Bill 5

                    Current Status

Bill Number:               5
Ratification Number:       137
Act Number                 92
Introducing Body:          Senate
Subject:                   Trademarks, service marks, model state
                           trademark law

(A92, R137, S5)

AN ACT TO AMEND ARTICLE 3, CHAPTER 15, OF TITLE 39, CODE OF LAWS OF SOUTH CAROLINA, 1976, RELATING TO TRADEMARKS, SO AS TO INCLUDE SERVICE MARKS; TO DEFINE TRADE NAME; TO PROVIDE THAT LEGAL ACTIONS PENDING PRIOR TO THE EFFECTIVE DATE OF THIS ACT SHALL NOT BE AFFECTED; AND TO PROVIDE FOR CHANGES THAT WILL MAKE SOUTH CAROLINA LAWS RELATING TO TRADEMARKS CONFORM MORE CLOSELY WITH THE PROVISIONS OF THE MODEL STATE TRADEMARK LAW.

Be it enacted by the General Assembly of the State of South Carolina:

Trademarks and service marks

SECTION 1. Article 3, Chapter 15, of Title 39 of the 1976 Code is amended to read:

"ARTICLE 3

TRADEMARKS AND SERVICE MARKS GENERALLY

Section 39-15-110. Definitions. As used in this article:

(1) 'Trademark' means any word, name, symbol or device or any combination thereof adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others.

(2) 'Service mark' means a mark used in the sale or advertising of services to identify the services of one person and to distinguish them from the services of others.

(3) 'Mark' means any trademark or service mark entitled to registration under this article whether registered or not.

(4) 'Trade name' means a word, name, symbol, device or any combination thereof used by a person to identify his business, vocation or occupation and to distinguish it from the business, vocation or occupation of others.

(5) 'Person' means any individual, firm, partnership, corporation, association, union or other organization.

(6) 'Applicant' means the person filing an application for registration of a mark, his legal representatives, successors or assigns.

(7) 'Registrant' means the person to whom the registration of a mark is issued, his legal representatives, successors or assigns.

For the purposes of this article a mark shall be deemed to be used in this State:

(a) On goods when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto and such goods are sold or otherwise distributed in this State.

(b) On services when it is used or displayed in the sale or advertising of services which are rendered in this State.

Section 39-15-120. Types of marks which shall not be required. A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it:

(1) Contains immoral, deceptive or scandalous matter.

(2) Contains matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute.

(3) Contains the flag or coat of arms or other insignia of the United States or of any state or municipality or of any foreign nation, or any simulation thereof.

(4) Contains the name, signature or portrait of any living individual, except with his written consent.

(5) When applied to the goods or services of an applicant:

(a) Is merely descriptive or deceptively misdescriptive of them.

(b) Is primarily geographically descriptive or deceptively misdescriptive of them.

(c) Is primarily merely a surname, provided, however, a surname used as a signature or identifying mark by an artist upon a work of art may be registered.

Nothing in this item shall prevent the registration of a mark used in this State by an applicant which has become distinctive of an applicant's goods or services. The Secretary of State may accept as evidence that the mark, as applied to the applicant's goods or services, has become distinctive proof of continuous use thereof as a mark by an applicant in this State or elsewhere for the five years preceding the date of the filing of the application for registration. (6) Consists of or comprises a mark which so resembles a mark registered in this State or a mark or trade name previously used in this State by another which is not abandoned as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive.

Section 39-15-130. Filing and contents of application for registration; specimen, fee. Subject to the limitations of this article, any person who adopts and uses a mark in this State may file in the office of the Secretary of State, on a form to be furnished by that office, an application for registration of such mark including, but not limited to, the following information:

(1) The name and business address of the person applying for the registration and, if a corporation, the state of incorporation.

(2) The goods or services with which the mark is used and the mode or manner in which the mark is used with the goods or services and the class in which the goods or services fall.

(3) The date when the mark was first used anywhere and the date when it was first used in this State by the applicant or his predecessor in business.

(4) A statement that the applicant is the owner of the mark and that no other person has the right to use the mark in this State either in its identical form or in such near resemblance thereto as might be calculated to deceive or to be mistaken therefor.

The application shall be signed and verified by the applicant or by a member of the firm or an officer of the corporation or association applying.

The application shall be accompanied by a specimen or facsimile of the mark in triplicate and a filing fee of fifteen dollars payable to the Secretary of State.

Section 39-15-140. Issuance and contents of certificate of registration; admissibility of certificate as evidence. Upon compliance with the requirements of this article the Secretary of State shall issue a certificate of registration to the applicant under his signature and the seal of the State. It shall show the name and business address and, if a corporation, the state of incorporation of the person claiming ownership of the mark, the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in this State, the class of goods or services and a description of the goods or services on which the mark is used, a reproduction of the mark, the registration date and the term of the registration.

Any such certificate of registration or a copy thereof certified by the Secretary of State shall be admissible in evidence as proof of the registration of the mark in any action or judicial proceedings.

Section 39-15-150. Term of registration; renewals and renewal fees. Registration of a mark shall be effective for ten years from the date of registration and, upon application filed within six months prior to the expiration date, on a form to be furnished by the Secretary of State, the registration may be renewed for a like term. A renewal fee of five dollars payable to the Secretary of State shall accompany the application. A mark registered may be renewed for successive periods of ten years in like manner.

The Secretary of State shall notify registrants of the necessity of renewal within the year preceding the expiration date by writing to their last known addresses.

Any registration in force on the date this article takes effect shall expire ten years from the date of the registration or of the last renewal or one year after the effective date of this article, whichever is later, and may be renewed by filing an application with the Secretary of State on a form furnished by him and paying the renewal fee of five dollars within six months prior to the expiration of the registration.

All applications for renewals shall include a statement that the mark is still in use in this State.

The Secretary of State shall within six months after the effective date of this article notify all registrants of marks under previous acts of the date of expiration of such registrations unless renewed in accordance with the provisions of this article, by writing to their last known addresses.

Section 39-15-160. Assignment of registered marks; procedure; fee. Any mark and its registration shall be assignable with the good will of the business in which the mark is used or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignments shall be in writing duly executed and may be recorded with the Secretary of State upon the payment of a fee of three dollars to the Secretary of State who, upon recording the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration.

An assignment of a registration shall be void as against any subsequent purchaser for valuable consideration without notice unless it is recorded with the Secretary of State within three months after its date or prior to such subsequent purchase.

Section 39-15-170. Function of State Development Board in sale of mark advertising contents of food products. Any mark or name used to advertise the chemical or other contents of food products grown in this State or other articles shall not be sold, bartered or exchanged by any person except through and by the State Development Board. The board is entrusted with handling by selling, or otherwise, any mark used for the purpose set forth in this section and may use under its direction any officer of the State for the purpose of handing such mark. Any person violating the provisions of this section shall upon conviction be subject to a fine or imprisonment, in the discretion of the court.

Section 39-15-180. Records of marks shall be public. The Secretary of State shall keep for public examination a record of all registered marks.

Section 39-15-190. Cancellation of registration. The Secretary of State shall cancel from the register:

(1) After one year from the effective date of this article, all registrations which are more than ten years old which have not been renewed.

(2) Any registration for which the Secretary of State receives a voluntary request for cancellation from the registrant or the assignee of record.

(3) All registrations granted under this article which are not renewed.

(4) Any registration concerning which a court of competent jurisdiction finds:

(a) That the registered mark has been abandoned.

(b) That the registrant is not the owner of the mark.

(c) That the registration was granted improperly.

(d) That the registration was obtained fraudulently.

(e) That the registered mark is so similar, as to be likely to cause confusion or mistake or to deceive, to a mark registered by another person in the United States Patent and Trademark Office, prior to the date of the filing of the application for registration by the registrant hereunder, and not abandoned; but, if the registrant proves that he is the owner of a concurrent registration of his mark in the United States Patent and Trademark Office covering an area including this State, the registration shall not be canceled.

(5) A registration ordered canceled by a court of competent jurisdiction on any ground.

Section 39-15-200. C]asses of goods; each application for registration shall be confined to one class. The following general classes of goods and services are established for convenience of administration of this article but not to limit or extend the applicant's or registrant's rights, and a single application for registration of a mark may include any or all goods upon which, or services with which, the mark is actually being used, comprised in a single class, but in no event shall a single application include goods or services upon which the mark is being used which fall within different classes of goods or services. The classes are as follows:

(a) Goods:

(1) Raw or partly prepared materials.

(2) Receptacles.

(3) Baggage, animal equipment, portfolios and pocketbooks.

(4) Abrasives and polishing materials.

(5) Adhesives.

(6) Chemicals and chemical compositions.

(7) Cordage.

(8) Smokers' articles, not including tobacco products.

(9) Explosives, firearms, equipment and projectiles.

(10) Fertilizers.

(11) Inks and inking materials.

(12) Construction materials.

(13) Hardware and plumbing and steam-fitting supplies.

(14) Metals and metal castings and forgings.

(15) Oils and greases.

(16) Paints and painters' materials.

(17) Tobacco products.

(18) Medicines and pharmaceutical preparations.

(19) Vehicles.

(20) Linoleum and oiled cloth.

(21) Electrical apparatus, machines and supplies.

(22) Games, toys and sporting goods.

(23) Cutlery, machinery and tools, and parts thereof.

(24) Laundry appliances and machines.

(25) Locks and safes.

(26) Measuring and scientific appliances.

(27) Horological instruments.

(28) Jewelry and precious metalware.

(29) Brooms, brushes and dusters.

(30) Crockery, earthenware and porcelain.

(31) Filters and refrigerators.

(32) Furniture and upholstery.

(33) Glassware.

(34) Heating, lighting and ventilating apparatus.

(35) Belting, hose, machinery packing and nonmetallic tires.

(36) Musical instruments and supplies.

(37) Paper and stationery.

(38) Prints and publications.

(39) Clothing.

(40) Fancy goods, furnishings and notions.

(41) Canes, parasols and umbrellas.

(42) Knitted, netted and textile fabrics, and substitutes therefor.

(43) Thread and yarn.

(44) Dental, medical and surgical appliances.

(45) Soft drinks and carbonated waters.

(46) Foods and ingredients of foods.

(47) Wines.

(48) Malt beverages and liquors.

(49) Distilled alcoholic liquors.

(50) Merchandise not otherwise classified.

(51) Cosmetics and toilet preparations.

(52) Detergents and soaps.

(b) Services:

(100) Miscellaneous.

(101) Advertising and business.

(102) Insurance and financial.

(103) Construction and repair.

(104) Communications.

(105) Transportation and storage.

(106) Material treatment.

(107) Education and entertainment.

Section 39-15-210. Civil liability for fraudulent registration. Any person who files for or obtains a registration for himself or on behalf of any other person by knowingly making any false or fraudulent representation or declaration, verbally or in writing, or by any other fraudulent means, shall be liable to pay all damages sustained inconsequence of such filing or registration, to be recovered by or on behalf of the injured party in any court of competent jurisdiction.

Section 39-15-220. Civil liability for certain uses of imitation of registered mark. Subject to the provisions of Section 39-15-240, any person who shall:

(1) Use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark in connection with the sale, offering for sale or advertising of any goods or services on or in connection with which use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or

(2) Reproduce, counterfeit, copy or colorably imitate any such mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in conjunction with the sale or other distribution in this State of such goods or services; shall be liable to a civil action by the owner of such registered mark for any or all of the remedies provided in Section 39-15-230, except that under item (2) the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that the mark is intended to be used to cause confusion or mistake or to deceive.

Section 39-15-230. Injunction and recovery of profits and damages for manufacture, use, display or sale of imitations. Any owner of a mark may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as may be by the court deemed just and reasonable and may require the defendants to pay to the owner all profits derived therefrom and all damages suffered by reason of such wrongful manufacture, use, display or sale. The court may also order that any such counterfeits or imitations in the possession or under the control of any defendant in the case be delivered to an officer of the court or to the complainant to be destroyed.

The enumeration of any right or remedy herein shall not affect a registrant's right to prosecute under any penal law of this State.

Section 39-15-240. Common law rights not affected by article. Nothing in this article shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law."

Not to affect pending actions

SECTION 2. Any legal actions pending prior to the effective date of this act shall not be affected or abated by the provisions of this act.

Analysis lines

Section 3. The analysis lines in the code sections in this act are not intended as part of the sections but are only for purposes of identification.

Time effective

Section 4. This act shall take effect upon approval by the Governor.