HB 0845

1	A bill to be entitled
2	An act relating to trademarks; creating s. 495.001, F.S.;
3	providing a popular name; amending s. 495.011, F.S.;
4	providing definitions; amending s. 495.021, F.S.;
5	precluding registration of certain marks; amending s.
6	495.027, F.S.; conforming provisions; amending s. 495.031,
7	F.S.; providing requirements for information to be
8	contained in an application for registration of a mark;
9	authorizing the Secretary of State to require certain
10	information in an application; requiring the application
11	to be signed and verified by oath; requiring the
12	application to be accompanied by three specimens showing
13	the mark; requiring the application to be accompanied by a
14	fee; creating s. 495.035, F.S.; providing filing
15	guidelines for applications; amending s. 495.061, F.S.;
16	providing for the issuance of a certificate of
17	registration by the secretary; amending s. 495.071, F.S.;
18	providing guidelines for the renewal of marks; providing
19	duration of effectiveness for the mark; amending s.
20	495.081, F.S.; providing for the assignability of marks;
21	providing for change of name certificates for registrants;
22	authorizing certain instruments to be recorded; providing
23	acknowledgment of recording as prima facie evidence of the
24	execution of an assignment or other instrument;
25	authorizing a photocopy of any instrument to be acceptable
26	for recording; amending s. 495.091, F.S.; requiring the
27	secretary to record all marks registered with the state;
28	amending s. 495.101, F.S.; requiring the secretary to
29	cancel certain marks; amending s. 495.111; F.S., requiring
30	the secretary to establish a classification of goods and
31	services; amending s. 495.121, F.S.; conforming language;
32	amending s. 495.131, F.S.; conforming language; amending
33	s. 495.141, F.S.; providing remedies for the unauthorized
34	use of a mark; removing language regarding the assessment
35	of plaintiff's profits; creating s. 495.145, F.S.;
36	providing a forum for actions regarding registration;
37	providing service on out-of-state residents; amending s.
38	495.151, F.S.; providing for an injunction in cases of
39	dilution of a famous mark; providing factors to consider
40	in determining a mark to be famous; providing damages in
41	certain circumstances of dilution; amending s. 495.161,
42	F.S.; deleting language relating to the diminishing of
43	certain common law rights; creating s. 495.165, F.S.;
44	requiring the secretary to prescribe certain fees;
45	amending s. 495.171, F.S.; providing application and
46	legislative intent; providing for severability; providing
47	an effective date.
48
49	Be It Enacted by the Legislature of the State of Florida:
50
51	Section 1.  Section 495.001, Florida Statutes, is created
52	to read:
53	495.001  Popular name.--This chapter may be cited as the
54	"Registration and Protection of Trademarks Act."
55	Section 2.  Section 495.011, Florida Statutes, is amended
56	to read:
57	(Substantial rewording of section. See
58	s. 495.011, F.S., for present text.)
59	495.011  Definitions.--As used in this chapter:
60	(1)  "Abandoned" applies to a mark when either of the
61	following occurs:
62	(a)  When its use has been discontinued with intent not to
63	resume such use. Intent not to resume use may be inferred from
64	circumstances. Nonuse for 2 consecutive years shall constitute
65	prima facie evidence of abandonment.
66	(b)  When any course of conduct of the owner, including
67	acts of either omission or commission, causes the mark to lose
68	its significance as a mark.
69	(2)  "Applicant" means the person filing an application for
70	registration of a mark under this chapter and the legal
71	representatives, successors, or assigns of such person.
72	(3)  "Dilution" means the lessening of the capacity of a
73	mark to identify and distinguish goods or services, regardless
74	of the presence or absence of:
75	(a)  Competition between the owner of the mark and other
76	parties.
77	(b)  Likelihood of confusion, mistake, or deception.
78	(4)  "Mark" includes any trademark or service mark entitled
79	to registration under this chapter whether or not registered.
80	(5)  "Person," and any other word or term used to designate
81	the applicant or other party entitled to a benefit or privilege
82	or rendered liable under the provisions of this chapter, means a
83	juristic person as well as a natural person. The term "juristic
84	person" includes a firm, partnership, corporation, union,
85	association, or other organization capable of suing and being
86	sued in a court of law.
87	(6)  "Registrant" means the person to whom the registration
88	of a mark under this chapter is issued, and the legal
89	representatives, successors, or assigns of such person.
90	(7)  "Secretary" means the Secretary of State or the
91	designee of the secretary charged with the administration of
92	this chapter.
93	(8)  "Service mark" means any word, name, symbol, device,
94	or any combination thereof, used by a person to identify and
95	distinguish the services of such person, including a unique
96	service, from the services of others, and to indicate the source
97	of the services, even if that source is unknown. Distinctive
98	features of radio or television programs, including, but not
99	limited to, titles and character names used by a person, may be
100	registered as service marks notwithstanding that the person or
101	the programs may advertise the goods of the sponsor.
102	(9)  "Trademark" means any word, name, symbol, device, or
103	any combination thereof, used by a person to identify and
104	distinguish the goods of such person, including a unique
105	product, from those manufactured or sold by others, and to
106	indicate the source of the goods, even if that source is
107	unknown.
108	(10)  "Trade name" means any name used by a person to
109	identify a business or vocation of such person.
110	(11)  "Use" means the bona fide use of a mark in the
111	ordinary course of trade, and does not include the use of a
112	trademark or service mark merely for the purpose of reserving a
113	right in the trademark or service mark. For the purposes of this
114	chapter, a mark shall be deemed to be in use when it is placed
115	on goods, their containers or the displays associated therewith,
116	on the tags or labels affixed thereto, or, if the nature of the
117	goods makes such placement impracticable, then on documents
118	associated with the goods or their sale, and such goods are sold
119	or transported in commerce in this state, and a service mark
120	shall be deemed to be "used" when it is used or displayed in the
121	sale or advertising of services and the services are rendered in
122	this state.
123	Section 3.  Section 495.021, Florida Statutes, is amended
124	to read:
125	495.021  Registrability.--
126	(1)  A mark by which the goods or services of any applicant
127	for registration may be distinguished from the goods or services
128	of others shall not be registered if it:
129	(1)(a)  Consists of or, comprises or includes immoral,
130	deceptive or scandalous matter; or
131	(2)(b)  Consists of or, comprises or includes matter which
132	may disparage or falsely suggest a connection with persons,
133	living or dead, institutions, beliefs, or national symbols, or
134	bring them into contempt, or disrepute; or
135	(3)(c)  Consists of or, comprises or includes the flag or
136	coat of arms or other insignia of the United States, or of any
137	state or municipality, or of any foreign nation, or any
138	simulation thereof; or
139	(4)(d)  Consists of or, comprises or includes the name,
140	signature, or portrait of any living individual, except with her
141	or his written consent; or
142	(5)(e)  Consists of a mark which:
143	(a)1.  When used on or in connection with applied to the
144	goods or services of the applicant is merely descriptive or
145	deceptively misdescriptive of them,
146	(b)2.  When used on or in connection with applied to the
147	goods or services of the applicant is primarily geographically
148	descriptive or deceptively misdescriptive of them or their
149	source or origin, or
150	(c)3.  Is primarily merely a surname, provided, however,
151	that nothing in this subsection paragraph shall prevent the
152	registration of a mark used in this state by the applicant which
153	has become distinctive of the applicant's goods or services in
154	this state or elsewhere.
155
156	The secretary Department of State may accept as evidence that
157	the mark has become distinctive, as used on or in connection
158	with applied to the applicant's goods or services, proof of
159	substantially exclusive and continuous use thereof as a mark by
160	the applicant in this state or elsewhere for 5 years next
161	preceding the date on which the claim of distinctiveness is
162	made; or
163	(6)(f)  Consists of or comprises a mark which so resembles
164	a mark registered in this state or a mark or trade name
165	previously used in this state by another and not abandoned, as
166	to be likely, when used on or in connection with applied to the
167	goods or services of the applicant, to cause confusion or
168	mistake or to deceive. Registration shall not be denied solely
169	on the basis of reservation or registration by another of a
170	corporate name or fictitious name that is the same or similar to
171	the mark for which registration is sought.
172	(2)  Subject to the provisions relating to the registration
173	of trademarks and service marks, so far as they are applicable,
174	collective and certification marks, including indications of
175	regional origin, shall be registrable under this chapter, in the
176	same manner and with the same effect as are trademarks and
177	service marks, by persons, and nations, states, municipalities,
178	and the like, exercising control over the use of the marks
179	sought to be registered, even though not possessing an
180	industrial or commercial establishment, and when registered they
181	shall be entitled to the protection provided in this chapter in
182	the case of trademarks and service marks. The Department of
183	State may establish a separate register for such collective
184	marks and certification marks.
185	Section 4.  Subsection (3) of section 495.027, Florida
186	Statutes, is amended to read:
187	495.027  Reservation.--
188	(3)  Every request under this section shall be accompanied
189	by a filing fee of $50, payable to the Department of State, for
190	each class of goods or services established pursuant to as
191	specified in s. 495.111, in connection with which the mark is to
192	be used.
193	Section 5.  Section 495.031, Florida Statutes, is amended
194	to read:
195	(Substantial rewording of section. See
196	s. 495.031, F.S., for present text.)
197	495.031  Application for registration.--
198	(1)  Subject to the limitations set forth in this chapter,
199	any person who uses a mark may file in the office of the
200	secretary, in a manner complying with the requirements of the
201	secretary, an application for registration of that mark,
202	including, but not limited to, the following information:
203	(a)  The name and business address of the person applying
204	for such registration and, if a corporation, the state of
205	incorporation or, if a partnership, the state in which the
206	partnership is organized and the names of the general partners,
207	as specified by the secretary.
208	(b)  The goods or services on or in connection with which
209	the mark is used and the mode or manner in which the mark is
210	used on or in connection with such goods or services and the
211	class in which such goods or services fall.
212	(c)  The date when the mark was first used anywhere and the
213	date when it was first used in this state by the applicant or a
214	predecessor in interest.
215	(d)  A statement that the applicant is the owner of the
216	mark, that the mark is in use, and that, to the knowledge of the
217	person verifying the application, no other person has
218	registered, either federally or in this state, or has the right
219	to use such mark either in the identical form thereof or in such
220	near resemblance thereto as to be likely, when applied to the
221	goods or services of such other person, to cause confusion, to
222	cause mistake, or to deceive.
223	(2)  The secretary may also require a statement as to
224	whether an application to register the mark, or portions or a
225	composite thereof, has been filed by the applicant or a
226	predecessor in interest in the United States Patent and
227	Trademark Office and, if so, the applicant shall provide full
228	particulars with respect thereto, including the filing date and
229	serial number of each application, the status thereof, and, if
230	any application was finally refused registration or has
231	otherwise not resulted in a registration, the reasons therefore.
232	(3)  The secretary may also require that a drawing of the
233	mark, complying with such requirements as the secretary may
234	specify, accompany the application.
235	(4)  The application shall be signed and verified by oath,
236	affirmation, or declaration subject to perjury laws, by the
237	applicant, a member of the firm, or an officer of the
238	corporation or association applying.
239	(5)  The application shall be accompanied by three
240	specimens showing the mark as actually used.
241	(6)  The application shall be accompanied by the
242	application fee payable to the secretary.
243	Section 6.  Section 495.035, Florida Statutes, is created
244	to read:
245	495.035  Filing of applications.--
246	(1)  Upon the filing of an application for registration and
247	payment of the application fee, the secretary may cause the
248	application to be examined for conformity with this chapter.
249	(2)  The applicant shall provide any additional pertinent
250	information requested by the secretary, including a description
251	of a design mark and may make, or authorize the secretary to
252	make, such amendments to the application as may be reasonably
253	requested by the secretary or deemed by applicant to be
254	advisable to respond to any rejection or objection.
255	(3)  The secretary may require the applicant to disclaim an
256	unregistrable component of a mark otherwise registrable, and an
257	applicant may voluntarily disclaim a component of a mark sought
258	to be registered. No disclaimer shall prejudice or affect the
259	applicant's or registrant's rights then existing or thereafter
260	arising in the disclaimed matter, or the applicant's or
261	registrant's rights of registration on another application if
262	the disclaimed matter be or shall have become distinctive of the
263	applicant's or registrant's goods or services.
264	(4)  Amendments may be made by the secretary upon the
265	application submitted by the applicant upon the applicant's
266	agreement, or a new application may be required to be submitted.
267	(5)  If the applicant is found not to be entitled to
268	registration, the secretary shall advise the applicant of the
269	rejection and of the reasons for rejection. The applicant shall
270	have a reasonable period of time specified by the secretary in
271	which to reply or to amend the application, in which event the
272	application shall then be reexamined. This procedure may be
273	repeated until:
274	(a)  The secretary refuses registration of the mark; or
275	(b)  The applicant fails to reply or amend the application
276	within the specified time, whereupon the application shall be
277	abandoned.
278	(6)  If the secretary denies registration of the mark, the
279	applicant may seek a writ of mandamus to compel such
280	registration. Such writ may be granted, but without costs to the
281	secretary, on proof that all the statements in the application
282	are true and that the mark is otherwise entitled to
283	registration.
284	(7)  In the instance of multiple applications concurrently
285	being processed by the secretary which seek registration of the
286	same or confusingly similar marks for the same or related goods
287	or services, the secretary shall grant priority to the
288	applications in order of filing. If a prior-filed application is
289	granted a registration, the other application or applications
290	shall then be rejected. Any rejected applicant may bring an
291	action for cancellation of the registration upon grounds of
292	prior or superior rights to the mark, in accordance with the
293	provisions of s. 495.101.
294	Section 7.  Section 495.061, Florida Statutes, is amended
295	to read:
296	495.061  Certificate of registration.--
297	(1)  Upon compliance by the applicant with the requirements
298	of this chapter, the secretary Department of State shall cause a
299	certificate of registration to be issued and delivered to the
300	applicant. The certificate of registration shall be issued under
301	the signature of the secretary of State and the seal of the
302	state, and it shall show the name and business address and, if a
303	corporation or partnership, the state of incorporation or the
304	state in which the partnership is organized and the names of the
305	general partners, of the person claiming ownership of the mark
306	in this state, the date claimed for the first use of the mark
307	anywhere and the date claimed for the first use of the mark in
308	this state, the class or classes of goods or services on which
309	the mark is used, a reproduction of the mark, the registration
310	date and the term of the registration.
311	(2)  Any certificate of registration issued by the
312	secretary Department of State under the provisions hereof or a
313	copy thereof duly certified by the secretary Department of State
314	shall be admissible in evidence as competent and sufficient
315	proof of the registration of such mark in any action or judicial
316	proceedings in any court of this state, and shall be prima facie
317	evidence of the validity of the registration, registrant's
318	ownership of the mark, and of registrant's exclusive right to
319	use the mark in this state in connection with the goods or
320	services specified in the certificate, subject to any conditions
321	and limitations stated therein.
322	(3)  Contingent on the registration of a mark under this
323	chapter, the reservation of such mark based on intent to use, as
324	provided in this chapter, shall be prima facie evidence of
325	priority of ownership of such mark within this state on or in
326	connection with the goods or services specified in the
327	reservation against any other person, except for a person whose
328	mark has not been abandoned and who, prior to such reservation,
329	has used the mark within this state on or in connection with
330	such goods or services.
331	Section 8.  Section 495.071, Florida Statutes, is amended
332	to read:
333	495.071  Duration and renewal.--
334	(1)  Registration of a mark hereunder shall be effective
335	for a term of 5 10 years from the date of registration and, upon
336	application filed within 6 months prior to the expiration of
337	such term, in a manner complying with the requirements of the
338	secretary on a form to be furnished by the Department of State,
339	the registration may be renewed for a like term beginning at the
340	end of the previous term. A renewal fee of $87.50 for each class
341	of goods or services with respect to which such renewal is
342	sought, payable to the secretary Department of State, shall
343	accompany the application for renewal of the registration.
344	(2)  A mark registration may be renewed for successive
345	periods of 5 10 years in like manner.
346	(3)  Any registration in effect on the date on which this
347	section becomes law shall continue in effect for the unexpired
348	term thereof and may be renewed by filing an application for
349	renewal with the secretary complying with the requirements of
350	the secretary and paying the renewal fee therefor within 6
351	months prior to the expiration of the registration The
352	Department of State shall notify registrants of marks hereunder
353	of the necessity of renewal within the year next preceding the
354	expiration of the 10 years from the date of registration by
355	writing to the last known address of the registrants. The
356	department shall prescribe the forms on which to make the
357	required notification and the renewal called for in subsection
358	(1) and may substitute the uniform business report, pursuant to
359	s. 606.06, as a means of satisfying the requirement of this
360	part.
361	(4)  All applications for renewals under this chapter
362	whether of registrations made under this act or of registrations
363	effected under any prior act, shall include a statement that the
364	mark has been and is still in use and include a specimen showing
365	actual use of the mark on or in connection with the goods or
366	services in this state, or that its nonuse is due to special
367	circumstances which excuse such nonuse and is not due to any
368	intention to abandon the mark.
369	Section 9.  Section 495.081, Florida Statutes, is amended
370	to read:
371	495.081  Assignments; changes of name; other instruments
372	Assignment.--
373	(1)  Any mark and its registration hereunder shall be
374	assignable with the good will of the business in which the mark
375	is used or with that part of the good will of the business
376	connected with the use of and symbolized by the mark. Assignment
377	shall be by instruments in writing duly executed and may be
378	recorded with the secretary Department of State upon the payment
379	of a recording fee of $50, payable to the secretary who
380	Department of State which, upon recording of the assignment,
381	shall issue in the name of the assignee a new certificate for
382	the remainder of the term of the registration or of the last
383	renewal thereof. An assignment of any registration under this
384	chapter shall be void as against any subsequent purchaser for
385	valuable consideration without notice, unless such assignment is
386	recorded with the secretary Department of State within 3 months
387	after the date thereof or prior to subsequent purchase at any
388	time after the expiration of such 3-month period, unless an
389	assignment given in connection with any subsequent purchase is
390	recorded with the Department of State prior to or within 10 days
391	after such assignment is recorded.
392	(2)  Any registrant or applicant effecting a change of the
393	name of the person to whom the mark was issued or for whom an
394	application was filed may record a certificate of change of name
395	of the registrant or applicant with the secretary upon the
396	payment of the recording fee. The secretary may issue in the
397	name of the assignee a certificate of registration of an
398	assigned application. The secretary may issue in the name of the
399	assignee a new certificate or registration for the remainder of
400	the term of the registration or last renewal thereof.
401	(3)  Other instruments, such as licenses, security
402	interests, or mortgages which relate to a mark registered or
403	application pending pursuant to this chapter, may be recorded in
404	the discretion of the secretary, provided that such instrument
405	is in writing and duly executed.
406	(4)  Acknowledgement shall be prima facie evidence of the
407	execution of an assignment or other instrument and, when
408	recorded by the secretary, the record shall be prima facie
409	evidence of execution.
410	(5)  A photocopy of any instrument referred to in this
411	subsection shall be accepted for recording if it is certified to
412	be a true and correct copy of the original by any of the parties
413	thereto, or their successors.
414	Section 10.  Section 495.091, Florida Statutes, is amended
415	to read:
416	495.091  Records.--The secretary Department of State shall
417	keep for public examination a record of all marks registered or
418	renewed under this chapter, as well as a record of all documents
419	recorded pursuant to s. 495.081.
420	Section 11.  Section 495.101, Florida Statutes, is amended
421	to read:
422	(Substantial rewording of section. See
423	s. 495.101, F.S., for present text.)
424	495.101  Cancellation.--The secretary shall cancel from the
425	register:
426	(1)  Any registration voluntarily requested to be canceled
427	by the registrant or the assignee of record.
428	(2)  All registrations granted under this chapter and not
429	renewed in accordance with the provisions hereof.
430	(3)  Any registration which a court of competent
431	jurisdiction finds that:
432	(a)  The registered mark has been abandoned.
433	(b)  The registrant is not the owner of the mark.
434	(c)  The registration was granted improperly.
435	(d)  The registration was obtained fraudulently.
436	(e)  The mark is or has become the generic name for the
437	goods or services, or a portion thereof, for which it has been
438	registered.
439	(f)  The registered mark is so similar, as to be likely to
440	cause confusion or mistake or to deceive, to a mark registered
441	by another person in the United States Patent and Trademark
442	Office, prior to the date of the filing of the application for
443	registration by the registrant hereunder, and not abandoned;
444	however, should the registrant prove that the registrant is the
445	owner of a concurrent registration of a mark in the United
446	States Patent and Trademark Office covering an area including
447	this state, the registration hereunder shall not be canceled.
448	(4)  Any registration which a court of competent
449	jurisdiction orders canceled on any ground.
450	Section 12.  Section 495.111, Florida Statutes, is amended
451	to read:
452	(Substantial rewording of section. See
453	s. 495.111, F.S., for present text.)
454	495.111  Classification.--The secretary shall establish a
455	classification of goods and services for convenience of
456	administration of this chapter, but shall not limit or extend
457	the applicant's or registrant's rights. A single application for
458	registration of a mark may include any or all goods upon which,
459	or services with which, the mark is actually being used
460	indicating the appropriate class or classes of goods or
461	services. When a single application includes goods or services
462	which fall within multiple classes, the secretary may require
463	payment of a fee for each class. To the extent practicable, the
464	classification of goods and services should conform to the
465	classification adopted by the United States Patent and Trademark
466	Office.
467	Section 13.  Section 495.121, Florida Statutes, is amended
468	to read:
469	495.121  Fraudulent registration.--Any person who shall for
470	herself or himself, or on behalf of any other person, procure
471	the filing or registration of any mark with the secretary
472	Department of State under the provisions hereof, by knowingly
473	making any false or fraudulent representation or declaration,
474	verbally or in writing, or by any other fraudulent means, shall
475	be liable to pay all damages sustained in consequence of such
476	filing or registration, and for punitive or exemplary damages,
477	to be recovered by or on behalf of the party injured thereby in
478	any court of competent jurisdiction.
479	Section 14.  Section 495.131, Florida Statutes, is amended
480	to read:
481	495.131  Infringement.--Subject to the provisions of s.
482	495.161, any person who shall:
483	(1)  Use, without the consent of the registrant, any
484	reproduction, counterfeit, copy, or colorable imitation of a
485	mark registered under this chapter on any goods or in connection
486	with the sale, offering for sale, distribution or advertising of
487	any goods or services on or in connection with which such use is
488	likely to cause confusion or mistake or to deceive as to the
489	source or origin of such goods or services; or
490	(2)  Reproduce, counterfeit, copy or colorably imitate any
491	such mark and apply such reproduction, counterfeit, copy or
492	colorable imitation to labels, signs, prints, packages,
493	wrappers, receptacles or advertisements intended to be used upon
494	or in conjunction with the sale or other, offering for sale,
495	distribution or advertising in this state of goods or services;
496
497	shall be liable in a civil action by the owner of such
498	registered mark for any or all of the remedies provided in s.
499	495.141, except that under subsection (2) hereof the registrant
500	shall not be entitled to recover profits or damages unless the
501	acts have been committed with the intent knowledge that such
502	mark is intended to be used to cause confusion or mistake or to
503	deceive.
504	Section 15.  Section 495.141, Florida Statutes, is amended
505	to read:
506	495.141  Remedies.--
507	(1)  Any owner of a mark registered under this chapter may
508	proceed by suit to enjoin the manufacture, use, display, or sale
509	of any counterfeits or imitations thereof and any court of
510	competent jurisdiction may grant injunctions to restrain such
511	manufacture, use, display or sale as may be by the said court
512	deemed just and reasonable, and may require the defendants to
513	pay to such owner all profits derived from and/or all damages
514	suffered by reason of such wrongful manufacture, use, display,
515	or sale and to pay the costs of the action; and such court may
516	also order that any such counterfeits or imitations in the
517	possession or under the control of any defendant in such case be
518	delivered to an officer of the court, or to the complainant, to
519	be destroyed. The court, in its discretion, may enter judgment
520	for an amount not to exceed three times such profits and damages
521	and reasonable attorney's fees of the prevailing party in such
522	cases where the court finds the other party committed the
523	wrongful acts with knowledge, in bad faith, or otherwise as
524	according to the circumstances of the case. The enumeration of
525	any right or remedy herein shall not affect a registrant's right
526	to prosecute under any penal law of this state In assessing
527	profits the plaintiff shall be required to prove defendant's
528	sales only; defendant must prove all elements of cost or
529	deduction claimed. In assessing damages the court may enter
530	judgment, according to the circumstances of the case, for any
531	sum above the amount found as actual damages, not exceeding 3
532	times such amount. If the court shall find that the amount of
533	the recovery based on profits is either inadequate or excessive
534	the court may in its discretion enter judgment for such sum as
535	the court shall find to be just, according to the circumstances
536	of the case. Such sum in either of the above circumstances shall
537	constitute compensation and not a penalty.
538	(2)  The enumeration of any right or remedy herein shall
539	not affect a registrant's right to prosecute under any penal law
540	of this state.
541	Section 16.  Section 495.145, Florida Statutes, is created
542	to read:
543	495.145  Forum for actions regarding registration; service
544	on out-of-state registrants.--
545	(1)  Actions to require cancellation of a mark registered
546	pursuant to this chapter, or in mandamus, to compel registration
547	of a mark pursuant to this chapter shall be brought in any court
548	of competent jurisdiction. In an action in mandamus, the
549	proceeding shall be based solely upon the record before the
550	secretary. In an action for cancellation, the secretary shall
551	not be made a party to the proceeding but shall be notified of
552	the filing of the complaint by the clerk of the court in which
553	it is filed and shall be given the right to intervene in the
554	action.
555	(2)  In any action brought against a nonresident
556	registrant, service may be effected upon the secretary as agent
557	for service of the registrant in accordance with the procedures
558	established for service upon nonresident corporations and
559	business entities under s. 48.081.
560	Section 17.  Section 495.151, Florida Statutes, is amended
561	to read:
562	(Substantial rewording of section. See
563	s. 495.151, F.S., for present text.)
564	495.151  Injury to business reputation; dilution.--
565	(1)  The owner of a mark which is famous in this state
566	shall be entitled, subject to the principles of equity and upon
567	such terms as the court seems reasonable, to an injunction, and
568	to obtain such other relief against another person's commercial
569	use of a mark or trade name, if such use begins after the mark
570	has become famous and causes dilution of the distinctive quality
571	of the mark, as is provided in this section. In determining
572	whether a mark is distinctive and famous, a court may consider
573	factors, including, but not limited to:
574	(a)  The degree of inherent or acquired distinctiveness of
575	the mark in this state.
576	(b)  The duration and extent of use of the mark in
577	connection with the goods and services with which the mark is
578	used.
579	(c)  The duration and extent of advertising and publicity
580	of the mark in this state.
581	(d)  The geographical extent of the trading area in which
582	the mark is used.
583	(e)  The channels of trade for the goods or services with
584	which the mark is used.
585	(f)  The degree of recognition of the mark in the trading
586	areas and channels of trade in this state used by the mark's
587	owner and the person against whom the injunction is sought.
588	(g)  The nature and extent of use of the same or similar
589	mark by third parties.
590	(h)  Whether the mark is the subject of a state
591	registration in this state, or a federal registration under the
592	federal Act of March 3, 1881, or the federal Act of February 20,
593	1905, or on the principal register.
594	(2)  In an action brought under this section, the owner of
595	a famous mark shall be entitled only to injunctive relief in
596	this state, unless the person against whom the injunctive relief
597	is sought willfully intended to trade on the owner's reputation
598	or to cause dilution of the famous mark. If such willful intent
599	is proven, the owner shall also be entitled to the remedies set
600	forth in this chapter, subject to the discretion of the court
601	and the principles of equity. The following shall not be
602	actionable under this section:
603	(a)  Fair use of a famous mark by another person in
604	comparative commercial advertising or promotion to identify the
605	competing goods or services of the owner of the famous mark.
606	(b)  Noncommercial use of the mark.
607	(c)  All forms of news reporting and news commentary.
608	Section 18.  Section 495.161, Florida Statutes, is amended
609	to read:
610	495.161  Common-law rights.--Nothing herein shall adversely
611	affect or diminish the rights or the enforcement of rights in
612	marks acquired in good faith at any time at common law.
613	Section 19.  Section 495.165, Florida Statutes, is created
614	to read:
615	495.165  Fees.--The secretary shall prescribe reasonable
616	fees payable for the various applications and recording fees and
617	for related services. Unless specified by the secretary, the
618	fees payable herein are not refundable.
619	Section 20.  Section 495.171, Florida Statutes, is amended
620	to read:
621	(Substantial rewording of section. See
622	s. 495.171, F.S., for present text.)
623	495.171  Effective date; intent of chapter.--
624	(1)  This section shall be in force and take effect after
625	its becoming a law but shall not affect any suit, proceeding, or
626	appeal then pending.
627	(2)  The intent of this chapter is to provide a system of
628	state trademark registration and protection substantially
629	consistent with the federal system of trademark registration and
630	protection under the Trademark Act of 1946, as amended. To that
631	end, the construction given the federal act should be examined
632	as persuasive authority for interpreting and construing this
633	chapter.
634	Section 21.  If any provision of this act or the
635	application thereof to any person or circumstance is held
636	invalid, the invalidity shall not affect other provisions or
637	applications of the act which can be given effect without the
638	invalid provision or application, and to this end the provisions
639	of this act are declared severable.
640	Section 22.  This act shall take effect July 1, 2005.

CODING: Words stricken are deletions; words underlined are additions.