Senate Bill sb0678

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    Florida Senate - 2005                                   SB 678

    By Senator Campbell





    32-739-05                                               See HB

  1                      A bill to be entitled

  2         An act relating to trademarks; creating s.

  3         495.001, F.S.; providing a popular name;

  4         amending s. 495.011, F.S.; providing

  5         definitions; amending s. 495.021, F.S.;

  6         precluding registration of certain marks;

  7         amending s. 495.027, F.S.; conforming

  8         provisions; amending s. 495.031, F.S.;

  9         providing requirements for information to be

10         contained in an application for registration of

11         a mark; authorizing the Secretary of State to

12         require certain information in an application;

13         requiring the application to be signed and

14         verified by oath; requiring the application to

15         be accompanied by three specimens showing the

16         mark; requiring the application to be

17         accompanied by a fee; creating s. 495.035,

18         F.S.; providing filing guidelines for

19         applications; amending s. 495.061, F.S.;

20         providing for the issuance of a certificate of

21         registration by the secretary; amending s.

22         495.071, F.S.; providing guidelines for the

23         renewal of marks; providing duration of

24         effectiveness for the mark; amending s.

25         495.081, F.S.; providing for the assignability

26         of marks; providing for change of name

27         certificates for registrants; authorizing

28         certain instruments to be recorded; providing

29         acknowledgment of recording as prima facie

30         evidence of the execution of an assignment or

31         other instrument; authorizing a photocopy of

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         any instrument to be acceptable for recording;

 2         amending s. 495.091, F.S.; requiring the

 3         secretary to record all marks registered with

 4         the state; amending s. 495.101, F.S.; requiring

 5         the secretary to cancel certain marks; amending

 6         s. 495.111; F.S., requiring the secretary to

 7         establish a classification of goods and

 8         services; amending s. 495.121, F.S.; conforming

 9         provisions; amending s. 495.131, F.S.;

10         conforming provisions; amending s. 495.141,

11         F.S.; providing remedies for the unauthorized

12         use of a mark; removing provisions regarding

13         the assessment of plaintiff's profits; creating

14         s. 495.145, F.S.; providing a forum for actions

15         regarding registration; providing service on

16         out-of-state residents; amending s. 495.151,

17         F.S.; providing for an injunction in cases of

18         dilution of a famous mark; providing factors to

19         consider in determining a mark to be famous;

20         providing damages in certain circumstances of

21         dilution; amending s. 495.161, F.S.; deleting

22         provisions relating to the diminishing of

23         certain common-law rights; creating s. 495.165,

24         F.S.; requiring the secretary to prescribe

25         certain fees; amending s. 495.171, F.S.;

26         providing application and legislative intent;

27         providing for severability; providing an

28         effective date.

29  

30  Be It Enacted by the Legislature of the State of Florida:

31  

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         Section 1.  Section 495.001, Florida Statutes, is

 2  created to read:

 3         495.001  Popular name.--This chapter may be cited as

 4  the "Registration and Protection of Trademarks Act."

 5         Section 2.  Section 495.011, Florida Statutes, is

 6  amended to read:

 7         (Substantial rewording of section. See

 8         s. 495.011, F.S., for present text.)

 9         495.011  Definitions.--As used in this chapter:

10         (1)  "Abandoned" applies to a mark when either of the

11  following occurs:

12         (a)  When its use has been discontinued with intent not

13  to resume such use. Intent not to resume use may be inferred

14  from circumstances. Nonuse for 2 consecutive years shall

15  constitute prima facie evidence of abandonment.

16         (b)  When any course of conduct of the owner, including

17  acts of either omission or commission, causes the mark to lose

18  its significance as a mark.

19         (2)  "Applicant" means the person filing an application

20  for registration of a mark under this chapter and the legal

21  representatives, successors, or assigns of such person.

22         (3)  "Dilution" means the lessening of the capacity of

23  a mark to identify and distinguish goods or services,

24  regardless of the presence or absence of:

25         (a)  Competition between the owner of the mark and

26  other parties.

27         (b)  Likelihood of confusion, mistake, or deception.

28         (4)  "Mark" includes any trademark or service mark

29  entitled to registration under this chapter whether or not

30  registered.

31  

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         (5)  "Person," and any other word or term used to

 2  designate the applicant or other party entitled to a benefit

 3  or privilege or rendered liable under the provisions of this

 4  chapter, means a juristic person as well as a natural person.

 5  The term "juristic person" includes a firm, partnership,

 6  corporation, union, association, or other organization capable

 7  of suing and being sued in a court of law.

 8         (6)  "Registrant" means the person to whom the

 9  registration of a mark under this chapter is issued, and the

10  legal representatives, successors, or assigns of such person.

11         (7)  "Secretary" means the Secretary of State or the

12  designee of the secretary charged with the administration of

13  this chapter.

14         (8)  "Service mark" means any word, name, symbol,

15  device, or any combination thereof, used by a person to

16  identify and distinguish the services of such person,

17  including a unique service, from the services of others, and

18  to indicate the source of the services, even if that source is

19  unknown. Distinctive features of radio or television programs,

20  including, but not limited to, titles and character names used

21  by a person, may be registered as service marks

22  notwithstanding that the person or the programs may advertise

23  the goods of the sponsor.

24         (9)  "Trademark" means any word, name, symbol, device,

25  or any combination thereof, used by a person to identify and

26  distinguish the goods of such person, including a unique

27  product, from those manufactured or sold by others, and to

28  indicate the source of the goods, even if that source is

29  unknown.

30         (10)  "Trade name" means any name used by a person to

31  identify a business or vocation of such person.

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         (11)  "Use" means the bona fide use of a mark in the

 2  ordinary course of trade, and does not include the use of a

 3  trademark or service mark merely for the purpose of reserving

 4  a right in the trademark or service mark. For the purposes of

 5  this chapter, a mark shall be deemed to be in use when it is

 6  placed on goods, their containers or the displays associated

 7  therewith, on the tags or labels affixed thereto, or, if the

 8  nature of the goods makes such placement impracticable, then

 9  on documents associated with the goods or their sale, and such

10  goods are sold or transported in commerce in this state, and a

11  service mark shall be deemed to be "used" when it is used or

12  displayed in the sale or advertising of services and the

13  services are rendered in this state.

14         Section 3.  Section 495.021, Florida Statutes, is

15  amended to read:

16         495.021  Registrability.--

17         (1)  A mark by which the goods or services of any

18  applicant for registration may be distinguished from the goods

19  or services of others shall not be registered if it:

20         (1)(a)  Consists of or, comprises or includes immoral,

21  deceptive or scandalous matter; or

22         (2)(b)  Consists of or, comprises or includes matter

23  which may disparage or falsely suggest a connection with

24  persons, living or dead, institutions, beliefs, or national

25  symbols, or bring them into contempt, or disrepute; or

26         (3)(c)  Consists of or, comprises or includes the flag

27  or coat of arms or other insignia of the United States, or of

28  any state or municipality, or of any foreign nation, or any

29  simulation thereof; or

30  

31  

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         (4)(d)  Consists of or, comprises or includes the name,

 2  signature, or portrait of any living individual, except with

 3  her or his written consent; or

 4         (5)(e)  Consists of a mark which:

 5         (a)1.  When used on or in connection with applied to

 6  the goods or services of the applicant is merely descriptive

 7  or deceptively misdescriptive of them,

 8         (b)2.  When used on or in connection with applied to

 9  the goods or services of the applicant is primarily

10  geographically descriptive or deceptively misdescriptive of

11  them or their source or origin, or

12         (c)3.  Is primarily merely a surname, provided,

13  however, that nothing in this subsection paragraph shall

14  prevent the registration of a mark used in this state by the

15  applicant which has become distinctive of the applicant's

16  goods or services in this state or elsewhere.

17  

18  The secretary Department of State may accept as evidence that

19  the mark has become distinctive, as used on or in connection

20  with applied to the applicant's goods or services, proof of

21  substantially exclusive and continuous use thereof as a mark

22  by the applicant in this state or elsewhere for 5 years next

23  preceding the date on which the claim of distinctiveness is

24  made; or

25         (6)(f)  Consists of or comprises a mark which so

26  resembles a mark registered in this state or a mark or trade

27  name previously used in this state by another and not

28  abandoned, as to be likely, when used on or in connection with

29  applied to the goods or services of the applicant, to cause

30  confusion or mistake or to deceive. Registration shall not be

31  denied solely on the basis of reservation or registration by

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  another of a corporate name or fictitious name that is the

 2  same or similar to the mark for which registration is sought.

 3         (2)  Subject to the provisions relating to the

 4  registration of trademarks and service marks, so far as they

 5  are applicable, collective and certification marks, including

 6  indications of regional origin, shall be registrable under

 7  this chapter, in the same manner and with the same effect as

 8  are trademarks and service marks, by persons, and nations,

 9  states, municipalities, and the like, exercising control over

10  the use of the marks sought to be registered, even though not

11  possessing an industrial or commercial establishment, and when

12  registered they shall be entitled to the protection provided

13  in this chapter in the case of trademarks and service marks.

14  The Department of State may establish a separate register for

15  such collective marks and certification marks.

16         Section 4.  Subsection (3) of section 495.027, Florida

17  Statutes, is amended to read:

18         495.027  Reservation.--

19         (3)  Every request under this section shall be

20  accompanied by a filing fee of $50, payable to the Department

21  of State, for each class of goods or services established

22  pursuant to as specified in s. 495.111, in connection with

23  which the mark is to be used.

24         Section 5.  Section 495.031, Florida Statutes, is

25  amended to read:

26         (Substantial rewording of section. See

27         s. 495.031, F.S., for present text.)

28         495.031  Application for registration.--

29         (1)  Subject to the limitations set forth in this

30  chapter, any person who uses a mark may file in the office of

31  the secretary, in a manner complying with the requirements of

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  the secretary, an application for registration of that mark,

 2  including, but not limited to, the following information:

 3         (a)  The name and business address of the person

 4  applying for such registration and, if a corporation, the

 5  state of incorporation or, if a partnership, the state in

 6  which the partnership is organized and the names of the

 7  general partners, as specified by the secretary.

 8         (b)  The goods or services on or in connection with

 9  which the mark is used and the mode or manner in which the

10  mark is used on or in connection with such goods or services

11  and the class in which such goods or services fall.

12         (c)  The date when the mark was first used anywhere and

13  the date when it was first used in this state by the applicant

14  or a predecessor in interest.

15         (d)  A statement that the applicant is the owner of the

16  mark, that the mark is in use, and that, to the knowledge of

17  the person verifying the application, no other person has

18  registered, either federally or in this state, or has the

19  right to use such mark either in the identical form thereof or

20  in such near resemblance thereto as to be likely, when applied

21  to the goods or services of such other person, to cause

22  confusion, to cause mistake, or to deceive.

23         (2)  The secretary may also require a statement as to

24  whether an application to register the mark, or portions or a

25  composite thereof, has been filed by the applicant or a

26  predecessor in interest in the United States Patent and

27  Trademark Office and, if so, the applicant shall provide full

28  particulars with respect thereto, including the filing date

29  and serial number of each application, the status thereof,

30  and, if any application was finally refused registration or

31  

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  has otherwise not resulted in a registration, the reasons

 2  therefore.

 3         (3)  The secretary may also require that a drawing of

 4  the mark, complying with such requirements as the secretary

 5  may specify, accompany the application.

 6         (4)  The application shall be signed and verified by

 7  oath, affirmation, or declaration subject to perjury laws, by

 8  the applicant, a member of the firm, or an officer of the

 9  corporation or association applying.

10         (5)  The application shall be accompanied by three

11  specimens showing the mark as actually used.

12         (6)  The application shall be accompanied by the

13  application fee payable to the secretary.

14         Section 6.  Section 495.035, Florida Statutes, is

15  created to read:

16         495.035  Filing of applications.--

17         (1)  Upon the filing of an application for registration

18  and payment of the application fee, the secretary may cause

19  the application to be examined for conformity with this

20  chapter.

21         (2)  The applicant shall provide any additional

22  pertinent information requested by the secretary, including a

23  description of a design mark and may make, or authorize the

24  secretary to make, such amendments to the application as may

25  be reasonably requested by the secretary or deemed by

26  applicant to be advisable to respond to any rejection or

27  objection.

28         (3)  The secretary may require the applicant to

29  disclaim an unregistrable component of a mark otherwise

30  registrable, and an applicant may voluntarily disclaim a

31  component of a mark sought to be registered. No disclaimer

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  shall prejudice or affect the applicant's or registrant's

 2  rights then existing or thereafter arising in the disclaimed

 3  matter, or the applicant's or registrant's rights of

 4  registration on another application if the disclaimed matter

 5  be or shall have become distinctive of the applicant's or

 6  registrant's goods or services.

 7         (4)  Amendments may be made by the secretary upon the

 8  application submitted by the applicant upon the applicant's

 9  agreement, or a new application may be required to be

10  submitted.

11         (5)  If the applicant is found not to be entitled to

12  registration, the secretary shall advise the applicant of the

13  rejection and of the reasons for rejection. The applicant

14  shall have a reasonable period of time specified by the

15  secretary in which to reply or to amend the application, in

16  which event the application shall then be reexamined. This

17  procedure may be repeated until:

18         (a)  The secretary refuses registration of the mark; or

19         (b)  The applicant fails to reply or amend the

20  application within the specified time, whereupon the

21  application shall be abandoned.

22         (6)  If the secretary denies registration of the mark,

23  the applicant may seek a writ of mandamus to compel such

24  registration. Such writ may be granted, but without costs to

25  the secretary, on proof that all the statements in the

26  application are true and that the mark is otherwise entitled

27  to registration.

28         (7)  In the instance of multiple applications

29  concurrently being processed by the secretary which seek

30  registration of the same or confusingly similar marks for the

31  same or related goods or services, the secretary shall grant

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  priority to the applications in order of filing. If a

 2  prior-filed application is granted a registration, the other

 3  application or applications shall then be rejected. Any

 4  rejected applicant may bring an action for cancellation of the

 5  registration upon grounds of prior or superior rights to the

 6  mark, in accordance with the provisions of s. 495.101.

 7         Section 7.  Section 495.061, Florida Statutes, is

 8  amended to read:

 9         495.061  Certificate of registration.--

10         (1)  Upon compliance by the applicant with the

11  requirements of this chapter, the secretary Department of

12  State shall cause a certificate of registration to be issued

13  and delivered to the applicant. The certificate of

14  registration shall be issued under the signature of the

15  secretary of State and the seal of the state, and it shall

16  show the name and business address and, if a corporation or

17  partnership, the state of incorporation or the state in which

18  the partnership is organized and the names of the general

19  partners, of the person claiming ownership of the mark in this

20  state, the date claimed for the first use of the mark anywhere

21  and the date claimed for the first use of the mark in this

22  state, the class or classes of goods or services on which the

23  mark is used, a reproduction of the mark, the registration

24  date and the term of the registration.

25         (2)  Any certificate of registration issued by the

26  secretary Department of State under the provisions hereof or a

27  copy thereof duly certified by the secretary Department of

28  State shall be admissible in evidence as competent and

29  sufficient proof of the registration of such mark in any

30  action or judicial proceedings in any court of this state, and

31  shall be prima facie evidence of the validity of the

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  registration, registrant's ownership of the mark, and of

 2  registrant's exclusive right to use the mark in this state in

 3  connection with the goods or services specified in the

 4  certificate, subject to any conditions and limitations stated

 5  therein.

 6         (3)  Contingent on the registration of a mark under

 7  this chapter, the reservation of such mark based on intent to

 8  use, as provided in this chapter, shall be prima facie

 9  evidence of priority of ownership of such mark within this

10  state on or in connection with the goods or services specified

11  in the reservation against any other person, except for a

12  person whose mark has not been abandoned and who, prior to

13  such reservation, has used the mark within this state on or in

14  connection with such goods or services.

15         Section 8.  Section 495.071, Florida Statutes, is

16  amended to read:

17         495.071  Duration and renewal.--

18         (1)  Registration of a mark hereunder shall be

19  effective for a term of 5 10 years from the date of

20  registration and, upon application filed within 6 months prior

21  to the expiration of such term, in a manner complying with the

22  requirements of the secretary on a form to be furnished by the

23  Department of State, the registration may be renewed for a

24  like term beginning at the end of the previous term. A renewal

25  fee of $87.50 for each class of goods or services with respect

26  to which such renewal is sought, payable to the secretary

27  Department of State, shall accompany the application for

28  renewal of the registration.

29         (2)  A mark registration may be renewed for successive

30  periods of 5 10 years in like manner.

31  

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         (3)  Any registration in effect on the date on which

 2  this section becomes law shall continue in effect for the

 3  unexpired term thereof and may be renewed by filing an

 4  application for renewal with the secretary complying with the

 5  requirements of the secretary and paying the renewal fee

 6  therefor within 6 months prior to the expiration of the

 7  registration The Department of State shall notify registrants

 8  of marks hereunder of the necessity of renewal within the year

 9  next preceding the expiration of the 10 years from the date of

10  registration by writing to the last known address of the

11  registrants. The department shall prescribe the forms on which

12  to make the required notification and the renewal called for

13  in subsection (1) and may substitute the uniform business

14  report, pursuant to s. 606.06, as a means of satisfying the

15  requirement of this part.

16         (4)  All applications for renewals under this chapter

17  whether of registrations made under this act or of

18  registrations effected under any prior act, shall include a

19  statement that the mark has been and is still in use and

20  include a specimen showing actual use of the mark on or in

21  connection with the goods or services in this state, or that

22  its nonuse is due to special circumstances which excuse such

23  nonuse and is not due to any intention to abandon the mark.

24         Section 9.  Section 495.081, Florida Statutes, is

25  amended to read:

26         495.081  Assignments; changes of name; other

27  instruments Assignment.--

28         (1)  Any mark and its registration hereunder shall be

29  assignable with the good will of the business in which the

30  mark is used or with that part of the good will of the

31  business connected with the use of and symbolized by the mark.

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  Assignment shall be by instruments in writing duly executed

 2  and may be recorded with the secretary Department of State

 3  upon the payment of a recording fee of $50, payable to the

 4  secretary who Department of State which, upon recording of the

 5  assignment, shall issue in the name of the assignee a new

 6  certificate for the remainder of the term of the registration

 7  or of the last renewal thereof. An assignment of any

 8  registration under this chapter shall be void as against any

 9  subsequent purchaser for valuable consideration without

10  notice, unless such assignment is recorded with the secretary

11  Department of State within 3 months after the date thereof or

12  prior to subsequent purchase at any time after the expiration

13  of such 3-month period, unless an assignment given in

14  connection with any subsequent purchase is recorded with the

15  Department of State prior to or within 10 days after such

16  assignment is recorded.

17         (2)  Any registrant or applicant effecting a change of

18  the name of the person to whom the mark was issued or for whom

19  an application was filed may record a certificate of change of

20  name of the registrant or applicant with the secretary upon

21  the payment of the recording fee. The secretary may issue in

22  the name of the assignee a certificate of registration of an

23  assigned application. The secretary may issue in the name of

24  the assignee a new certificate or registration for the

25  remainder of the term of the registration or last renewal

26  thereof.

27         (3)  Other instruments, such as licenses, security

28  interests, or mortgages which relate to a mark registered or

29  application pending pursuant to this chapter, may be recorded

30  in the discretion of the secretary, provided that such

31  instrument is in writing and duly executed.

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         (4)  Acknowledgement shall be prima facie evidence of

 2  the execution of an assignment or other instrument and, when

 3  recorded by the secretary, the record shall be prima facie

 4  evidence of execution.

 5         (5)  A photocopy of any instrument referred to in this

 6  subsection shall be accepted for recording if it is certified

 7  to be a true and correct copy of the original by any of the

 8  parties thereto, or their successors.

 9         Section 10.  Section 495.091, Florida Statutes, is

10  amended to read:

11         495.091  Records.--The secretary Department of State

12  shall keep for public examination a record of all marks

13  registered or renewed under this chapter, as well as a record

14  of all documents recorded pursuant to s. 495.081.

15         Section 11.  Section 495.101, Florida Statutes, is

16  amended to read:

17         (Substantial rewording of section. See

18         s. 495.101, F.S., for present text.)

19         495.101  Cancellation.--The secretary shall cancel from

20  the register:

21         (1)  Any registration voluntarily requested to be

22  canceled by the registrant or the assignee of record.

23         (2)  All registrations granted under this chapter and

24  not renewed in accordance with the provisions hereof.

25         (3)  Any registration which a court of competent

26  jurisdiction finds that:

27         (a)  The registered mark has been abandoned.

28         (b)  The registrant is not the owner of the mark.

29         (c)  The registration was granted improperly.

30         (d)  The registration was obtained fraudulently.

31  

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         (e)  The mark is or has become the generic name for the

 2  goods or services, or a portion thereof, for which it has been

 3  registered.

 4         (f)  The registered mark is so similar, as to be likely

 5  to cause confusion or mistake or to deceive, to a mark

 6  registered by another person in the United States Patent and

 7  Trademark Office, prior to the date of the filing of the

 8  application for registration by the registrant hereunder, and

 9  not abandoned; however, should the registrant prove that the

10  registrant is the owner of a concurrent registration of a mark

11  in the United States Patent and Trademark Office covering an

12  area including this state, the registration hereunder shall

13  not be canceled.

14         (4)  Any registration which a court of competent

15  jurisdiction orders canceled on any ground.

16         Section 12.  Section 495.111, Florida Statutes, is

17  amended to read:

18         (Substantial rewording of section. See

19         s. 495.111, F.S., for present text.)

20         495.111  Classification.--The secretary shall establish

21  a classification of goods and services for convenience of

22  administration of this chapter, but shall not limit or extend

23  the applicant's or registrant's rights. A single application

24  for registration of a mark may include any or all goods upon

25  which, or services with which, the mark is actually being used

26  indicating the appropriate class or classes of goods or

27  services. When a single application includes goods or services

28  that fall within multiple classes, the secretary may require

29  payment of a fee for each class. To the extent practicable,

30  the classification of goods and services should conform to the

31  

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  classification adopted by the United States Patent and

 2  Trademark Office.

 3         Section 13.  Section 495.121, Florida Statutes, is

 4  amended to read:

 5         495.121  Fraudulent registration.--Any person who shall

 6  for herself or himself, or on behalf of any other person,

 7  procure the filing or registration of any mark with the

 8  secretary Department of State under the provisions hereof, by

 9  knowingly making any false or fraudulent representation or

10  declaration, verbally or in writing, or by any other

11  fraudulent means, shall be liable to pay all damages sustained

12  in consequence of such filing or registration, and for

13  punitive or exemplary damages, to be recovered by or on behalf

14  of the party injured thereby in any court of competent

15  jurisdiction.

16         Section 14.  Section 495.131, Florida Statutes, is

17  amended to read:

18         495.131  Infringement.--Subject to the provisions of s.

19  495.161, any person who shall:

20         (1)  Use, without the consent of the registrant, any

21  reproduction, counterfeit, copy, or colorable imitation of a

22  mark registered under this chapter on any goods or in

23  connection with the sale, offering for sale, distribution or

24  advertising of any goods or services on or in connection with

25  which such use is likely to cause confusion or mistake or to

26  deceive as to the source or origin of such goods or services;

27  or

28         (2)  Reproduce, counterfeit, copy or colorably imitate

29  any such mark and apply such reproduction, counterfeit, copy

30  or colorable imitation to labels, signs, prints, packages,

31  wrappers, receptacles or advertisements intended to be used

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  upon or in conjunction with the sale or other, offering for

 2  sale, distribution or advertising in this state of goods or

 3  services;

 4  

 5  shall be liable in a civil action by the owner of such

 6  registered mark for any or all of the remedies provided in s.

 7  495.141, except that under subsection (2) hereof the

 8  registrant shall not be entitled to recover profits or damages

 9  unless the acts have been committed with the intent knowledge

10  that such mark is intended to be used to cause confusion or

11  mistake or to deceive.

12         Section 15.  Section 495.141, Florida Statutes, is

13  amended to read:

14         495.141  Remedies.--

15         (1)  Any owner of a mark registered under this chapter

16  may proceed by suit to enjoin the manufacture, use, display,

17  or sale of any counterfeits or imitations thereof and any

18  court of competent jurisdiction may grant injunctions to

19  restrain such manufacture, use, display or sale as may be by

20  the said court deemed just and reasonable, and may require the

21  defendants to pay to such owner all profits derived from

22  and/or all damages suffered by reason of such wrongful

23  manufacture, use, display, or sale and to pay the costs of the

24  action; and such court may also order that any such

25  counterfeits or imitations in the possession or under the

26  control of any defendant in such case be delivered to an

27  officer of the court, or to the complainant, to be destroyed.

28  The court, in its discretion, may enter judgment for an amount

29  not to exceed three times such profits and damages and

30  reasonable attorney's fees of the prevailing party in such

31  cases where the court finds the other party committed the

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  wrongful acts with knowledge, in bad faith, or otherwise as

 2  according to the circumstances of the case. The enumeration of

 3  any right or remedy herein shall not affect a registrant's

 4  right to prosecute under any penal law of this state In

 5  assessing profits the plaintiff shall be required to prove

 6  defendant's sales only; defendant must prove all elements of

 7  cost or deduction claimed. In assessing damages the court may

 8  enter judgment, according to the circumstances of the case,

 9  for any sum above the amount found as actual damages, not

10  exceeding 3 times such amount. If the court shall find that

11  the amount of the recovery based on profits is either

12  inadequate or excessive the court may in its discretion enter

13  judgment for such sum as the court shall find to be just,

14  according to the circumstances of the case. Such sum in either

15  of the above circumstances shall constitute compensation and

16  not a penalty.

17         (2)  The enumeration of any right or remedy herein

18  shall not affect a registrant's right to prosecute under any

19  penal law of this state.

20         Section 16.  Section 495.145, Florida Statutes, is

21  created to read:

22         495.145  Forum for actions regarding registration;

23  service on out-of-state registrants.--

24         (1)  Actions to require cancellation of a mark

25  registered pursuant to this chapter, or in mandamus, to compel

26  registration of a mark pursuant to this chapter shall be

27  brought in any court of competent jurisdiction. In an action

28  in mandamus, the proceeding shall be based solely upon the

29  record before the secretary. In an action for cancellation,

30  the secretary shall not be made a party to the proceeding but

31  shall be notified of the filing of the complaint by the clerk

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  of the court in which it is filed and shall be given the right

 2  to intervene in the action.

 3         (2)  In any action brought against a nonresident

 4  registrant, service may be effected upon the secretary as

 5  agent for service of the registrant in accordance with the

 6  procedures established for service upon nonresident

 7  corporations and business entities under s. 48.081.

 8         Section 17.  Section 495.151, Florida Statutes, is

 9  amended to read:

10         (Substantial rewording of section. See

11         s. 495.151, F.S., for present text.)

12         495.151  Injury to business reputation; dilution.--

13         (1)  The owner of a mark that is famous in this state

14  shall be entitled, subject to the principles of equity and

15  upon such terms as the court deems reasonable, to an

16  injunction, and to obtain such other relief against another

17  person's commercial use of a mark or trade name, if such use

18  begins after the mark has become famous and causes dilution of

19  the distinctive quality of the mark, as is provided in this

20  section. In determining whether a mark is distinctive and

21  famous, a court may consider factors, including, but not

22  limited to:

23         (a)  The degree of inherent or acquired distinctiveness

24  of the mark in this state.

25         (b)  The duration and extent of use of the mark in

26  connection with the goods and services with which the mark is

27  used.

28         (c)  The duration and extent of advertising and

29  publicity of the mark in this state.

30         (d)  The geographical extent of the trading area in

31  which the mark is used.

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1         (e)  The channels of trade for the goods or services

 2  with which the mark is used.

 3         (f)  The degree of recognition of the mark in the

 4  trading areas and channels of trade in this state used by the

 5  mark's owner and the person against whom the injunction is

 6  sought.

 7         (g)  The nature and extent of use of the same or

 8  similar mark by third parties.

 9         (h)  Whether the mark is the subject of a state

10  registration in this state, or a federal registration under

11  the federal Act of March 3, 1881, or the federal Act of

12  February 20, 1905, or on the principal register.

13         (2)  In an action brought under this section, the owner

14  of a famous mark shall be entitled only to injunctive relief

15  in this state, unless the person against whom the injunctive

16  relief is sought willfully intended to trade on the owner's

17  reputation or to cause dilution of the famous mark. If such

18  willful intent is proven, the owner shall also be entitled to

19  the remedies set forth in this chapter, subject to the

20  discretion of the court and the principles of equity. The

21  following shall not be actionable under this section:

22         (a)  Fair use of a famous mark by another person in

23  comparative commercial advertising or promotion to identify

24  the competing goods or services of the owner of the famous

25  mark.

26         (b)  Noncommercial use of the mark.

27         (c)  All forms of news reporting and news commentary.

28         Section 18.  Section 495.161, Florida Statutes, is

29  amended to read:

30         495.161  Common-law rights.--Nothing herein shall

31  adversely affect or diminish the rights or the enforcement of

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    Florida Senate - 2005                                   SB 678
    32-739-05                                               See HB




 1  rights in marks acquired in good faith at any time at common

 2  law.

 3         Section 19.  Section 495.165, Florida Statutes, is

 4  created to read:

 5         495.165  Fees.--The secretary shall prescribe

 6  reasonable fees payable for the various applications and

 7  recording fees and for related services. Unless specified by

 8  the secretary, the fees payable herein are not refundable.

 9         Section 20.  Section 495.171, Florida Statutes, is

10  amended to read:

11         (Substantial rewording of section. See

12         s. 495.171, F.S., for present text.)

13         495.171  Effective date; intent of chapter.--

14         (1)  This section shall be in force and take effect

15  after its becoming a law but shall not affect any suit,

16  proceeding, or appeal then pending.

17         (2)  The intent of this chapter is to provide a system

18  of state trademark registration and protection substantially

19  consistent with the federal system of trademark registration

20  and protection under the Trademark Act of 1946, as amended. To

21  that end, the construction given the federal act should be

22  examined as persuasive authority for interpreting and

23  construing this chapter.

24         Section 21.  If any provision of this act or the

25  application thereof to any person or circumstance is held

26  invalid, the invalidity shall not affect other provisions or

27  applications of the act which can be given effect without the

28  invalid provision or application, and to this end the

29  provisions of this act are declared severable.

30         Section 22.  This act shall take effect July 1, 2005.

31  

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