Senate Bill sb2186

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    Florida Senate - 2006                                  SB 2186

    By Senator Campbell





    32-1349-06                                              See HB

  1                      A bill to be entitled

  2         An act relating to trademarks; creating s.

  3         495.001, F.S.; providing a short title;

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

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

  6         precluding registration of certain marks;

  7         repealing s. 495.027, F.S., relating to

  8         reservation of a mark; amending s. 495.031,

  9         F.S.; providing requirements for information to

10         be contained in an application for registration

11         of a mark; authorizing the Department of State

12         to require certain information in an

13         application; requiring that the application be

14         signed and verified by any of certain persons;

15         requiring that the application be accompanied

16         by three specimens showing the mark; requiring

17         that the application be accompanied by a fee;

18         creating s. 495.035, F.S.; providing filing

19         guidelines for applications; providing for

20         disclaimers of unregistrable components;

21         providing for amendment and judicial review;

22         providing for priority of registrations;

23         amending s. 495.041, F.S.; providing that first

24         use shall inure to the benefit of the

25         registrant or applicant under certain

26         circumstances; amending s. 495.061, F.S.;

27         providing for the issuance of a certificate of

28         registration by the department; removing a

29         provision relating to reservation of a mark;

30         amending s. 495.071, F.S.; providing guidelines

31         for the renewal of marks; revising duration of

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         effectiveness for the mark; amending s.

 2         495.081, F.S.; providing for the assignability

 3         of marks; authorizing a photocopy of an

 4         assignment to be acceptable for recording;

 5         providing for change of name certificates for

 6         registrants; authorizing recordation of certain

 7         instruments; providing acknowledgment of

 8         recording as prima facie evidence of the

 9         execution of an assignment or other instrument;

10         specifying requirements for creation and

11         perfection of security interests in marks;

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

13         department to record all marks registered with

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

15         the department to cancel certain marks;

16         amending s. 495.111, F.S., which establishes a

17         classification of goods and services; providing

18         that a single application for registration of a

19         mark may include any or all goods upon which,

20         or services with which, the mark is actually

21         being used comprised in one or more of the

22         classes listed; amending s. 495.131, F.S.;

23         revising infringement provisions to include an

24         element of lack of consent by the registrant;

25         conforming language; amending s. 495.141, F.S.;

26         providing additional remedies for the

27         unauthorized use of a mark; creating s.

28         495.145, F.S.; providing a forum for actions

29         regarding registration; providing for service

30         of process on nonresident registrants; amending

31         s. 495.151, F.S.; providing for an injunction

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         in cases of dilution of a famous mark;

 2         providing factors to be considered in

 3         determining that a mark is famous; providing

 4         damages in certain circumstances of dilution;

 5         amending s. 495.161, F.S.; deleting language

 6         relating to the diminishing of certain common

 7         law rights; amending s. 495.171, F.S.;

 8         providing effective date of changes to ch. 495,

 9         F.S., as amended by the act; providing for

10         repeal of conflicting acts; providing

11         application to pending actions; amending s.

12         495.181, F.S.; providing construction and

13         legislative intent; creating s. 495.191, F.S.;

14         providing certain fees; repealing s. 506.06,

15         F.S., relating to unlawful to counterfeit

16         trademark, to conform; repealing s. 506.07,

17         F.S., relating to filing of trademark or other

18         form of advertisement for record with

19         Department of State, to conform; repealing s.

20         506.08, F.S., relating to fee for filing, to

21         conform; repealing s. 506.09, F.S., relating to

22         civil remedies, to conform; repealing s.

23         506.11, F.S., relating to unlawful use of

24         trademark, to conform; repealing s. 506.12,

25         F.S., relating to procuring the filing of

26         trademark or other form of advertisement by

27         fraudulent representations, to conform;

28         repealing s. 506.13, F.S., relating to using

29         the name or seal of another, to conform;

30         providing an effective date.

31  

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




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

 2  

 3         Section 1.  Section 495.001, Florida Statutes, is

 4  created to read:

 5         495.001  Short title.--This chapter may be cited as the

 6  "Registration and Protection of Trademarks Act."

 7         Section 2.  Section 495.011, Florida Statutes, is

 8  amended to read:

 9         (Substantial rewording of section. See

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

11         495.011  Definitions.--As used in this chapter:

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

13  following occurs:

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

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

16  from circumstances. Nonuse for 3 consecutive years shall

17  constitute prima facie evidence of abandonment.

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

19  acts of omission or commission, causes the mark to lose its

20  significance as a mark.

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

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

23  representatives, successors, or assigns of such person.

24         (3)  "Certification mark" means any word, name, symbol,

25  or device, or any combination thereof, used by a person other

26  than the owner of the mark to certify regional or other

27  origin, material, mode of manufacture, quality, accuracy, or

28  other characteristics of such person's goods or services or

29  that the work or labor on the goods or services was performed

30  by members of a union or other organization.

31  

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         (4)  "Collective mark" means a trademark or service

 2  mark used by the members of a cooperative, an association, or

 3  other collective group or organization, and includes marks

 4  used to indicate membership in a union, an association, or

 5  other organization.

 6         (5)  "Department of State" means the Florida Department

 7  of State or its designee charged with the administration of

 8  this chapter.

 9         (6)  "Dilution" means the lessening of the capacity of

10  a mark to identify and distinguish goods or services,

11  regardless of the presence or absence of:

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

13  other parties.

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

15         (7)  "Mark" includes any trademark, certification mark,

16  collective mark, or service mark entitled to registration

17  under this chapter, whether or not registered.

18         (8)  "Person," and any other word or term used to

19  designate the applicant or other party entitled to a benefit

20  or privilege or rendered liable under the provisions of this

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

22  "Juristic person" includes a firm, partnership, corporation,

23  union, association, or other organization capable of suing and

24  being sued in a court of law.

25         (9)  "Registrant" means the person to whom the

26  registration of a mark under this chapter is issued and the

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

28         (10)  "Related company" means any person whose use of a

29  mark is controlled by the owner of the mark with respect to

30  the nature and quality of the goods or services on or in

31  connection with which the mark is used.

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         (11)  "Service mark" means any word, name, symbol, or

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

 3  identify and distinguish the services of such person,

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

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

 6  unknown. Titles, character names, and other distinctive

 7  features of radio or television programs may be registered as

 8  service marks notwithstanding that the person or the programs

 9  may advertise the goods of the sponsor.

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

11  identify a business or vocation of such person.

12         (13)  "Trademark" means any word, name, symbol, or

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

14  identify and distinguish the goods of such person, including a

15  unique product, from those manufactured or sold by others, and

16  to indicate the source of the goods, even if the source is

17  unknown.

18         (14)  "Use" means the bona fide use of a mark in the

19  ordinary course of trade and not used merely for the purpose

20  of reserving a right in a mark. For purposes of this chapter,

21  a mark is deemed to be in use:

22         (a)  On goods when:

23         1.  The mark is placed in any manner on the goods,

24  their containers or the displays associated therewith, or on

25  the tags or labels affixed thereto, or, if the nature of the

26  goods makes such placement impracticable, on documents

27  associated with the goods or their sale; and

28         2.  The goods are sold or transported in this state.

29         (b)  On services when the mark used or displayed in the

30  sale or advertising of services and the services are rendered

31  in this state.

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         Section 3.  Subsection (1) of section 495.021, Florida

 2  Statutes, is amended to read:

 3         495.021  Registrability.--

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

 5  applicant for registration may be distinguished from the goods

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

 7         (a)  Consists of or, comprises or includes immoral,

 8  deceptive, or scandalous matter; or

 9         (b)  Consists of or, comprises or includes matter which

10  may disparage or falsely suggest a connection with persons,

11  living or dead, institutions, beliefs, or national symbols, or

12  bring them into contempt, or disrepute; or

13         (c)  Consists of or, comprises or includes the flag or

14  coat of arms or other insignia of the United States, or of any

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

16  simulation thereof; or

17         (d)  Consists of or, comprises a or includes the name,

18  signature, or portrait identifying a particular of any living

19  individual, except by with her or his written consent, or the

20  name, signature, or portrait of a deceased President of the

21  United States during the lifetime of his widow or her widower,

22  if any, except by the written consent of the widow or widower;

23  or

24         (e)  Consists of a mark which:

25         1.  When used on or in connection with applied to the

26  goods or services of the applicant, is merely descriptive or

27  deceptively misdescriptive of the goods; them,

28         2.  When used on or in connection with applied to the

29  goods or services of the applicant, is primarily

30  geographically descriptive or deceptively misdescriptive of

31  the goods; them or their source or origin, or

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         3.  When used on or in connection with the goods of the

 2  applicant, is primarily geographically misdescriptive of the

 3  goods;

 4         4.3.  Is primarily merely a surname; or,

 5         5.  Comprises any matter that, as a whole, is

 6  functional.

 7  

 8  Except as expressly excluded in subparagraphs 3. and 5.,

 9  provided, however, that nothing in this paragraph shall

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

11  applicant which has become distinctive of the applicant's

12  goods or services in this state or elsewhere. The Department

13  of State may accept as prima facie evidence that the mark has

14  become distinctive, as used on or in connection with applied

15  to the applicant's goods or services, proof of substantially

16  exclusive and continuous use thereof as a mark by the

17  applicant in this state or elsewhere for the 5 years before

18  next preceding the date on which the claim of distinctiveness

19  is made; or

20         (f)  Consists of or comprises a mark which so resembles

21  a mark registered in this state or a mark or trade name

22  previously used in this state by another and not abandoned, as

23  to be likely, when applied to the goods or services of the

24  applicant, to cause confusion or mistake or to deceive.

25  Registration shall not be denied solely on the basis of

26  reservation or registration by another of a corporate name or

27  fictitious name that is the same or similar to the mark for

28  which registration is sought.

29         Section 4.  Section 495.027, Florida Statutes, is

30  repealed.

31  

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         Section 5.  Section 495.031, Florida Statutes, is

 2  amended to read:

 3         495.031  Application for registration.--

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

 5  chapter, any person who adopts and uses a trademark or service

 6  mark in this state may file with the Department of State, in a

 7  manner and on a form complying with the requirements of the

 8  Department of State to be furnished by the department, an

 9  application for registration of that trademark or service mark

10  setting forth, but not limited to, the following information:

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

12  applying for such registration, and, if a business entity, the

13  place corporation, the state of incorporation or organization

14  and, if a partnership, the name of the general partners, as

15  specified by the Department of State;

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

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

18  mark is used in connection with such goods or services and the

19  class or classes in which such goods or services fall;

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

21  the date when it was first used in this state by the

22  applicant, the applicant's or her or his predecessor in

23  interest, business or a related company of the applicant or

24  the applicant's predecessor; and

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

26  mark, that the mark is in use, and that, to the best of the

27  applicant's knowledge, no other person except a related

28  company has registered such mark in this state, or has the

29  right to use such mark in this state, either in the identical

30  form thereof or in such near resemblance thereto as to be

31  likely when applied to the goods or services of such other

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1  person to cause confusion, to cause mistake, or to deceive or

 2  confuse or to be mistaken therefor.

 3         (2)  Every applicant for registration of a

 4  certification mark in this state shall file with the

 5  Department of State, on a form to be furnished by the

 6  Department of State, an application setting forth, but not

 7  limited to, the following information:

 8         (a)  The information required by paragraph (1)(a);

 9         (b)  The date when the certification mark was first

10  used anywhere and the date when it was first used in this

11  state under the authority of the applicant;

12         (c)  The manner in which and the conditions under which

13  the certification mark is used in this state; and

14         (d)  A statement that the applicant is exercising

15  control over the use of the mark, that the applicant is not

16  herself or himself engaged in the production or marketing of

17  the goods or services to which the mark is applied, and that

18  no person except the applicant or persons authorized by the

19  applicant, or related companies thereof, has the right to use

20  such mark in this state either in the identical form thereof

21  or in such near resemblance thereto as to be likely to deceive

22  or confuse or to be mistaken therefor.

23         (3)  Every applicant for registration of a collective

24  mark in this state shall file with the Department of State, on

25  a form to be furnished by the Department of State, an

26  application setting forth, but not limited to, the following

27  information:

28         (a)  The information required by paragraphs (1)(a) and

29  (b);

30         (b)  The date when the collective mark was first used

31  anywhere and the date when it was first used in this state by

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1  any member of the applicant or a related company of such

 2  member;

 3         (c)  The class of persons entitled to use the mark,

 4  indicating their relationship to the applicant, and the nature

 5  of the applicant's control over the use of the mark; and

 6         (d)  A statement that no person except the applicant or

 7  members of the applicant, or related companies thereof, has

 8  the right to use such mark in this state either in the

 9  identical form thereof or in such near resemblance thereto as

10  to be likely to deceive or confuse or to be mistaken therefor.

11         (4)  The Department of State may also require that a

12  drawing of the mark, complying with such requirements as the

13  Department of State may specify, accompany the application.

14         (5)(4)  Every application under this section shall be

15  signed and verified by the applicant or by a member of the

16  firm or an officer or other authorized representative of the

17  business entity of the corporation, association, union or

18  other organization applying.

19         (6)(5)  Every application under this section shall be

20  accompanied by three specimens showing the mark as actually

21  used a specimen or facsimile of such mark in triplicate.

22         (7)(6)  Every application under this section shall be

23  accompanied by a filing fee of $87.50, payable to the

24  Department of State in accordance with s. 495.191, for each

25  class of goods or services as specified in s. 495.111, in

26  connection with which the mark is used.

27         Section 6.  Section 495.035, Florida Statutes, is

28  created to read:

29         495.035  Filing of applications.--

30         (1)  Upon the receipt of an application for

31  registration and payment of the application fee, the

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1  Department of State may cause the application to be examined

 2  for conformity with this chapter.

 3         (2)  The applicant shall provide any additional

 4  pertinent information requested by the Department of State,

 5  including a description of a design mark, and may make, or

 6  authorize the Department of State to make, such amendments to

 7  the application as may be reasonably requested by the

 8  Department of State or deemed by the applicant to be advisable

 9  to respond to any rejection or objection.

10         (3)  The Department of State may require the applicant

11  to disclaim an unregistrable component of a mark otherwise

12  registrable, and an applicant may voluntarily disclaim a

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

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

15  rights then existing or thereafter arising in the disclaimed

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

17  registration on another application, if the disclaimed matter

18  is or has become distinctive of the applicant's or

19  registrant's goods or services.

20         (4)  Amendments may be made by the Department of State

21  upon the application submitted by the applicant upon the

22  applicant's agreement, or a new application may be required to

23  be submitted. Amendments to an otherwise properly filed

24  application shall not affect the application filing date for

25  purposes of determining the applicant's or registrant's filing

26  priority rights.

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

28  registration, the Department of State shall advise the

29  applicant of the rejection and of the reasons for rejection.

30  The applicant shall have 3 months in which to reply or amend

31  

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1  the application, in which event the application shall be

 2  reexamined. This procedure may be repeated until:

 3         (a)  The Department of State makes final its refusal to

 4  register the mark; or

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

 6  application within the specified period, whereupon the

 7  application shall be abandoned.

 8  

 9  For good cause shown, such as the pendency of litigation

10  involving the mark, the Department of State may extend the

11  period of time in which to respond to the rejection or suspend

12  examination of the application.

13         (6)  If the Department of State makes its final refusal

14  to register the mark, the applicant may seek review of such

15  decision in accordance with s. 120.68.

16         (7)  In the event of multiple applications concurrently

17  being processed by the Department of State which seek

18  registration of the same or confusingly similar marks for the

19  same or related goods or services, the Department of State

20  shall grant priority to the applications in order of receipt.

21  If a prior-filed application is granted a registration, the

22  other application or applications shall then be rejected. The

23  applicant of a rejected application may bring an action for

24  cancellation of the registration upon grounds of prior or

25  superior rights to the mark, in accordance with the provisions

26  of s. 495.101.

27         Section 7.  Section 495.041, Florida Statutes, is

28  amended to read:

29         495.041  Use by related companies.--Where a mark

30  registered or unregistered is or may be used legitimately by

31  related companies, such use shall inure to the benefit of the

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1  owner of the mark, and such use shall not affect the validity

 2  of such mark or of its registration, provided such mark is not

 3  used in such manner as to deceive the public. If first use of

 4  a mark by a person is controlled by the registrant or

 5  applicant for registration of a mark with respect to the

 6  nature and quality of the goods or services, such first use

 7  shall inure to the benefit of that registrant or applicant, as

 8  the case may be.

 9         Section 8.  Section 495.061, Florida Statutes, is

10  amended to read:

11         495.061  Certificate of registration.--

12         (1)  Upon compliance by the applicant with the

13  requirements of this chapter, the Department of State shall

14  cause a certificate of registration to be issued and delivered

15  to the applicant. The certificate of registration shall be

16  issued under the signature of the Secretary of State and the

17  seal of the state, and it shall show the name and business

18  address and, if a business entity corporation, the place state

19  of incorporation or organization, of the person claiming

20  ownership of the mark in this state, the date claimed for the

21  first use of the mark anywhere and the date claimed for the

22  first use of the mark in this state, the class or classes of

23  goods or services and a description of the goods or services

24  on or in connection with on which the mark is used, a

25  reproduction of the mark, the registration date, and the term

26  of the registration.

27         (2)  Any certificate of registration issued by the

28  Department of State under the provisions hereof or a copy

29  thereof duly certified by the Department of State shall be

30  admissible in evidence as competent and sufficient proof of

31  the registration of such mark in any action or judicial

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1  proceedings in any court of this state, and shall be prima

 2  facie evidence of the validity of the registration,

 3  registrant's ownership of the mark, and of registrant's

 4  exclusive right to use the mark in this state on or in

 5  connection with the goods or services specified in the

 6  certificate, subject to any conditions and limitations stated

 7  therein.

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

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

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

11  evidence of priority of ownership of such mark within this

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

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

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

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

16  connection with such goods or services.

17         Section 9.  Section 495.071, Florida Statutes, is

18  amended to read:

19         495.071  Duration and renewal.--

20         (1)  Registration of a mark hereunder shall be

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

22  registration and, upon application filed within 6 months prior

23  to the expiration of such term, in a manner and form complying

24  with the requirements of on a form to be furnished by the

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

26  like term beginning at the end of the expiring term. Every

27  application under this section shall be accompanied by a

28  filing fee A renewal fee of $87.50 for each class of goods or

29  services with respect to which such renewal is sought, payable

30  to the Department of State, in accordance with s. 495.191

31  

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1  shall accompany the application for renewal of the

 2  registration.

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

 4  periods of 5 10 years in like manner.

 5         (3)  Any registration in effect on July 1, 2006, shall

 6  continue in effect for the unexpired term thereof and may be

 7  renewed by filing an application for renewal with the

 8  Department of State in accordance with the form and

 9  requirements of the Department of State and paying the renewal

10  fee therefor within 6 months prior to the expiration of the

11  registration. The Department of State shall notify registrants

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

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

14  registration by writing to the last known address of the

15  registrants. The department shall prescribe the forms on which

16  to make the required notification and the renewal called for

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

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

19  requirement of this part.

20         (4)  All applications for renewal renewals under this

21  chapter, whether of registrations made under this act or of

22  registrations made under any prior acts, shall include a

23  verified statement that the mark is still in use in this

24  state, and shall include a specimen showing actual use of the

25  mark on or in connection with the goods or services subject to

26  the renewal application, or shall state that its nonuse is due

27  to special circumstances which excuse such nonuse and is not

28  due to any intention to abandon the mark.

29         Section 10.  Section 495.081, Florida Statutes, is

30  amended to read:

31  

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    Florida Senate - 2006                                  SB 2186
    32-1349-06                                              See HB




 1         495.081  Assignments; changes of name; security

 2  interests Assignment.--

 3         (1)  A registered mark or a mark for which an

 4  application for registration has been filed Any mark and its

 5  registration hereunder shall be assignable with the goodwill

 6  good will of the business in which the mark is used or with

 7  that part of the goodwill good will of the business connected

 8  with the use of and symbolized by the mark. Assignments

 9  Assignment shall be by an instrument instruments in writing

10  duly executed and may be recorded with the Department of State

11  upon the payment of the applicable a fee. A photocopy of an

12  assignment shall be accepted for recording if it is certified

13  by any of the parties thereto, or their successors, to be a

14  true and correct copy of the original. Upon recording of the

15  assignment, of $50, payable to the Department of State which,

16  upon recording of the assignment, shall issue in the name of

17  the assignee a new certificate for the remainder of the term

18  of the registration or of the last renewal thereof.

19         (2)  An assignment of any registration under this

20  chapter shall be void as against any subsequent purchaser for

21  valuable consideration without notice, unless such assignment

22  is recorded with the Department of State within 3 months after

23  the date of the assignment or prior to the subsequent purchase

24  thereof or at any time after the expiration of such 3-month

25  period, unless an assignment given in connection with any

26  subsequent purchase is recorded with the Department of State

27  prior to or within 10 days after such assignment is recorded.

28         (3)  A registrant or applicant for registration

29  effecting a change of the name may record a certificate of

30  change of name of the registrant or applicant with the

31  Department of State upon the payment of the recording fee

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 1  payable to the Department of State in accordance with s.

 2  495.191. In the case of a pending application for a mark that

 3  becomes approved for registration, the Department of State

 4  shall issue a certificate of registration in the registrant's

 5  new name. In the case of a registered mark, the Department of

 6  State shall issue a new certificate of registration in the

 7  registrant's new name for the remainder of the term of the

 8  registration or last renewal thereof. A person's failure to

 9  record a name change in accordance with this subsection shall

10  not affect the person's substantive rights in the mark or its

11  registration.

12         (4)  Acknowledgment shall be prima facie evidence of

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

14  recorded by the Department of State, the record shall be prima

15  facie evidence of execution.

16         (5)  Security interests in marks shall be created and

17  perfected in accordance with the Uniform Commercial Code,

18  chapter 679.

19         Section 11.  Section 495.091, Florida Statutes, is

20  amended to read:

21         495.091  Records.--The Department of State shall keep

22  for public examination a record of all marks registered or

23  renewed under this chapter, including all documents recorded

24  under s. 495.081.

25         Section 12.  Section 495.101, Florida Statutes, is

26  amended to read:

27         495.101  Cancellation.--The Department of State shall

28  cancel from the register:

29         (1)  After 1 year from the effective date of this

30  chapter, all registrations under prior laws which are more

31  

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    32-1349-06                                              See HB




 1  than 10 years old and not renewed in accordance with this

 2  chapter.

 3         (1)(2)  Any registration for concerning which the

 4  Department of State has received shall receive a voluntary

 5  request for cancellation by the registrant, which request

 6  shall be in a manner and form complying with the requirements

 7  of the Department of State thereof from the registrant.

 8         (2)(3)  All registrations granted under this chapter

 9  and not renewed in accordance with the provisions hereof.

10         (3)(4)  Any registration for concerning which a court

11  of competent jurisdiction finds shall find that:

12         (a)  The registered mark has been abandoned. A mark

13  shall be deemed to be "abandoned" when either of the following

14  occurs:

15         1.  When its use has been discontinued with intent not

16  to resume such use. Intent not to resume may be inferred from

17  circumstances. Nonuse for 2 consecutive years shall be prima

18  facie evidence of abandonment.

19         2.  When any course of conduct of the owner, including

20  acts of omission as well as commission, causes the mark to

21  become the generic name for the goods or services on or in

22  connection with which it is used, or otherwise to lose its

23  significance as a mark. Purchaser motivation shall not be a

24  test for determining abandonment under this paragraph.

25         (b)  The registrant of a trademark or service mark is

26  not the owner of the mark.

27         (c)  The registration was granted improperly.

28         (d)  The registration was obtained fraudulently.

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

30  goods or services, or a portion thereof, for which the mark

31  has been registered.

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    32-1349-06                                              See HB




 1         (f)(e)  The registered mark is so similar, as to be

 2  likely to cause confusion or mistake or to deceive, to a mark

 3  registered by another person in the United States Patent and

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

 5  application for registration by the registrant hereunder, and

 6  not abandoned; provided, however, that should the registrant

 7  prove that the registrant she or he is the owner of a

 8  concurrent registration of a her or his mark in the United

 9  States Patent and Trademark Office covering an area including

10  this state, the registration hereunder shall not be canceled.

11         (g)(f)  In the case of a certification mark, that the

12  registrant does not control or is not able to exercise control

13  over the use of such mark; or engages in the production or

14  marketing of any goods or services to which the certification

15  mark is applied; or the registrant permits the use of the

16  certification mark for purposes other than to certify; or the

17  registrant discriminately refuses refused to certify or to

18  continue to certify the goods or services of any person who

19  maintains the standards or conditions which such mark

20  certifies.

21         (4)(5)  When a court of competent jurisdiction shall

22  order cancellation of a registration on any ground.

23  

24  Nothing in subsection shall be deemed to prohibit the

25  registrant from using its certification mark in advertising or

26  promoting recognition of the certification program or of the

27  goods or services meeting the certification standards of the

28  registrant.

29         Section 13.  Section 495.111, Florida Statutes, is

30  amended to read:

31         (Substantial rewording of section. See

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

 2         495.111  Classification.--

 3         (1)  The following general classes of goods and

 4  services, conforming to the classification adopted by the

 5  United States Patent and Trademark Office, are established for

 6  convenience of administration of this chapter:

 7         (a)  Goods:

 8         1.  Class 1.--Chemicals used in industry, science, and

 9  photography; agriculture, horticulture, and forestry;

10  unprocessed artificial resins and, unprocessed plastics;

11  manures; fire extinguishing compositions; tempering and

12  soldering preparations; chemical substances for preserving

13  foodstuffs; tanning substances; and adhesives used in

14  industry.

15         2.  Class 2.--Paints, varnishes, lacquers;

16  preservatives against rust and against deterioration of wood;

17  colorants; mordants; raw natural resins; and metals in foil

18  and powder form for painters, decorators, printers, and

19  artists.

20         3.  Class 3.--Bleaching preparations and other

21  substances for laundry use; cleaning, polishing, scouring, and

22  abrasive preparations; soaps; perfumery, essential oils,

23  cosmetics, and hair lotions; and dentifrices.

24         4.  Class 4.--Industrial oils and greases; lubricants;

25  dust absorbing, wetting, and binding compositions; fuels

26  (including motor spirit) and illuminants; and candles and

27  wicks for lighting.

28         5.  Class 5.--Pharmaceuticals and veterinary

29  preparations; sanitary preparations for medical purposes;

30  dietetic substances adapted for medical use and food for

31  babies; plasters and materials for dressings; material for

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 1  stopping teeth and dental wax; disinfectants; preparations for

 2  destroying vermin; and fungicides and herbicides.

 3         6.  Class 6.--Common metals and their alloys; metal

 4  building materials; transportable buildings of metal;

 5  materials of metal for railway tracks; nonelectric cables and

 6  wires of common metal; ironmongery and small items of metal

 7  hardware; pipes and tubes of metal; safes; goods of common

 8  metal not included in other classes; and ores.

 9         7.  Class 7.--Machines and machine tools; motors and

10  engines (except for land vehicles); machine coupling and

11  transmission components (except for land vehicles);

12  agricultural implements other than hand-operated; incubators

13  for eggs.

14         8.  Class 8.--Hand tools and hand-operated implements;

15  cutlery; side arms; and razors.

16         9.  Class 9.--Scientific, nautical, surveying,

17  photographic, cinematographic, optical, weighing, measuring,

18  signaling, checking (supervision), and life-saving and

19  teaching apparatus and instruments; apparatus and instruments

20  for conducting, switching, transforming, accumulating,

21  regulating, or controlling electricity; apparatus for

22  recording, transmission, or reproduction of sound or images;

23  magnetic data carriers and recording discs; automatic vending

24  machines and mechanisms for coin-operated apparatus; cash

25  registers, calculating machines, and data processing equipment

26  and computers; and fire-extinguishing apparatus.

27         10.  Class 10.--Surgical, medical, dental, and

28  veterinary apparatus and instruments, artificial limbs, eyes,

29  and teeth; orthopedic articles; and suture materials.

30  

31  

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 1         11.  Class 11.--Apparatus for lighting, heating, steam

 2  generating, cooking, refrigerating, drying, ventilating, water

 3  supply, and sanitary purposes.

 4         12.  Class 12.--Vehicles; apparatus for locomotion by

 5  land, air, or water.

 6         13.  Class 13.--Firearms; ammunition and projectiles;

 7  explosives; and fireworks.

 8         14.  Class 14.--Precious metals and their alloys and

 9  goods in precious metals or coated therewith (not included in

10  other classes); jewelry and precious stones; and horological

11  and chronometric instruments.

12         15.  Class 15.--Musical instruments.

13         16.  Class 16.--Paper, cardboard, and goods made from

14  these materials (not included in other classes); printed

15  matter; bookbinding material; photographs; stationery;

16  adhesives for stationery or household purposes; artists'

17  materials; paint brushes; typewriters and office requisites

18  (except furniture); instructional and teaching material

19  (except apparatus); plastic materials for packaging (not

20  included in other classes); printers' type; and printing

21  blocks.

22         17.  Class 17.--Rubber, gutta-percha, gum, asbestos,

23  mica, and goods made from these materials and not included in

24  other classes; plastics in extruded form for use in

25  manufacture; packing, stopping, and insulating materials; and

26  flexible pipes not of metal.

27         18.  Class 18.--Leather and imitations of leather and

28  goods made of these materials and not included in other

29  classes; animal skins and hides; trunks and traveling bags;

30  umbrellas, parasols, and walking sticks; and whips, harness,

31  and saddlery.

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 1         19.  Class 19.--Building materials (nonmetallic);

 2  nonmetallic rigid pipes for building; asphalt, pitch, and

 3  bitumen; nonmetallic transportable buildings; monuments, not

 4  of metal.

 5         20.  Class 20.--Furniture, mirrors, and picture frames;

 6  goods (not included in other classes) of wood, cork, reed,

 7  cane, wicker, horn, bone, ivory, whalebone, shell, amber,

 8  mother-of-pearl, and meerschaum and substitutes for all these

 9  materials, or of plastics.

10         21.  Class 21.--Household or kitchen utensils and

11  containers (not of precious metal or coated therewith); combs

12  and sponges; brushes (except paint brushes); brush-making

13  materials; articles for cleaning purposes; steel wool;

14  unworked or semiworked glass (except glass used in building);

15  and glassware, porcelain, and earthenware not included in

16  other classes.

17         22.  Class 22.--Ropes, string, nets, tents, awnings,

18  tarpaulins, sails, sacks, and bags (not included in other

19  classes); padding and stuffing materials (except of rubber or

20  plastics); and raw fibrous textile materials.

21         23.  Class 23.--Yarns and threads for textile use.

22         24.  Class 24.--Textiles and textile goods not included

23  in other classes and bed and table covers.

24         25.  Class 25.--Clothing, footwear, and  headgear.

25         26.  Class 26.--Lace and embroidery, ribbons, and

26  braid; buttons, hooks and eyes, pins, and needles; and

27  artificial flowers.

28         27.  Class 27.--Carpets, rugs, mats and matting,

29  linoleum, and other materials for covering existing floors;

30  and wall hangings (nontextile).

31  

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 1         28.  Class 28.--Games and playthings; gymnastic and

 2  sporting articles not included in other classes; and

 3  decorations for Christmas trees.

 4         29.  Class 29.--Meat, fish, poultry, and game; meat

 5  extracts; preserved, dried, and cooked fruits and vegetables;

 6  jellies, jams, and compotes; eggs, milk, and milk products;

 7  and edible oils and fats.

 8         30.  Class 30.--Coffee, tea, cocoa, sugar, rice,

 9  tapioca, sago, and artificial coffee; flour and preparations

10  made from cereals, bread, pastry and confectionery, and ices;

11  honey and treacle; yeast, baking powder; salt, and mustard;

12  vinegar and sauces (condiments); spices; and ice.

13         31.  Class 31.--Agricultural, horticultural, and

14  forestry products and grains not included in other classes;

15  live animals; fresh fruits and vegetables; seeds, natural

16  plants, and flowers; foodstuffs for animals and malt.

17         32.  Class 32.--Beers; mineral and aerated waters and

18  other nonalcoholic drinks; fruit drinks and fruit juices; and

19  syrups and other preparations for making beverages.

20         33.  Class 33.--Alcoholic beverages except beers.

21         34.  Class 34.--Tobacco; smokers' articles; and

22  matches.

23         (b)  Services:

24         1.  Class 35.--Advertising; business management;

25  business administration; and office functions.

26         2.  Class 36.--Insurance; financial affairs; monetary

27  affairs; and real estate affairs.

28         3.  Class 37.--Building construction; repair; and

29  installation services.

30         4.  Class 38.--Telecommunications.

31  

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 1         5.  Class 39.--Transport; packaging and storage of

 2  goods; and travel arrangements.

 3         6.  Class 40.--Treatment of materials.

 4         7.  Class 41.--Education; providing of training;

 5  entertainment; and sporting and cultural activities.

 6         8.  Class 42.--Scientific and technological services

 7  and research and design relating thereto; industrial analysis

 8  and research services; design and development of computer

 9  hardware and software; and legal services.

10         9.  Class 43.--Services for providing food and drink;

11  and temporary accommodation.

12         10.  Class 44.--Medical services; veterinary services;

13  hygienic and beauty care for human beings or animals; and

14  agriculture, horticulture, and forestry services.

15         11.  Class 45.--Personal and social services rendered

16  by others to meet the needs of individuals; and security

17  services for the protection of property and individuals.

18         (c)  Certification and collective membership marks:

19         1.  Class 200.--Collective membership marks.

20         2.  Class A.--Certification marks for goods.

21         3.  Class B.--Certification marks for services.

22         (d)  The goods and services recited in collective

23  trademark and collective service mark applications are

24  assigned to the same classes that are appropriate for those

25  goods and services in general.

26         (2)  The establishment of the classes of goods and

27  services set forth in subsection (1) is not for the purpose of

28  limiting or extending the rights of the applicant or

29  registrant. A single application for registration of a mark

30  may include any or all goods upon which, or services with

31  which, the mark is actually being used comprised in one or

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 1  more of the classes listed, but in the event that a single

 2  application includes goods or services in connection with

 3  which the mark is being used which fall within different

 4  classes of goods or services, a fee equaling the sum of the

 5  fees for registration in each class shall be payable.

 6         Section 14.  Section 495.131, Florida Statutes, is

 7  amended to read:

 8         495.131  Infringement.--Subject to the provisions of s.

 9  495.161, any person who shall, without the consent of the

10  registrant:

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

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

13  mark registered under this chapter on any goods or in

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

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

16  which such use is likely to cause confusion, or to cause

17  mistake, or to deceive as to the source or origin of such

18  goods or services; or

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

20  a any such mark registered under this chapter and apply such

21  reproduction, counterfeit, copy, or colorable imitation to

22  labels, signs, prints, packages, wrappers, receptacles, or

23  advertisements intended to be used upon or in connection

24  conjunction with the sale, offering for sale, distribution, or

25  advertising in this state of goods or services on or in

26  connection with which such use is likely to cause confusion,

27  to cause mistake, or to deceive;

28  

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

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

31  495.141, except that under subsection (2) hereof the

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 1  registrant shall not be entitled to recover profits or damages

 2  unless the acts have been committed with knowledge that such

 3  mark is intended to be used to cause confusion or mistake or

 4  to deceive.

 5         Section 15.  Section 495.141, Florida Statutes, is

 6  amended to read:

 7         495.141  Remedies.--

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

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

10  or sale of any counterfeits or imitations thereof and any

11  court of competent jurisdiction may grant injunctions to

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

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

14  defendants to pay to such owner all profits derived from

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

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

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

18  counterfeits or imitations in the possession or under the

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

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

21  In assessing profits the plaintiff shall be required to prove

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

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

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

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

26  exceeding three 3 times such amount. If the court shall find

27  that the amount of the recovery based on profits is either

28  inadequate or excessive the court may in its discretion enter

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

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

31  of the above circumstances shall constitute compensation and

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 1  not a penalty. The court may also award reasonable attorney's

 2  fees to the prevailing party according to the circumstances of

 3  the case.

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

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

 6  penal law of this state.

 7         Section 16.  Section 495.145, Florida Statutes, is

 8  created to read:

 9         495.145  Forum for actions regarding registration.--An

10  action seeking cancellation of a registration of a mark

11  registered under this chapter may be brought in any court of

12  competent jurisdiction in this state. Service of process on a

13  nonresident registrant may be made in accordance with s.

14  48.181. The Department of State shall not be made a party to

15  cancellation proceedings.

16         Section 17.  Section 495.151, Florida Statutes, is

17  amended to read:

18         (Substantial rewording of section. See

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

20         495.151  Dilution.--

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

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

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

24  injunction and to obtain such other relief against another

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

26  begins after the mark has become famous and is likely to cause

27  dilution of the distinctive quality of the famous mark, as

28  provided in this section. In determining whether a mark is

29  distinctive and famous, a court may consider factors,

30  including, but not limited to:

31  

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 1         (a)  The degree of inherent or acquired distinctiveness

 2  of the mark in this state.

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

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

 5  used.

 6         (c)  The duration and extent of advertising and

 7  publicity of the mark in this state.

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

 9  which the mark is used.

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

11  with which the mark is used.

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

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

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

15  sought.

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

17  similar mark by third parties.

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

19  registration in this state or a federal registration under the

20  federal act of March 3, 1881, or the federal act of February

21  20, 1905, or a principal register registration under the

22  federal act of July 5, 1946.

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

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

25  in this state unless the person against whom the injunctive

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

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

28  willful intent is proven, and the mark is registered in this

29  state, the owner shall also be entitled to all remedies set

30  forth in this chapter, subject to the discretion of the court

31  and the principles of equity.

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 1         (3)  The following shall not be actionable under this

 2  section:

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

 4  comparative commercial advertising or promotion to identify

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

 6  mark.

 7         (b)  Noncommercial use of the mark.

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

 9         Section 18.  Section 495.161, Florida Statutes, is

10  amended to read:

11         495.161  Common-law rights.--Nothing herein shall

12  adversely affect or diminish the rights or the enforcement of

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

14  law.

15         Section 19.  Section 495.171, Florida Statutes, is

16  amended to read:

17         495.171  Effective date; repeal of conflicting prior

18  acts.--

19         (1)  This chapter, as amended by this act, shall be in

20  force and take effect January October 1, 2007 1967, after its

21  enactment, but shall not affect any suit, proceeding, or

22  appeal then pending.

23         (2)  Sections 506.06-506.13 Former ss. 495.01-495.14

24  are repealed on July 1, 2006 the effective date of this act,

25  provided that as to any suit, proceeding or appeal, and for

26  that purpose only, pending at the time this chapter, as

27  amended by this act, takes effect such repeal shall be deemed

28  not to be effective until final determination of said pending

29  suit, proceeding or appeal.

30         Section 20.  Section 495.181, Florida Statutes, is

31  amended to read:

                                  31

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 1         (Substantial rewording of section. See

 2         s. 495.181, F.S., for present text.)

 3         495.181  Construction of chapter.--The intent of this

 4  chapter is to provide a system of state trademark registration

 5  and protection substantially consistent with the federal

 6  system of trademark registration and protection under the

 7  Trademark Act of 1946, as amended. To that end, the

 8  construction given the federal act should be examined as

 9  persuasive authority for interpreting and construing this

10  chapter.

11         Section 21.  Section 495.191, Florida Statutes, is

12  created to read:

13         495.191  Fees.--Filing and other applicable fees

14  payable to the Department of State under this chapter shall be

15  as follows:

16         (1)  Application filing fee: $87.50 per class.

17         (2)  Renewal application fee: $87.50 per class.

18         (3)  Assignment filing fee: $87.50 per class.

19         (4)  Certificate of name change filing fee: $50.00.

20         (5)  Voluntary cancellation filing fee: $87.50.

21         (6)  Certificate of registration under seal: $8.75.

22         (7)  Certified copy of application file: $52.50.

23         Section 22.  Sections 506.06, 506.07, 506.08, 506.09,

24  506.11, 506.12, and 506.13, Florida Statutes, are repealed.

25         Section 23.  This act shall take effect July 1, 2006.

26  

27  

28  

29  

30  

31  

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