is a corporation, indicate the
state under whose laws the applicant was incorporated or organized;
(5) if the applicant is a partnership, indicate the
state under whose laws the partnership was organized and the names
of the general partners;
(6) include a description of the goods or services on
or in connection with which the mark is being used;
(7) state the class of the goods or services;
(8) state the date claimed for the first use of the
mark anywhere;
(9) state the date claimed for the first use of the
mark in this state;
(10) show a reproduction of the mark;
(11) state the registration date; and
(12) state the term of the registration.
Sec. 16.059. TERM AND RENEWAL OF REGISTRATION. (a) The
registration of a mark under this chapter expires on the fifth
anniversary of the date of registration.
(b) The registration of a mark under this chapter may be
renewed for an additional five-year term by filing a renewal
application in the manner prescribed by the secretary of state and
paying a renewal fee not later than the 180th day before the date
the registration expires.
(c) An application for renewal under this chapter, whether
of a registration made under this chapter, or a registration that
took effect under a predecessor statute, must include:
(1) a verified statement stating that the mark has
been and is still in use in this state; and
(2) a specimen of the mark, as actually used on or in
connection with the goods or services.
(d) A mark for which a registration was in effect on August
31, 2012, continues in effect for the unexpired term of the
registration and may be renewed by complying with the requirements
for renewal under this section.
Sec. 16.060. RECORD AND PROOF OF REGISTRATION. (a) The
secretary of state shall keep for public examination a record of
all:
(1) marks registered or renewed under this chapter;
(2) assignments recorded under Section 16.061; and
(3) other instruments recorded under Section 16.062.
(b) Registration of a mark under this chapter is
constructive notice throughout this state of the registrant's claim
of ownership of the mark throughout this state.
(c) A certificate of registration issued by the secretary of
state under this chapter, or a copy of it certified by the secretary
of state, is admissible in evidence as prima facie proof of:
(1) the validity of the registration;
(2) the registrant's ownership of the mark; and
(3) the registrant's exclusive right to use the mark in
commerce in this state in connection with the goods or services
specified in the certificate, subject to any conditions and
limitations stated in the certificate.
Sec. 16.061. ASSIGNMENT OF MARK AND REGISTRATION. (a) A
mark and its registration under this chapter are assignable with
the goodwill of the business in which the mark is used, or with that
part of the goodwill of the business connected with the use of, and
symbolized by, the mark.
(b) An assignment must be made by a properly executed
written instrument and may be recorded with the secretary of state
by:
(1) filing the assignment; and
(2) paying a recording fee to the secretary of state.
(c) If an assignment has been properly filed for record
under Subsection (b), the secretary of state shall issue in the
assignee's name a new certificate of registration for the remainder
of the term of the mark's registration or last renewal.
(d) The assignment of a mark registered under this chapter
is void against a purchaser who purchases the mark for valuable
consideration after the assignment is made and without notice of it
unless the assignment is recorded by the secretary of state:
(1) not later than the 90th day after the date of the
assignment; or
(2) before the mark is purchased.
(e) An acknowledgment is prima facie evidence of the
execution of an assignment, and when recorded by the secretary of
state, the record is prima facie evidence of execution.
Sec. 16.062. RECORDING OF OTHER INSTRUMENTS. (a) A
certificate of the registrant or applicant effecting a name change
of the person to whom the mark was issued or for whom an application
was filed may be recorded with the secretary of state by paying a
recording fee to the secretary of state.
(b) Other properly executed written instruments that relate
to a mark registered or an application pending with the secretary of
state under this chapter, including a license, security interest,
or mortgage, may be recorded with the secretary of state, at the
secretary of state's discretion.
(c) An acknowledgment is prima facie evidence of the
execution of an instrument other than an assignment under this
section, and when recorded by the secretary of state, the record is
prima facie evidence of execution.
(d) The secretary of state must accept for recording a copy
of an original instrument under this section if the copy is
certified to be a true copy by any party to the transaction or the
party's successor.
Sec. 16.063. CHANGE OF REGISTRANT'S NAME. If a registrant's
name is changed during the unexpired term of a mark's registration,
a new certificate of registration may be issued for the remainder of
the unexpired term in the new name of the registrant on the filing
of a certificate under Section 16.062.
Sec. 16.064. CANCELLATION OF REGISTRATION. (a) The
secretary of state shall cancel a registration:
(1) in force on August 31, 2012, that has not been
renewed under Section 16.059;
(2) on receipt of a voluntary request for cancellation
from the registrant under this chapter or the registrant's assignee
of record;
(3) granted under this chapter and not renewed under
Section 16.059;
(4) with respect to which a court has rendered a
judgment finding that:
(A) the registered mark has been abandoned;
(B) the registrant is not the owner of the mark;
(C) the registration was granted improperly;
(D) the registration was obtained fraudulently;
(E) the registered mark is or has become the
generic name for the goods or services, or part of the goods or
services, in connection with which the mark was registered;
(F) the registered mark is so similar, as to be
likely to cause confusion or mistake or to deceive, to a mark that:
(i) is registered by another person in the
United States Patent and Trademark Office before the date the
application for registration was filed under this chapter; and
(ii) is not abandoned; or
(G) the registration was canceled by order of a
court on any ground; or
(5) when a court of competent jurisdiction orders
cancellation of a registration on any ground.
(b) If a registrant's mark is considered for cancellation
under Subsection (a)(4)(F) and the registrant proves that the
registrant is the owner of a mark concurrently registered as a mark
with the United States Patent and Trademark Office to cover a
geographical area that includes a part of this state, the secretary
of state may not cancel registration of the mark for the
geographical area of this state covered by the federal
registration.
Sec. 16.065. CLASSIFICATION OF GOODS AND SERVICES. (a) The
secretary of state by rule shall establish a classification of
goods and services for the convenient administration of this
chapter. The classifications established under this section may
not limit or expand an applicant's or registrant's rights. To the
extent practicable, the classification of goods and services must
conform to the classification of goods and services adopted by the
United States Patent and Trademark Office.
(b) An applicant may include in a single application for
registration of a mark any or all goods or services in connection
with which the mark is actually being used and the appropriate class
or classes of the goods or services.
(c) If a single application for registration of a mark
includes goods or services that belong in multiple classes, the
secretary of state may require payment of a fee for each class of
goods or services.
Sec. 16.066. FEES. (a) The secretary of state by rule
shall prescribe the amount of fees payable for the various
applications and for the filing and recording of those applications
for related services.
(b) Unless specified otherwise by the secretary of state, a
fee under this chapter is not refundable.
[Sections 16.067-16.100 reserved for expansion]
SUBCHAPTER C. ENFORCEMENT
Sec. 16.101. FRAUDULENT REGISTRATION. A person who
procures for the person or another the filing of an application or
the registration of a mark under this chapter by knowingly making a
false or fraudulent representation or declaration, oral or written,
or by any other fraudulent means, is liable to pay all damages
sustained as a result of the filing or registration. The damages
may be recovered by or on behalf of the injured party in any court of
competent jurisdiction.
Sec. 16.102. INFRINGEMENT OF REGISTERED MARK. (a) Subject
to Section 16.107, a person commits an infringement if the person:
(1) without the registrant's consent, uses anywhere in
this state a reproduction, counterfeit, copy, or colorable
imitation of a mark registered under this chapter in connection
with selling, distributing, offering for sale, or advertising goods
or services when the use is likely to deceive or cause confusion or
mistake as to the source or origin of the goods or services; or
(2) reproduces, counterfeits, copies, or colorably
imitates a mark registered under this chapter and applies the
reproduction, counterfeit, copy, or colorable imitation to a label,
sign, print, package, wrapper, receptacle, or advertisement
intended to be used in selling or distributing, or in connection
with the sale or distribution of, goods or services in this state.
(b) A registrant may sue for damages and to enjoin an
infringement proscribed by Subsection (a).
(c) If the court determines that there has been an
infringement, the court shall enjoin the act of infringement and
may:
(1) subject to Subsection (d), require the violator to
pay the registrant all profits derived from or damages resulting
from the acts of infringement; and
(2) order that the infringing counterfeits or
imitations in the possession or under the control of the violator
be:
(A) delivered to an officer of the court to be
destroyed; or
(B) delivered to the registrant to be destroyed.
(d) If the court finds that the violator acted with actual
knowledge of the registrant's mark or in bad faith, the court, in
the court's discretion, may:
(1) enter judgment in an amount not to exceed three
times the amount of profits and damages; and
(2) award reasonable attorney's fees to the prevailing
party.
(e) A registrant is entitled to recover damages under
Subsections (a)(2), (c)(1), and (d) only if the violator acted with
intent to cause confusion or mistake or to deceive.
(f) The enumeration of any right or remedy under this
section does not affect the prosecution of conduct under the penal
laws of this state.
Sec. 16.103. INJURY TO BUSINESS REPUTATION; DILUTION. (a)
Subject to the principles of equity, the owner of a mark that is
famous and distinctive, inherently or through acquired
distinctiveness, in this state is entitled to enjoin another
person's commercial use of a mark or trade name that begins after
the mark has become famous if use of the mark or trade name is likely
to cause the dilution of the famous mark.
(b) For purposes of this section, a mark is considered to be
famous if the mark is widely recognized by the public throughout
this state or in a geographic area in this state as a designation of
source of the goods or services of the mark's owner. In determining
whether a mark is famous, a court may consider factors including:
(1) the duration, extent, and geographic reach of the
advertisement and publicity of the mark in this state, regardless
of whether the mark is advertised or publicized by the owner or a
third party;
(2) the amount, volume, and geographic extent of sales
of goods or services offered under the mark in this state;
(3) the extent of actual recognition of the mark in
this state; and
(4) whether the mark is registered in this state or in
the United States Patent and Trademark Office.
(c) In an action brought under this section, the owner of a
famous mark is entitled to injunctive relief throughout the
geographic area in this state in which the mark is found to have
become famous before the use of the other mark. If the court finds
that the person against whom the injunctive relief is sought
wilfully intended to cause the dilution of the famous mark, the
owner shall also be entitled to remedies under this chapter,
subject to the court's discretion and principles of equity.
(d) A person may not bring an action under this section for:
(1) a fair use, including a nominative or descriptive
fair use, or facilitation of the fair use, of a famous mark by
another person other than as a designation of source for the
person's own goods or services, including a fair use in connection
with:
(A) advertising or promoting that permits
consumers to compare goods or services; or
(B) identifying and parodying, criticizing, or
commenting on the famous mark owner or the famous mark owner's goods
or services;
(2) a noncommercial use of the mark; or
(3) any form of news reporting or commentary.
Sec. 16.104. REMEDIES. (a) An owner of a mark registered
under this chapter may bring an action to enjoin the manufacture,
use, display, or sale of any counterfeits or imitations of a mark.
(b) If the court finds that a wrongful act described by
Subsection (a) has been committed, the court shall enjoin the
wrongful manufacture, use, display, or sale and may:
(1) subject to Subsection (c), require the violator to
pay to the owner of the mark all profits derived from or damages
resulting from the wrongful acts; and
(2) order that the wrongful counterfeits or imitations
in the possession or under the control of the defendant be:
(A) delivered to an officer of the court to be
destroyed; or
(B) delivered to the complainant to be destroyed.
(c) If the court finds that the violator committed the
wrongful acts with knowledge of the registrant's mark or in bad
faith, or otherwise as according to the circumstances of the case,
the court, in the court's discretion, may:
(1) enter judgment in an amount not to exceed three
times the amount of profits and damages; and
(2) award reasonable attorney's fees to the prevailing
party.
Sec. 16.105. OLYMPIC SYMBOLS. (a) Without the permission
of the United States Olympic Committee, a person may not, for the
purpose of trade, to induce the sale of goods or services, or to
promote a theatrical exhibition, athletic performance, or
competition, use:
(1) the symbol of the International Olympic Committee,
consisting of five interlocking rings;
(2) the emblem of the United States Olympic Committee,
consisting of an escutcheon having a blue chief and vertically
extending red and white bars on the base with five interlocking
rings displayed on the chief;
(3) a trademark, trade name, sign, symbol, or insignia
falsely representing association with or authorization by the
International Olympic Committee or the United States Olympic
Committee; or
(4) the words "Olympic," "Olympiad," or "Citius Altius
Fortius" or a combination or simulation of those words that tends to
cause confusion or mistake, to deceive, or to suggest falsely a
connection with the United States Olympic Committee or an Olympic
activity.
(b) On violation of Subsection (a), the United States
Olympic Committee is entitled to the remedies available to a
registrant on infringement of a mark registered under this chapter.
Sec. 16.106. FORUM FOR ACTIONS REGARDING REGISTRATION;
SERVICE ON OUT-OF-STATE REGISTRANTS. (a) An action to require
cancellation of a mark registered under this chapter or in mandamus
to compel registration of a mark under this chapter shall be brought
in a district court of Travis County. In an action to compel
registration of a mark, the proceeding must be based solely on the
record before the secretary of state.
(b) In an action for cancellation, the secretary of state
may not be made a party to the proceeding but shall be notified of
the filing of the complaint by the clerk of the court in which the
action is filed and shall be given the right to intervene in the
action.
(c) In an action brought against a nonresident registrant,
service may be made on the secretary of state as agent for service
of process of the registrant in accordance with the procedures
established for service on foreign corporations and business
entities under the Business Organizations Code.
Sec. 16.107. COMMON LAW RIGHTS NOT AFFECTED. No
registration under this chapter adversely affects common law rights
acquired prior to registration under this chapter. However, during
any period when the registration of a mark under this chapter is in
force and the registrant has not abandoned the mark, no common law
rights as against the registrant of the mark may be acquired.
[SUBCHAPTER A. GENERAL PROVISIONS
[Sec. 16.01. DEFINITIONS. (a) In this chapter, unless the
context requires a different definition,
[(1) "applicant" means the person applying for
registration of a mark under this chapter and includes his legal
representative, successor, assignee, and predecessor in title to
the mark sought to be registered;
[(2) "mark" includes service mark and trademark;
[(3) "registrant" means the person to whom a
registration has been issued under this chapter and includes his
legal representative, successor, assignee, and predecessor in
title to the registration;
[(4) "service mark" means a word, name, symbol,
device, slogan or any combination thereof which, whether registered
or not, has been adopted and used by a person to identify his
services and distinguish them from the services of others, and
includes the titles, designations, character names, and
distinctive features of broadcast or other advertising;
[(5) "trademark" means a word, name, symbol, device,
slogan or any combination thereof which, whether registered or not,
has been adopted and used by a person to identify his goods and
distinguish them from the goods manufactured or sold by others; and
[(6) "trade name" includes individual name, surname,
firm name, corporate name, and lawfully adopted name or title used
by a person to identify his business, vocation, or occupation.
[(b) This chapter does not apply to the registration or use
of livestock brands or other indicia of ownership of goods which do
not qualify as a "mark" as defined in this chapter.
[Sec. 16.02. WHEN MARK CONSIDERED TO BE USED. (a) A mark
is considered to be used in this state in connection with goods when
[(1) it is placed on
[(A) the goods;
[(B) containers of the goods;
[(C) displays associated with the goods; or
[(D) tags or labels affixed to the goods; and
[(2) the goods are sold, displayed for sale, or
otherwise publicly distributed in this state.
[(b) A mark is considered to be used in this state in
connection with services when
[(1) it is used or displayed in this state in
connection with selling or advertising the services; and
[(2) the services are rendered in this state.
[SUBCHAPTER B. REGISTRATION OF MARK
[Sec. 16.08. REGISTRABLE MARKS. (a) A mark in actual use
in connection with the applicant's goods or services, which
distinguishes his goods or services from those of others, is
registrable unless it
[(1) is, or includes matter which is, immoral,
deceptive, or scandalous;
[(2) may disparage, or falsely suggest a connection
with, or bring into contempt or disrepute
[(A) a person, whether living or dead;
[(B) an institution;
[(C) a belief; or
[(D) a national symbol;
[(3) depicts or simulates the flag, coat of arms, or
other insignia of
[(A) the United States;
[(B) a state;
[(C) a municipality; or
[(D) a foreign nation;
[(4) is or includes the name, signature, or portrait
of a living individual who has not consented in writing to its
registration;
[(5) is
[(A) merely descriptive or deceptively
misdescriptive of the applicant's goods or services;
[(B) primarily geographically descriptive or
deceptively misdescriptive of the applicant's goods or services; or
[(C) primarily merely a surname; or
[(6) is likely to cause confusion or mistake, or to
deceive, because, when applied to the applicant's goods or
services, it resembles another person's unabandoned mark
registered in this state.
[(b) Subsection (a)(5) of this section does not prevent the
registration of a mark that has become distinctive as applied to the
applicant's goods or services. The secretary of state may accept as
evidence that a mark has become distinctive as applied to the
applicant's goods or services proof of substantially exclusive and
continuous use of the mark by the applicant in this state for the
five years next preceding the date on which the applicant filed his
application for registration.
[(c) A trade name is not registrable under this chapter.
However, if a trade name is also a service mark or trademark, as
defined in this chapter, it is registrable as a service mark or
trademark.
[Sec. 16.09. CLASSIFICATION OF GOODS AND SERVICES. (a) The
secretary of state shall adopt rules establishing a classification
of goods and services for the convenient administration of this
chapter. The classifications established do not limit or expand an
applicant's or registrant's rights. To the extent practicable, the
classification of goods and services should conform to the
classification adopted by the United States Patent and Trademark
Office.
[(b) An applicant may include in a single application for
registration of a mark all goods or services in connection with
which the mark is actually being used and which are in a single
class. An applicant may not include in a single application for
registration goods or services which are not in a single class.
[Sec. 16.10. APPLICATION FOR REGISTRATION. (a) Subject to
the limitations prescribed by this chapter, a person may file an
application to register a mark in the office of the secretary of
state on a form prescribed by the secretary of state.
[(b) The applicant shall include in the application:
[(1) the name and business address of the applicant;
[(2) if the applicant is a corporation, limited
partnership, limited liability company, or other business entity,
the state of incorporation or organization;
[(3) an appointment of the secretary of state as the
applicant's agent for service of process only in suits relating to
the registration which may be issued if the applicant:
[(A) is or becomes a:
[(i) nonresident individual, partnership,
or association; or
[(ii) foreign corporation, limited
partnership, or limited liability company without a certificate of
authority to do business in this state; or
[(B) cannot be found in this state;
[(4) the names or a description of the goods or
services in connection with which the mark is being used;
[(5) the manner in which the mark is being used in
connection with the goods or services;
[(6) the class in which the applicant believes the
goods or services belong;
[(7) the date on which the applicant first used the
mark anywhere in connection with the goods or services;
[(8) the date on which the applicant first used the
mark in this state in connection with the goods or services;
[(9) a statement that the applicant is the owner of the
mark, and that, to the best of the applicant's knowledge, no other
person is entitled to use the mark in this state:
[(A) in the identical form used by the applicant;
or
[(B) in a form that is likely, when used in
connection with the goods or services, to cause confusion or
mistake, or to deceive, because of its resemblance to the mark used
by the applicant;
[(10) a narrative description of the mark; and
[(11) such additional information or documents as the
secretary of state may reasonably require.
[(c) The applicant shall:
[(1) prepare and file the application and a copy of the
application with the secretary of state; and
[(2) submit as part of the application to the
secretary of state:
[(A) two identical specimens or facsimiles of the
mark as actually used, one specimen or facsimile with the original
application and one specimen or facsimile with the copy;
[(B) a drawing of the mark that complies with any
requirement specified by the secretary of state; and
[(C) an application fee of $50 payable to the
secretary of state.
[(d) The applicant or the applicant's agent shall sign the
application.
[Sec. 16.105. EXAMINATION OF APPLICATION. (a) On the
filing of an application for registration and payment of the
application fee, the secretary of state shall examine the
application for compliance with this chapter.
[(b) The applicant shall provide to the secretary of state
additional pertinent information requested by the secretary of
state.
[(c) The secretary of state shall examine applications in
the order in which the applications are filed, including
applications concurrently processed for registration of the same or
confusingly similar marks used in connection with the same or
similar goods or services.
[Sec. 16.106. AMENDMENT TO APPLICATION. (a) The applicant
may make an amendment to the application as reasonably requested by
the secretary of state or in response to a rejection or objection to
the registration by the secretary of state.
[(b) An amendment to the application, other than an
amendment to the date on which the applicant first uses the mark,
may be made by the applicant's agent. The secretary of state may
require the applicant to execute and submit a new application
instead of making an amendment.
[(c) An amendment to the application made to the date on
which the applicant first used the mark may not specify a date of
use that is after the date on which the application was filed.
[Sec. 16.107. DISCLAIMER OF UNREGISTRABLE COMPONENT. The
secretary of state may require the applicant to disclaim or the
applicant may voluntarily disclaim an unregistrable component of a
mark that is otherwise registrable. A disclaimer may not prejudice
or affect the:
[(1) rights of the applicant or registrant in the
disclaimed matter; or
[(2) rights of the applicant or registrant to make an
application to register a mark if the disclaimed matter is
distinctive of the goods or services of the applicant or
registrant.
[Sec. 16.108. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
MARK. (a) When concurrently processing applications for the same
or confusingly similar marks used in connection with the same or
similar goods or services, the secretary of state shall give
priority to the application that was filed first. If the previously
filed application is registered, the secretary of state shall
reject the other application.
[(b) The applicant may bring an action for cancellation of
the previously issued registration on the ground that the applicant
has a prior or superior right to the mark under this chapter.
[Sec. 16.109. DENIAL OF REGISTRATION. (a) If the
secretary of state finds that the applicant is not entitled to
register the mark, the secretary of state shall:
[(1) notify the applicant of the reason for the denial
of the application; and
[(2) give the applicant a reasonable amount of time as
prescribed by the secretary of state in which to:
[(A) issue a response to the denial; or
[(B) amend the application.
[(b) The applicant may repeat the examination procedures
described by Subsection (a) until the earlier of:
[(1) the expiration of the period prescribed by the
secretary of state under Subsection (a)(2); or
[(2) the date on which the secretary of state finally
refuses registration of the application.
[(c) If the secretary of state finally refuses registration
of the mark, the applicant may seek a review of the decision of the
secretary of state in accordance with the procedures prescribed by
this chapter.
[Sec. 16.11. REGISTRATION BY SECRETARY OF STATE. If the
application satisfies the requirements of this chapter, and the
application fee has been paid, the secretary of state shall:
[(1) endorse on the original and the copy of the
application:
[(A) the word "filed"; and
[(B) the date on which the application was filed;
[(2) file the original in his office;
[(3) issue a certificate of registration evidencing
registration on the date on which the application was filed;
[(4) attach the copy to the certificate of
registration; and
[(5) deliver the certificate of registration with the
attached copy of the application to the applicant.
[Sec. 16.12. TERM OF REGISTRATION. (a) The registration
of a mark under this chapter is effective for a term of 10 years from
the date of registration.
[Sec. 16.13. NOTICE OF EXPIRATION OF REGISTRATION.
(a) During the period beginning 12 months and ending 6 months
before the day a registration expires, the secretary of state
shall, by writing to the last known address of the registrant under
this chapter or under a prior act, notify the registrant of the
necessity for renewing or reregistering under Section 16.14 of this
code.
[(b) Neither the secretary of state's failure to notify a
registrant nor the registrant's nonreceipt of a notice under
Subsection (a) of this section
[(1) extends the term of a registration; or
[(2) excuses the registrant's failure to renew or
reregister.
[Sec. 16.14. RENEWAL OF REGISTRATION AND REREGISTRATION.
(a) The registration of a mark under this chapter may be renewed
for an additional 10-year term by filing a renewal application
within six months before the day the registration expires. The
registrant shall submit to the secretary of state:
[(1) a renewal application stating that:
[(A) the mark is still in use in this state; or
[(B) nonuse of the mark in this state:
[(i) is due to special circumstances which
excuse the nonuse; and
[(ii) is not due to an intention to abandon
the mark in this state; and
[(2) a renewal application fee of $25 payable to the
secretary of state.
[(b) A registrant may renew a registration under Subsection
(a) of this section for successive terms of 10 years.
[(d) The renewal application must be signed by the
registrant or the registrant's agent.
[Sec. 16.15. RECORD, NOTICE, AND PROOF OF REGISTRATION.
(a) The secretary of state shall keep for public examination a
record of all:
[(1) marks registered, reregistered, or renewed under
this chapter;
[(2) assignments recorded under Section 16.18 of this
code; and
[(3) other instruments recorded under Section 16.19 of
this code.
[(b) Registration of a mark under this chapter is
constructive notice throughout this state of the registrant's claim
of ownership of the mark throughout this state.
[(c) A certificate of registration issued by the secretary
of state under this chapter, or a copy of it certified by the
secretary of state, is admissible in evidence as prima facie proof
of
[(1) the validity of the registration;
[(2) the registrant's ownership of the mark; and
[(3) the registrant's exclusive right to use the mark
in commerce in this state in connection with the goods or services
specified in the certificate, subject to any conditions and
limitations stated in the certificate.
[Sec. 16.16. CANCELLATION OF REGISTRATION. (a) The
secretary of state shall cancel
[(1) all registrations in force before May 2, 1962,
which are more than 10 years old and which have not been
reregistered under Section 16.14(c) of this code;
[(2) a registration on receipt of a voluntary request
for cancellation from the registrant under this chapter or under a
prior act as identified by the records of the secretary of state;
[(3) registrations granted under this chapter and not
renewed under Section 16.14(a) of this code;
[(4) a registration concerning which a district or
appellate court has rendered a final judgment, which has become
unappealable, cancelling the registration or finding that
[(A) the registered mark has been abandoned;
[(B) the registrant under this chapter or under a
prior act is not the owner of the mark;
[(C) the registration was granted contrary to the
provisions of this chapter;
[(D) the registration was obtained fraudulently;
or
[(E) the registered mark has become incapable of
serving as a mark.
[(b) The clerk of the court whose final judgment cancels a
registration or makes any of the findings specified in Subsection
(a)(4) of this section shall, when the judgment becomes
unappealable, transmit a certified copy of it to the secretary of
state.
[Sec. 16.17. ASSIGNMENT OF MARK AND REGISTRATION. (a) A
mark and its registration under this chapter are assignable with
the goodwill of the business in which the mark is used, or with that
part of the goodwill connected with the use of, and symbolized by,
the mark.
[(b) An assignment shall be made by duly executed written
instrument.
[Sec. 16.18. RECORDATION OF ASSIGNMENT AND ITS EFFECT.
(a) An assignment made under Section 16.17 of this code may be
recorded with the secretary of state by
[(1) filing with him
[(A) the original assignment; and
[(B) a duplicate original or legible photocopy on
durable paper of the assignment; and
[(2) paying him a fee of $10.
[(b) If an assignment has been properly filed for record
under Subsection (a) of this section, the secretary of state shall
[(1) issue in the assignee's name a new certificate of
registration for the remainder of the term of the mark's
registration, reregistration, or last renewal;
[(2) endorse on the original and duplicate original
assignment or photocopy the
[(A) words "Filed for record in the office of the
Secretary of State, State of Texas"; and
[(B) date on which the assignment was filed for
record;
[(3) file the duplicate original or photocopy of the
assignment in his office; and
[(4) return the endorsed original assignment to the
assignee or his representative.
[(c) The assignment of a mark registered under this chapter
is void against a purchaser who purchases the mark for value after
the assignment is made and without notice of it unless the
assignment is recorded by the secretary of state
[(1) within three months after the date of the
assignment; or
[(2) before the mark is purchased.
[Sec. 16.19. RECORDATION OF OTHER INSTRUMENTS. (a) An
instrument that is related to the ownership of a mark registered
under this subchapter, including articles of merger or conversion
or a document effecting a name change, may be recorded with the
secretary of state by:
[(1) filing a certified copy of the instrument; and
[(2) paying a filing fee in the amount established for
the filing of an assignment under Section 16.18.
[(b) This section does not apply to the recording of a
mortgage or a security interest or other instrument that is
recordable under the Uniform Commercial Code.
[(c) A license agreement related to a mark registered under
this chapter may not be recorded under this section.
[Sec. 16.20. TRANSFER OF MARK; CHANGE OF REGISTRANT'S
NAME; CHANGE OF ADDRESS. (a) If ownership of a registered mark is
transferred or a registrant's name is changed during the unexpired
term of a registration, a new certificate of registration may be
issued for the remainder of the unexpired term of the mark's
registration in the name of the transferee or in the new name of the
registrant upon the filing of an instrument under Section 16.19.
[(b) The secretary of state may amend the trademark records
of an effective registration to reflect a change of registrant
address upon receipt of a statement signed by the registrant or the
registrant's agent. The statement must set forth the name of the
registrant of record, a description of the registered mark, the
registration number issued by the secretary of state, and the
registrant's new address.
[Sec. 16.21. POWERS OF SECRETARY OF STATE. (a) The
secretary of state may adopt rules relating to the filing of
documents under this subchapter.
[(b) The secretary of state may prescribe forms for use in
filing documents under this subchapter.
[Sec. 16.22. ELECTRONIC FILINGS AND REPRODUCTIONS. (a) An
application for renewal of trademark registration, an assignment
under Section 16.17, or a transfer of ownership or change of
registrant name under Section 16.19 may be submitted in an
electronic format that is approved by the secretary of state. An
instrument that is filed in accordance with this subsection is
deemed to have complied with:
[(1) the filing requirements of the section pursuant
to which it is filed; and
[(2) any requirement that the document be submitted as
an originally signed instrument.
[(b) All electronic acknowledgments and certificates
required to be issued by the secretary of state for the instruments
filed pursuant to Subsection (a) shall be considered issued or
provided by the secretary of state on the initial transmission by
the secretary of state of the acknowledgment or certificate
required to be filed.
[(c) Any certificate issued by the secretary of state
concerning any instrument filed under this subchapter need not be
on paper or reduced to printed form.
[(d) If permitted by the rules adopted by the secretary of
state, an original instrument required or authorized to be filed
with the secretary of state under this subchapter may be a
photographic, photostatic, facsimile, or similar reproduction of a
signed instrument.
[(e) All civil and criminal penalties applicable to the
filing of documents under this chapter apply to all documents filed
pursuant to this section.
[SUBCHAPTER C. COURT ACTION
[Sec. 16.24. REVIEW OF SECRETARY OF STATE'S DECISIONS. (a)
If the secretary of state takes final action refusing to register a
mark under Section 16.109 or to renew the registration of a mark
under Section 16.14, the applicant or registrant may file suit for
review of the secretary of state's decision in one of the Travis
County district courts.
[(b) A suit filed under Subsection (a) of this section is
tried de novo, as an appeal from a justice court to a county court,
and
[(1) every decision or action concerning an issue in
the suit made or taken by the secretary of state before the suit was
filed is void;
[(2) the district court shall determine the issues in
the suit as if no decision had been made or action taken by the
secretary of state; and
[(3) the district court may not apply in any form the
substantial evidence rule in reviewing a decision or action of the
secretary of state.
[(c) The legislature declares that
[(1) this section is not severable from the other
sections of this chapter;
[(2) it would not have enacted this chapter without
this section; and
[(3) this chapter is void if a court in a final
judgment which becomes unappealable invalidates this section in
whole or part.
[Sec. 16.25. SUIT TO CANCEL REGISTRATION. (a) A person
who believes that he is or will be damaged by a registration under
this chapter may sue to cancel the registration in a district court
having venue.
[(b) The clerk of a court in which suit is filed under
Subsection (a) of this section shall transmit notice of the suit to
the secretary of state, who shall place the notice in the
registration file with proper notations and endorsements.
[(c) When the registrant's agent for service of process is
the secretary of state, the secretary of state shall forward notice
of the suit by registered mail to the registrant at his last address
of record.
[(d) If the court finds that the losing party in a suit filed
under Subsection (a) of this section should have known his position
was without merit, the court may award the successful party his
reasonable attorneys' fees and charge them as part of the costs
against the losing party.
[Sec. 16.26. INFRINGEMENT OF REGISTERED MARK. (a) Subject
to Section 16.27 of this code, a person commits an infringement if,
without the registrant's consent, he
[(1) uses anywhere in this state a reproduction,
counterfeit, copy, or colorable imitation of a mark registered
under this chapter in connection with selling, offering for sale,
or advertising goods or services when the use is likely to deceive
or cause confusion or mistake as to the source or origin of the
goods or services; or
[(2) reproduces, counterfeits, copies, or colorably
imitates a mark registered under this chapter and applies the
reproduction, counterfeit, copy, or colorable imitation to a label,
sign, print, package, wrapper, receptacle, or advertisement
intended to be used in selling, leasing, distributing, or rendering
goods or services in this state when the use is likely to deceive or
cause confusion or mistake as to the source or origin of the goods
or services.
[(b) A registrant may sue for damages and to enjoin an
infringement proscribed by Subsection (a) of this section in a
district court having venue.
[(c) If the district court determines that there has been an
infringement, it shall enjoin the act of infringement and may
[(1) require the infringer to pay the registrant all
damages resulting from the acts of infringement and occurring from
and after the date two years before the day the suit was filed; and
[(2) order that the infringing reproductions,
counterfeits, copies, or colorable imitations in the possession or
under the control of the infringer be
[(A) delivered to an officer of the court;
[(B) delivered to the registrant; or
[(C) destroyed.
[(d) A registrant is entitled to recover damages under
Subsection (c)(1) of this section only for an infringement that
occurred during the period of time the infringer had actual
knowledge of the registrant's mark.
[Sec. 16.27. EXCEPTIONS TO LIABILITY FOR INFRINGEMENT. (a)
No registration under this chapter adversely affects common law
rights acquired prior to registration under this chapter. However,
during any period when the registration of a mark under this chapter
is in force and the registrant has not abandoned the mark, no common
law rights as against the registrant of the mark may be acquired.
[(b) The owner or operator of a radio or television station,
or the owner or publisher of a newspaper, magazine, directory, or
other publication, is not liable in that business under Section
16.26 of this code for the use of a registered mark furnished by one
of his advertisers or customers.
[Sec. 16.28. PROCURING APPLICATION OR REGISTRATION BY
FRAUD. (a) No person may procure for himself or another the
filing of an application or the registration of a mark under this
chapter by knowingly making a false or fraudulent representation or
declaration, oral or written, or by any other fraudulent means.
[(b) A person injured by the false or fraudulent procurement
of an application or registration may sue the person who violated
Subsection (a) of this section in a district court having venue and
[(1) recover from him damages resulting from use of
the fraudulently registered mark, plus costs of suit, including
attorneys' fees; and
[(2) have the registration cancelled.
[Sec. 16.29. INJURY TO BUSINESS REPUTATION OR TRADE NAME OR
MARK. A person may bring an action to enjoin an act likely to
injure a business reputation or to dilute the distinctive quality
of a mark registered under this chapter or Title 15, U.S.C., or a
mark or trade name valid at common law, regardless of whether there
is competition between the parties or confusion as to the source of
goods or services. An injunction sought under this section shall be
obtained pursuant to Rule 680 et seq. of the Texas Rules of Civil
Procedure.
[Sec. 16.30. OLYMPIC SYMBOLS. (a) Without the permission
of the United States Olympic Committee, a person may not, for the
purpose of trade, to induce the sale of goods or services, or to
promote a theatrical exhibition, athletic performance, or
competition, use:
[(1) the symbol of the International Olympic
Committee, consisting of five interlocking rings;
[(2) the emblem of the United States Olympic
Committee, consisting of an escutcheon having a blue chief and
vertically extending red and white bars on the base with five
interlocking rings displayed on the chief;
[(3) a trademark, trade name, sign, symbol, or
insignia falsely representing association with or authorization by
the International Olympic Committee or the United States Olympic
Committee; or
[(4) the words "Olympic," "Olympiad," or "Citius
Altius Fortius" or a combination or simulation of those words that
tends to cause confusion or mistake, to deceive, or to suggest
falsely a connection with the United States Olympic Committee or an
Olympic activity.
[(b) On violation of Subsection (a), the United States
Olympic Committee is entitled to the remedies available to a
registrant on infringement of a mark registered under this chapter.
[Sec. 16.31. CRIMINAL PENALTY. (a) A person commits an
offense if the person knowingly or intentionally signs and presents
or causes to be presented for filing a document that may be or is
required to be filed under this chapter and that:
[(1) indicates that the person signing the document
has the authority to act on behalf of an applicant or registrant
when the person is not authorized to act on behalf of the applicant
or registrant;
[(2) contains a material false statement; or
[(3) is forged.
[(b) An offense under this section is a Class A misdemeanor
unless the actor's intent is to defraud or harm another, in which
event the offense is a state jail felony.]
SECTION 2. Sections 32.23(3), (5), and (6), Penal Code, are
amended to read as follows:
(3) "Protected mark" means a trademark or service mark
or an identification mark that is:
(A) registered with the secretary of state;
(B) registered on the principal register of the
United States Patent and Trademark Office;
(C) registered under the laws of another state;
or
(D) protected by Section 16.105 [16.30],
Business & Commerce Code, or by 36 U.S.C. Section 371 et seq.
(5) "Service mark" has the meaning assigned by Section
16.001 [16.01], Business & Commerce Code.
(6) "Trademark" has the meaning assigned by Section
16.001 [16.01], Business & Commerce Code.
SECTION 3. The intent of this Act is to provide a system of
trademark registration and protection in this state that is
substantially consistent with the federal system of trademark
registration and protection under the Trademark Act of 1946, as
amended. To that end, the construction given to the Trademark Act
of 1946 (15 U.S.C. Section 1051 et seq.) should be examined as
persuasive authority for interpreting and construing this Act.
SECTION 4. The changes in law made by this Act do not affect
any suit, proceeding, or appeal pending on the effective date of
this Act. A suit, proceeding, or appeal pending on the effective
date of this Act is governed by the law in effect on the date the
suit, proceeding, or appeal was filed, and the former law is
continued in effect for that purpose.
SECTION 5. This Act takes effect September 1, 2012.
* * * * *