Current Status Introducing Body:
HouseBill Number: 3812Ratification Number: 573Act Number: 486Primary Sponsor: T.C. AlexanderType of Legislation: GBSubject: Trademarks and Service Marks Act of 1993Companion Bill Number: 453Date Bill Passed both Bodies: 19940601Computer Document Number: 436/11091AC.93Governor's Action: SDate of Governor's Action: 19940713Introduced Date: 19930331Date of Last Amendment: 19940428Last History Body: ------Last History Date: 19940713Last History Type: Act No. 486Scope of Legislation: StatewideAll Sponsors: T.C. Alexander M.O. Alexander G. Bailey J. Bailey Cato Gamble Harvin McLeod Neilson Richardson Robinson Simrill R. Smith Vaughn Whipper Gonzales Wright HarrisonType of Legislation: General Bill
Bill Body Date Action Description CMN Leg Involved ---- ------ ------------ ------------------------------ --- ------------ 3812 ------ 19940713 Act No. 486 3812 ------ 19940713 Signed by Governor 3812 ------ 19940602 Ratified R 573 3812 House 19940601 Concurred in Senate amendment, enrolled for ratification 3812 Senate 19940526 Read third time, returned to House with amendment 3812 Senate 19940524 Made Special Order 3812 Senate 19940428 Amended, read second time 3812 Senate 19940426 Made Special Order 3812 Senate 19940330 Committee Report: Favorable 11 3812 Senate 19930517 Introduced, read first time, 11 referred to Committee 3812 House 19930514 Read third time, sent to Senate 3812 House 19930513 Read second time, unanimous consent for third reading on Friday, May 14, 1993 3812 House 19930505 Committee Report: Favorable 26 3812 House 19930331 Introduced, read first time, 26 referred to CommitteeView additional legislative information at the LPITS web site.
(A486, R573, H3812)
AN ACT TO AMEND TITLE 39, CHAPTER 15, CODE OF LAWS OF SOUTH CAROLINA, 1976, RELATING TO LABELS AND TRADEMARKS, SO AS TO ENACT THE "TRADEMARKS AND SERVICE MARKS ACT OF 1993" BY ADDING ARTICLE 11 TO INCLUDE REGISTRATION PROCEDURES, FEES, AND CIVIL AND CRIMINAL PENALTIES; TO AMEND SECTION 39-15-720, RELATING TO USE OF TRADEMARKS ON TIMBER, SO AS TO CONFORM A REFERENCE TO THIS ACT; AND TO REPEAL ARTICLE 3, CHAPTER 15, TITLE 39 RELATING TO TRADEMARKS AND SERVICE MARKS.
Be it enacted by the General Assembly of the State of South Carolina:
Trademark and Services Marks Act
SECTION 1. Title 39, Chapter 15 of the 1976 Code is amended by adding:
Section 39-15-1105. As used in this article:
(1) `Applicant' means the person filing an application for registration of a mark under this article and the legal representatives, successors, or assigns of that person.
(2) `Dilution' means the lessening of the capacity of a registrant's mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the parties or the likelihood of confusion, mistake, or deception.
(3) `Mark' includes a trademark or service mark entitled to registration under this article whether registered or not.
(4) `Person' and any other word or term used to designate the applicant or other party entitled to a benefit or privilege or rendered liable under the provisions of this article includes a juristic person, as well as a natural person. The term `juristic person' includes a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.
(5) `Registrant' means the person to whom the registration of a mark under this article is issued and the legal representatives, successors, or assigns of that person.
(6) `Secretary' means the Secretary of State or the designee of the secretary charged with the administration of this article.
(7) `Service mark' means a word, name, symbol, or device or any combination of these used by a person to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names used by a person, and other distinctive features of radio or television programs, motion pictures, newspapers, or magazines may be registered as service marks notwithstanding that they or the programs, may advertise the goods of the sponsor.
(8) `Trade name' means a name used by a person to identify a business or vocation of that person.
(9) `Trademark' means a word, name, symbol, or device or any combination of these used by a person to identify and distinguish the goods of that person, including a unique product, from those manufactured and sold by others and to indicate the source of the goods, even if that source is unknown.
(10) `Use' means the bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark. For the purposes of this article, a mark is considered in use:
(a) on goods when it is placed in any manner on the:
(i) goods or other containers or the displays associated with the goods or containers;
(ii) tags or labels affixed to the goods or containers; or
(iii) if the nature of the goods makes placement impracticable, then on documents associated with the goods or other sale and the goods are sold or transported in commerce in this State; and
(b) on services when it is used or displayed in the sale or advertising of services and the services are rendered in this State. For purposes of this article, a mark is considered `abandoned' when:
(i) its use has been discontinued with intent not to resume that use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years constitutes prima facie evidence of abandonment; or
(ii) a course of conduct of the owner, including acts of omission as well as commission, causes the mark to lose its significance as a mark.
Section 39-15-1110. (A) A mark by which the goods or services of an applicant for registration may be distinguished from the goods or services of others may not be registered if the mark:
(1) consists of or includes immoral, deceptive, or scandalous matter;
(2) consists of or includes matter which may disparage or falsely suggest a connection with or bring into contempt or disrepute a person, living or dead, an institution, belief, or national symbol;
(3) consists of or includes the flag or coat of arms or other insignia of the United States, a state or municipality, or a foreign nation or a simulation of the flag, coat of arms, or other insignia of any of these;
(4) consists of or includes the name, signature, or portrait identifying a particular living individual, except by the individual's written consent;
(5) consists of a mark which:
(a) when used on or in connection with the goods or services of the applicant is merely descriptive or deceptively misdescriptive of them;
(b) when used on or in connection with the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them; or
(c) is primarily merely a proper name or surname;
(6) consists of or includes a mark which so resembles a mark registered in this State or a mark or trade name previously used by another and not abandoned as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive.
(B) However, nothing in subsection (A)(5) prevents the registration of a mark used by the applicant which has become distinctive of the applicant's goods or services. The secretary may accept as evidence that the mark has become distinctive, as used on or in connection with the applicant's goods or services, by proof of continuous use as a mark by the applicant in this State for the five years before the date on which the claim of distinctiveness is made.
Section 39-15-1115. (A) Subject to the limitations set forth in this article, a person who uses a mark may file in the office of the secretary, in a manner complying with the requirements of the secretary, an application for registration of that mark setting forth, but not limited to, this information:
(1) the name and business address of the person applying for the registration; and if a corporation, the state of incorporation or if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary;
(2) the goods or services on or in connection with which the mark is used, the mode or manner in which the mark is used on or in connection with these goods or services, and the class in which these 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 a predecessor in interest;
(4) a statement that the applicant is the owner of the mark, that the mark is in use, and that to the knowledge of the person verifying the application no other person has registered either federally or in this State, or has the right to use this mark in its identical form or in near resemblance as to be likely, when applied to the goods or services of another person, to cause confusion or to cause mistake or to deceive.
(B) The secretary may also require a statement whether an application to register the mark or portions or a composite of the mark has been filed by the applicant or a predecessor in interest in the United States Patent and Trademark Office; and if so, the applicant shall provide full particulars including the filing date and serial number of each application, the status of the application, and if an application was finally refused registration or has otherwise not resulted in a registration, the reasons for this.
(C) The secretary also may require that a drawing of the mark, complying with requirements as the secretary may specify, accompany the application.
(D) The application must be signed and verified by oath, affirmation, or declaration subject to perjury laws by the applicant or by a member of the firm or an officer of the corporation or association applying.
(E) The application must be accompanied by three specimens showing the mark as actually used and accompanied by the application fee payable to the Secretary of State.
Section 39-15-1120. (A) Upon the filing of an application for registration and payment of the application fee, the secretary may examine the application for conformity with this article.
(B) The applicant shall provide additional pertinent information requested by the secretary including a description of a design mark and may make or authorize the secretary to make amendments to the application as may be reasonably requested by the secretary or considered by the applicant to be advisable to respond to a rejection or objection.
(C) The secretary may require the applicant to disclaim an unregisterable component of a mark otherwise registerable, and an applicant may voluntarily disclaim a component of a mark sought to be registered. No disclaimer may prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter or the applicant's or registrant's rights of registration on another application if the disclaimed matter is or becomes distinctive of the applicant's or registrant's goods or services.
(D) Amendments may be made by the secretary to the application submitted by the applicant with the applicant's consent, or the secretary may require that the applicant submit a fresh application.
(E) If the applicant is found not to be entitled to registration, the secretary shall notify the applicant of this and of the reasons registration was denied. The applicant must be given a reasonable period of time specified by the secretary in which to reply or to amend the application, after which the application must be reexamined. This procedure may be repeated until the secretary finally refuses registration of the mark or the applicant fails to reply or amend within the specified period, at which time the application is deemed to have been abandoned.
(F) If the secretary finally refuses registration of the mark, the applicant may appeal the decision to the circuit court in Richland County in accordance with the Administrative Procedures Act without costs to the secretary.
(G) In the instance of applications concurrently being processed by the secretary seeking registration of the same or confusingly similar marks for the same or related goods or services, the secretary shall grant priority to the applications in order of filing. If a prior-filed application is granted a registration, the other application or applications must be rejected. A rejected applicant may bring an action for cancellation of the registration upon grounds of prior or superior rights to the mark in accordance with Section 39-15-1145 of this article.
Section 39-15-1125. (A) Upon compliance by the applicant with the requirements of this article, the secretary shall issue a certificate of registration to the applicant under the signature of the secretary and the seal of the State. The certificate shall show the name and business address and if a corporation, the state of incorporation or if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary, of the person claiming ownership of the mark, the date claimed for the first use of the mark anywhere, the date claimed for the first use of the mark in this State, the class of goods or services, a description of the goods or services on or in connection with which the mark is used, a reproduction of the mark, the registration date, and the term of the registration.
(B) A certificate of registration issued by the secretary under this section or a copy of a certificate certified by the secretary is admissible in evidence as competent and sufficient proof of the registration of the mark in an action or judicial proceeding in any court of this State.
Section 39-15-1130. (A) A registration of a mark is effective for five years from the date of registration, and upon application filed within six months before the expiration of the registration in a manner complying with the requirements of the secretary, the registration may be renewed for five years. A renewal fee payable to the secretary shall accompany the application for renewal of the registration. A registration may be renewed for successive periods of five years as provided for in this subsection.
(B) An application for renewal under this article, whether of a registration made under this article or of a registration effected under any prior law, shall include a verified statement that the mark has been and is still in use and a specimen showing actual use of the mark on or in connection with the goods or services.
Section 39-15-1135. (A) A mark and its registration under this article is 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. Assignment is by instruments in writing properly executed and may be recorded with the secretary upon the payment of the recording fee payable to the secretary who upon recording of the assignment shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal of the registration. An assignment of a registration under this article is void against a subsequent purchaser for valuable consideration without notice, unless it is recorded with the secretary within three months after the date of the assignment or before the subsequent purchase.
(B) A registrant or applicant effecting a change of the name of the person to whom the mark was issued or for whom an application was filed may record a certificate of change of name of the registrant or applicant with the secretary upon payment of the recording fee. The secretary may issue in the name of the assignee a certificate of registration of an assigned application. The secretary may issue in the name of the assignee a new certificate or registration for the remainder of the term of the registration or last renewal of the registration.
(C) Other instruments which relate to a mark registered or application pending pursuant to this article including, but not limited to, licenses, security interests, or mortgages, may be recorded in the discretion of the secretary if the instrument is in writing and properly executed.
(D) Acknowledgement is prima facie evidence of the execution of an assignment or other instrument, and when recorded by the secretary, the record is prima facie evidence of execution.
(E) A photocopy of an instrument referred to in subsections (A), (B), or (C) must be accepted for recording if it is certified to be a true and correct copy of the original by a party to the instrument or their successors.
Section 39-15-1140. The secretary shall keep for public examination a record of all marks registered or renewed under this article and a record of all documents recorded pursuant to Section 39-15-1135.
Section 39-15-1145. The secretary shall cancel from the register, in whole or in part:
(1) a registration concerning which the secretary receives a voluntary request for cancellation of it from the registrant or the assignee of record;
(2) a registration granted under this article and not renewed in accordance with this article;
(3) a registration concerning which a court of competent jurisdiction finds that the:
(a) registered mark has been abandoned;
(b) registrant is not the owner of the mark;
(c) registration was granted improperly;
(d) registration was obtained fraudulently;
(e) mark is or has become the generic name for the goods or services or a portion of the goods or services for which it has been registered;
(f) 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 before the date of the filing of the application for registration by the registrant under this article, and not abandoned; however, if the registrant proves that the registrant is the owner of a concurrent registration of a mark in the United States Patent and Trademark Office covering an area including this State, the registration under this article may not be canceled for that area of the State; or
(4) a registration when a court of competent jurisdiction orders cancellation of the registration on any ground.
Section 39-15-1150. (A) The general classification of goods and services provided for in subsections (B) and (C) are established for convenience of administration of this article but does not limit or extend the applicant's or registrant's rights, and a single application for registration of a mark may include goods upon which or services with which the mark is actually being used indicating the appropriate class or classes of goods or services. When a single application includes goods or services which fall within multiple classes, the secretary may require payment of a fee for each class. To the extent practical the classification of goods and services shall conform to the classification adopted by the United States Patent and Trademark Office.
(B) The following is the international schedule of classes of goods:
(1) chemical products used in industry, science, photography, agriculture, horticulture, forestry; artificial and synthetic resins; plastics in the form of powders, liquids, or pastes for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs, tanning substances, adhesive substances used in industry;
(2) paints, varnishes, lacquers; preservatives against rust and against deterioration of wood, coloring matters, dyestuffs, mordants, natural resins; metals in foil and powder form for painters and decorators;
(3) bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices;
(4) industrial oils and greases (other than oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, night lights, and wicks;
(5) pharmaceutical, veterinary, and sanitary substances; infants' and invalids' foods; plasters, material for bandaging; material for stopping teeth, dental wax, disinfectants; preparations for killing weeds and destroying vermin;
(6) unwrought and partly wrought common metals and their alloys, anchors, anvils, bells, rolled and cast building materials, rails and other metallic materials for railway tracks, chains (except driving chains for vehicles), cables and wires (nonelectric), locksmiths' work; metallic pipes and tubes; safes and cash boxes, steel balls; horseshoes; nails and screws; other goods in nonprecious metal not included in other classes; ores;
(7) machines and machine tolls; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators;
(8) hand tools and instruments; cutlery, forks, and spoons; side arms;
(9) scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counterfreed apparatus; talking machines; cash registers; calculating machines; fire extinguishing apparatus;
(10) surgical, medical, dental, and veterinary instruments and apparatus (including artificial limbs, eyes and teeth);
(11) installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes;
(12) vehicles; apparatus for locomotion by land, air, or water;
(13) firearms; ammunition and projectiles; explosive substances; fireworks;
(14) precious metals and their alloys and goods in precious metals or coated therewith (except cutlery, forks, and spoons); jewelry, precious stones, horological and other chronometric instruments;
(15) musical instruments (other than talking machines and wireless apparatus);
(16) paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding material; photographs; stationery, adhesive materials (stationery); artists' materials; paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; printers' type and cliches (stereotype);
(17) gutta percha, india rubber, balata and substitutes, articles made from these substances and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacture, materials for packing, stopping, or insulating; asbestos, mica and their products; hose pipes (nonmetallic);
(18) leather and imitations of leather, and articles made from these materials and not included in other classes; skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery;
(19) building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; roadmaking materials; asphalt, pitch and bitumen, portable buildings; stone monuments; chimney pots;
(20) furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these materials, or of plastics;
(21) small domestic utensils and containers (not of precious metals, or coated therewith); combs and sponges, brushes (other than paint brushes); brushmaking materials, instruments and material for cleaning purposes, steel wool; unworked or semi-worked glass (excluding glass used in building); glassware, porcelain and earthenware, not included in other classes;
(22) ropes, string, nets, tents, awnings, tarpaulins, sails, sacks, padding and stuffing materials (hair, kapok, feathers, seaweed, etc.); raw fibrous textile materials;
(23) yarns, threads;
(24) tissues (piece goods); bed and table covers; textile articles not included in other classes;
(25) clothing (including boots, shoes, and slippers);
(26) lace and embroidery, ribands, and braid; buttons, press buttons, hooks and dyes, pins and needles; artificial flowers;
(27) carpets, rugs, mats, and matting; linoleum and other materials for covering existing floors; wall hangings (nontextile); (28) games and playthings; gymnastic and sporting articles (except clothing); ornaments and decorations for Christmas trees;
(29) meats, fish, poultry, and game; meat extracts; preserved, dried, and cooked fruits and vegetables; jellies, jams; eggs, milk, and other dairy products; edible oils and fats; preserves, pickles;
(30) coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals; bread, biscuits, cakes, pastry, and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard, pepper, vinegar, sauces, spices; ice;
(31) agricultural, horticultural, and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt;
(32) beer, ale, and porter; mineral and aerated waters and other nonalcoholic drinks; syrups and other preparations for making beverages;
(33) wines, spirits, and liqueurs;
(34) tobacco, raw, or manufactures; smokers' articles; matches.
(C) The following is the international schedule of classes of services:
(1) advertising and business;
(2) insurance and financial;
(3) construction and repair;
(5) transportation and storage;
(6) material treatment;
(7) education and entertainment;
Section 39-15-1155. A person who procures or who on behalf of another person procures the filing or registration of a mark in the office of the secretary under the provisions of this article by knowingly making a false or fraudulent representation or declaration orally, in writing, or by any other fraudulent means is liable to pay all damages sustained in consequence of the filing or registration to be recovered in a court of competent jurisdiction by or on behalf of the party injured.
Section 39-15-1160. (A) Subject to Section 39-15-1180 and subsection (B) of this section, a person is liable in a civil action by the registrant for the remedies provided in Section 39-15-1170 if the person:
(1) uses without the consent of the registrant a reproduction, counterfeit, copy, or colorable imitation of a mark registered under this article in connection with the sale, distribution, offering for sale, or advertising of goods or services on or in connection with which this use is likely to cause confusion or mistake or to deceive as to the source of origin of these goods or services; or
(2) reproduces, counterfeits, copies, or colorably imitates a mark and applies the reproduction, counterfeit, copy, or colorable imitation to a label, sign, print, package wrapper, receptacle, or advertisement intended to be used on or in connection with the sale or other distribution in this State of these goods or services.
(B) Notwithstanding subsection (A) a person liable under subsection (A)(2) is not entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion or mistake or to deceive.
Section 39-15-1165. (A) The owner of a mark which is famous in this State is entitled, subject to the principles of equity, to an injunction against another's use of a mark commencing after the registrant's mark becomes famous which causes dilution of the distinctive quality of the registrant's mark and to obtain other relief as is provided in this section. In determining whether a mark is famous, a court may consider, but is not limited to considering, these factors:
(1) the degree of inherent or acquired distinctiveness of the mark in this State;
(2) the duration and extent of use of the mark in connection with the goods and services;
(3) the duration and extent of advertising and publicity of the mark in this State;
(4) the geographical extent of the trading area in which the mark is used;
(5) the channels of trade for the goods or services with which the registrant's mark is used;
(6) the degree of recognition of the registrant's mark in its and in the other's trading areas and channels of trade in this State; and
(7) the nature and extent of use of the same or similar mark by third parties.
(B) The registrant is entitled only to injunctive relief in this State in an action brought under this section unless the subsequent user wilfully intended to trade on the registrant's reputation or to cause dilution of the owner's mark. If wilful intent is proven, the owner is entitled to the remedies set forth in this article, subject to the discretion of the court and the principles of equity.
Section 39-15-1170. (A) An owner of a mark registered under this article may bring an action to enjoin the manufacture, use, display, or sale of a counterfeit or imitation of the registered mark, and a court of competent jurisdiction may grant an injunction to restrain the manufacture, use, display, or sale as the court considers just and reasonable and may require a defendant to pay the owner profits derived from or damages suffered due to the wrongful manufacture, use, display, or sale or to pay both profits and damages. The court also may order that the counterfeit or imitation in the possession or under the control of a defendant be delivered to an officer of the court or to the complainant to be destroyed. The court in its discretion may enter judgment for an amount not to exceed three times the profits and damages or reasonable attorneys' fees of the prevailing party, or both, in cases where the court finds the other party committed the wrongful acts with knowledge or in bad faith or otherwise according to the circumstances of the case.
(B) The enumeration of a right or remedy in this article does not affect a registrant's right to prosecute under any penal law of this State.
Section 39-15-1175. (A) An action to require cancellation of a mark registered pursuant to this article or an appeal from a refusal of the secretary to register a mark pursuant to this article must be brought in the circuit court. In an appeal the proceeding must be based solely upon the record before the secretary. In an action for cancellation the secretary may not be made a party to the proceeding but must be notified of the filing of the complaint by the clerk of the court in the county in which it is filed and must be given the right to intervene in the action.
(B) In an action brought against a nonresident registrant, service may be effected upon the secretary as agent for service of the registrant in accordance with the procedures established for service upon nonresident corporations and business entities under the Rules of Civil Procedure.
Section 39-15-1180. Nothing in this article may adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.
Section 39-15-1185. The secretary shall charge a fee of fifteen dollars for an original application, a fee of five dollars for a renewal application, and a fee of three dollars for recording an assignment. The fees payable under this article are not refundable.
Section 39-15-1190. (A) Whoever intentionally traffics or attempts to traffic in goods or services and knowingly uses or should have known a counterfeit mark on or in connection with such goods or services shall be deemed guilty of a misdemeanor, if an individual, be fined not more than five thousand dollars or imprisoned not more than one year, or both, and, if a person other than an individual, be fined not more than twenty thousand dollars.
(B) The term `counterfeit mark' in this section means:
(1) a spurious mark:
(a) that is used in connection with trafficking goods or services;
(b) that is identical with, or substantially indistinguishable from, a mark registered for those goods or services with the Secretary of State under this chapter and in use, whether or not the defendant knew such mark was so registered; and
(c) the use of which is likely to cause confusion, to cause mistake, or to deceive.
(2) `Counterfeit mark' does not include any mark or designation used in connection with goods or services of which the manufacturer or producer was, at the time of the manufacture or production in question, authorized to use the mark for designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation.
(C) `Traffic' means transport, transfer, or otherwise dispose of, to another, as consideration for anything of value, or make or obtain control of with intent so to transport, transfer, or dispose of."
Timber trademark registration constitutes a "brand"
SECTION 2. Section 39-15-720 of the 1976 Code is amended to read:
"Section 39-15-720. A person who has adopted or used a label, trademark, term, design, or device and has obtained a registration for it pursuant to Article 11 of this chapter may use it to mark and identify timber and when the label, trademark, term, design, or device is stamped, impressed, or indented on timber it constitutes a `brand' within the meaning of this article and is notice to the world that the owner of the brand is the owner of or has some property right or interest in the timber or lien on the timber, as set forth in this article."
Grandparenting of current trademark registration
SECTION 3. A registration in force on this article's effective date continues in full force and effect for the unexpired term of the registration and may be renewed by filing an application for renewal with the secretary complying with the requirements of the secretary and paying the renewal fee as provided for in Section 39-15-1130(A) within six months before the expiration of the registration.
Consistency with federal trademark law intended
SECTION 4. The intent of this act is to provide a system of state trademark registration and protection 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 the federal act should be examined as persuasive authority for interpreting and construing this act.
Article repealed; exception
SECTION 5. Article 3, Chapter 15, Title 39 of the 1976 Code is repealed; however, Article 3 is deemed not repealed and is applicable to a pending application, suit, proceeding, or appeal for that purpose only until the application, suit, proceeding, or appeal is finally concluded.
SECTION 6. This act takes effect three months after approval by the Governor but is not applicable to an application, suit, proceeding, or appeal then pending for that purpose only.
Approved the 13th day of July, 1994.