Senate Bill sb2186c2

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    Florida Senate - 2006                    CS for CS for SB 2186

    By the Committees on Judiciary; Commerce and Consumer
    Services; and Senator Campbell




    590-2343-06

  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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 1         effectiveness of a registration; 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 as 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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 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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 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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 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" means the Florida Department of State

 7  or its designee charged with the administration of this

 8  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, service mark,

16  certification mark, or collective mark entitled to

17  registration 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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 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 is used or displayed in

30  the sale or advertising of services and the services are

31  rendered in this state.

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 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 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  them; or their source or origin, or

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

 2  services of the applicant, is primarily geographically

 3  deceptively misdescriptive of them;

 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 (e) 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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 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 to be

 8  furnished by the department, an application for registration

 9  of that trademark or service mark setting forth, but not

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

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

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

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

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

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

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

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

22  the applicant's predecessor; and

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

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

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

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

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

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

29  likely, when applied to the goods or services of such other

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

31  confuse or to be mistaken therefor.

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 1         (2)  Every applicant for registration of a

 2  certification mark in this state shall file with the

 3  department of State, in a manner and on a form complying with

 4  the requirements of to be furnished by the department, an

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

 6  information:

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

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

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

10  state under the authority of the applicant;

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

12  the certification mark is used in this state; and

13         (d)  A statement that the applicant is exercising

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

15  herself or himself engaged in the production or marketing of

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

17  no person except the applicant or persons authorized by the

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

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

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

21  or confuse or to be mistaken therefor.

22         (3)  Every applicant for registration of a collective

23  mark in this state shall file with the department of State, in

24  a manner and on a form complying with the requirements of to

25  be furnished by the department, an application setting forth,

26  but not limited to, the following information:

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

28  (b);

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

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

31  

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 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, when applied to the goods or services of such

11  other person, to cause confusion, to cause mistake, or to

12  deceive or confuse or to be mistaken therefor.

13         (4)  The department may also require that a drawing of

14  the mark, complying with the requirements of the department,

15  accompany the application.

16         (5)(4)  Every application under this section shall be

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

18  firm or an officer or other authorized representative of the

19  business entity of the corporation, association, union or

20  other organization applying.

21         (6)(5)  Every application under this section shall be

22  accompanied by three specimens or facsimiles showing the mark

23  as actually used a specimen or facsimile of such mark in

24  triplicate.

25         (7)(6)  Every application under this section shall be

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

27  department in accordance with s. 495.191 of State, for each

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

29  connection with which the mark is used.

30         Section 6.  Section 495.035, Florida Statutes, is

31  created to read:

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 1         495.035  Filing of applications.--

 2         (1)  Upon the receipt of an application for

 3  registration and payment of the application fee, the

 4  department may cause the application to be examined for

 5  conformity with this chapter.

 6         (2)  The applicant shall provide any additional

 7  pertinent information requested by the department, including a

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

 9  department to make, such amendments to the application as may

10  be reasonably requested by the department or deemed by

11  applicant to be advisable to respond to any rejection or

12  objection.

13         (3)  The department may require the applicant to

14  disclaim an unregistrable component of a mark otherwise

15  registrable, and an applicant may voluntarily disclaim a

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

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

18  rights then existing or thereafter arising in the disclaimed

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

20  registration on another application, if the disclaimed matter

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

22  registrant's goods or services.

23         (4)  Amendments may be made by the department upon the

24  application submitted by the applicant upon the applicant's

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

26  submitted. Amendments to an otherwise properly filed

27  application shall not affect the application filing date for

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

29  priority rights.

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

31  registration, the department shall advise the applicant of the

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 1  rejection and of the reasons for rejection. The applicant

 2  shall have 3 months in which to reply or amend the

 3  application, in which event the application shall be

 4  reexamined. This procedure may be repeated until:

 5         (a)  The department makes final its refusal to register

 6  the mark; or

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

 8  application within the specified period, whereupon the

 9  application shall be abandoned.

10  

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

12  involving the mark, the department may extend the period of

13  time in which to respond to the rejection or suspend

14  examination of the application.

15         (6)  If the department makes final its refusal to

16  register the mark, the applicant may seek review of such

17  decision in accordance with ss. 120.569 and 120.57.

18         (7)  In the event of multiple applications concurrently

19  being processed by the department which seek registration of

20  the same or confusingly similar marks for the same or related

21  goods or services, the department shall grant priority to the

22  applications in order of receipt. If a prior-received

23  application is granted a registration, the other application

24  or applications shall then be rejected. The applicant of a

25  rejected application may bring an action for cancellation of

26  the registration upon grounds of prior or superior rights to

27  the mark, in accordance with the provisions of s. 495.101(3).

28         Section 7.  Section 495.041, Florida Statutes, is

29  amended to read:

30         495.041  Use by related companies.--Where a mark

31  registered or unregistered is or may be used legitimately by

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

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

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

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

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

 6  applicant for registration of a mark with respect to the

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

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

 9  the case may be.

10         Section 8.  Section 495.061, Florida Statutes, is

11  amended to read:

12         495.061  Certificate of registration.--

13         (1)  Upon compliance by the applicant with the

14  requirements of this chapter, the department of State shall

15  cause a certificate of registration to be issued and delivered

16  to the applicant. The certificate of registration shall be

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

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

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

20  of incorporation or organization, of the person claiming

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

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

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

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

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

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

27  of the registration.

28         (2)  Any certificate of registration issued by the

29  department of State under the provisions hereof or a copy

30  thereof duly certified by the department of State shall be

31  admissible in evidence as competent and sufficient proof of

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 1  the registration of such mark in any action or judicial

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

 3  facie evidence of the validity of the registration,

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

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

 6  connection with the goods or services specified in the

 7  certificate, subject to any conditions and limitations stated

 8  therein.

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

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

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

12  evidence of priority of ownership of such mark within this

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

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

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

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

17  connection with such goods or services.

18         Section 9.  Section 495.071, Florida Statutes, is

19  amended to read:

20         495.071  Duration and renewal.--

21         (1)  Registration of a mark hereunder shall be

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

23  registration and, upon application filed within 6 months prior

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

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

26  department of State, the registration may be renewed for a

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

28  application under this section shall be accompanied by a

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

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

31  to the department in accordance with s. 495.191 of State,

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 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 January 1, 2007,

 6  shall continue in effect for the unexpired term thereof and

 7  may be renewed by filing an application for renewal with the

 8  department in a manner and form complying with the

 9  requirements of the department and paying the renewal fee

10  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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 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 upon the payment of the recording fee payable to

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 1  the department in accordance with s. 495.191. In the case of a

 2  pending application for a mark that becomes approved for

 3  registration, the department shall issue a certificate of

 4  registration in the registrant's new name. In the case of a

 5  registered mark, the department shall issue a new certificate

 6  of registration in the registrant's new name for the remainder

 7  of the term of the registration or last renewal thereof. A

 8  person's failure to record a name change in accordance with

 9  this subsection shall not affect the person's substantive

10  rights in the mark or its registration.

11         (4)  Acknowledgment shall be prima facie evidence of

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

13  recorded by the department, the record shall be prima facie

14  evidence of execution.

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

16  perfected in accordance with chapter 679.

17         Section 11.  Section 495.091, Florida Statutes, is

18  amended to read:

19         495.091  Records.--The department of State shall keep

20  for public examination a record of all marks registered or

21  renewed under this chapter, including all documents recorded

22  under s. 495.081.

23         Section 12.  Section 495.101, Florida Statutes, is

24  amended to read:

25         495.101  Cancellation.--The department of State shall

26  cancel from the register:

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

28  chapter, all registrations under prior laws which are more

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

30  chapter.

31  

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

 2  department of State has received shall receive a voluntary

 3  request for cancellation by the registrant, which request

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

 5  of the department thereof from the registrant.

 6         (2)(3)  All registrations granted under this chapter

 7  and not renewed in accordance with the provisions hereof.

 8         (3)(4)  Any registration for concerning which a court

 9  of competent jurisdiction finds shall find that:

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

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

12  occurs:

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

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

15  circumstances. Nonuse for 2 consecutive years shall be prima

16  facie evidence of abandonment.

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

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

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

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

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

22  test for determining abandonment under this paragraph.

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

24  not the owner of the mark.

25         (c)  The registration was granted improperly.

26         (d)  The registration was obtained fraudulently.

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

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

29  has been registered.

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

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

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 1  registered by another person in the United States Patent and

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

 3  application for registration by the registrant hereunder, and

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

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

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

 7  States Patent and Trademark Office covering an area including

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

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

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

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

12  marketing of any goods or services to which the certification

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

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

15  registrant discriminately refuses refused to certify or to

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

17  maintains the standards or conditions which such mark

18  certifies. Nothing in this paragraph shall be deemed to

19  prohibit the registrant from using its certification mark in

20  advertising or promoting recognition of the certification

21  program or of the goods or services meeting the certification

22  standards of the registrant.

23         (4)(5)  When a court of competent jurisdiction shall

24  order cancellation of a registration on any ground.

25         Section 13.  Section 495.111, Florida Statutes, is

26  amended to read:

27         (Substantial rewording of section. See

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

29         495.111  Classification.--

30         (1)  The following general classes of goods and

31  services, conforming to the classification adopted by the

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 1  United States Patent and Trademark Office, are established for

 2  convenience of administration of this chapter:

 3         (a)  Goods:

 4         1.  Class 1  Chemicals used in industry, science, and

 5  photography; agriculture, horticulture, and forestry;

 6  unprocessed artificial resins and, unprocessed plastics;

 7  manures; fire extinguishing compositions; tempering and

 8  soldering preparations; chemical substances for preserving

 9  foodstuffs; tanning substances; and adhesives used in

10  industry.

11         2.  Class 2  Paints, varnishes, lacquers; preservatives

12  against rust and against deterioration of wood; colorants;

13  mordants; raw natural resins; and metals in foil and powder

14  form for painters, decorators, printers, and artists.

15         3.  Class 3  Bleaching preparations and other

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

17  abrasive preparations; soaps; perfumery, essential oils,

18  cosmetics, and hair lotions; and dentifrices.

19         4.  Class 4  Industrial oils and greases; lubricants;

20  dust absorbing, wetting, and binding compositions; fuels

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

22  wicks for lighting.

23         5.  Class 5  Pharmaceuticals and veterinary

24  preparations; sanitary preparations for medical purposes;

25  dietetic substances adapted for medical use and food for

26  babies; plasters and materials for dressings; material for

27  stopping teeth and dental wax; disinfectants; preparations for

28  destroying vermin; and fungicides and herbicides.

29         6.  Class 6  Common metals and their alloys; metal

30  building materials; transportable buildings of metal;

31  materials of metal for railway tracks; nonelectric cables and

                                  21

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

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

 3  metal not included in other classes; and ores.

 4         7.  Class 7  Machines and machine tools; motors and

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

 6  transmission components (except for land vehicles);

 7  agricultural implements other than hand-operated; incubators

 8  for eggs.

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

10  cutlery; side arms; and razors.

11         9.  Class 9  Scientific, nautical, surveying,

12  photographic, cinematographic, optical, weighing, measuring,

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

14  teaching apparatus and instruments; apparatus and instruments

15  for conducting, switching, transforming, accumulating,

16  regulating, or controlling electricity; apparatus for

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

18  magnetic data carriers and recording discs; automatic vending

19  machines and mechanisms for coin-operated apparatus; cash

20  registers, calculating machines, and data processing equipment

21  and computers; and fire-extinguishing apparatus.

22         10.  Class 10  Surgical, medical, dental, and

23  veterinary apparatus and instruments, artificial limbs, eyes,

24  and teeth; orthopedic articles; and suture materials.

25         11.  Class 11  Apparatus for lighting, heating, steam

26  generating, cooking, refrigerating, drying, ventilating, water

27  supply, and sanitary purposes.

28         12.  Class 12  Vehicles; apparatus for locomotion by

29  land, air, or water.

30         13.  Class 13  Firearms; ammunition and projectiles;

31  explosives; and fireworks.

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 1         14.  Class 14  Precious metals and their alloys and

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

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

 4  and chronometric instruments.

 5         15.  Class 15  Musical instruments.

 6         16.  Class 16  Paper, cardboard, and goods made from

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

 8  matter; bookbinding material; photographs; stationery;

 9  adhesives for stationery or household purposes; artists'

10  materials; paint brushes; typewriters and office requisites

11  (except furniture); instructional and teaching material

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

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

14  blocks.

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

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

17  other classes; plastics in extruded form for use in

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

19  flexible pipes not of metal.

20         18.  Class 18  Leather and imitations of leather and

21  goods made of these materials and not included in other

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

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

24  and saddlery.

25         19.  Class 19  Building materials (nonmetallic);

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

27  bitumen; nonmetallic transportable buildings; monuments, not

28  of metal.

29         20.  Class 20  Furniture, mirrors, and picture frames;

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

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

                                  23

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

 2  materials, or of plastics.

 3         21.  Class 21  Household or kitchen utensils and

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

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

 6  materials; articles for cleaning purposes; steel wool;

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

 8  and glassware, porcelain, and earthenware not included in

 9  other classes.

10         22.  Class 22  Ropes, string, nets, tents, awnings,

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

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

13  plastics); and raw fibrous textile materials.

14         23.  Class 23  Yarns and threads for textile use.

15         24.  Class 24  Textiles and textile goods not included

16  in other classes and bed and table covers.

17         25.  Class 25  Clothing, footwear, and headgear.

18         26.  Class 26  Lace and embroidery, ribbons, and braid;

19  buttons, hooks and eyes, pins, and needles; and artificial

20  flowers.

21         27.  Class 27  Carpets, rugs, mats and matting,

22  linoleum, and other materials for covering existing floors;

23  and wall hangings (nontextile).

24         28.  Class 28  Games and playthings; gymnastic and

25  sporting articles not included in other classes; and

26  decorations for Christmas trees.

27         29.  Class 29  Meat, fish, poultry, and game; meat

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

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

30  and edible oils and fats.

31  

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 1         30.  Class 30  Coffee, tea, cocoa, sugar, rice,

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

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

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

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

 6         31.  Class 31  Agricultural, horticultural, and

 7  forestry products and grains not included in other classes;

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

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

10         32.  Class 32  Beers; mineral and aerated waters and

11  other nonalcoholic drinks; fruit drinks and fruit juices; and

12  syrups and other preparations for making beverages.

13         33.  Class 33  Alcoholic beverages except beers.

14         34.  Class 34  Tobacco; smokers' articles; and matches.

15         (b)  Services:

16         1.  Class 35  Advertising; business management;

17  business administration; and office functions.

18         2.  Class 36  Insurance; financial affairs; monetary

19  affairs; and real estate affairs.

20         3.  Class 37  Building construction; repair; and

21  installation services.

22         4.  Class 38  Telecommunications.

23         5.  Class 39  Transport; packaging and storage of

24  goods; and travel arrangements.

25         6.  Class 40  Treatment of materials.

26         7.  Class 41  Education; providing of training;

27  entertainment; and sporting and cultural activities.

28         8.  Class 42  Scientific and technological services and

29  research and design relating thereto; industrial analysis and

30  research services; design and development of computer hardware

31  and software; and legal services.

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 1         9.  Class 43  Services for providing food and drink;

 2  and temporary accommodation.

 3         10.  Class 44  Medical services; veterinary services;

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

 5  agriculture, horticulture, and forestry services.

 6         11.  Class 45  Personal and social services rendered by

 7  others to meet the needs of individuals; and security services

 8  for the protection of property and individuals.

 9         (c)  Certification and collective membership marks:

10         1.  Class 200  Collective membership marks.

11         2.  Class A  Certification marks for goods.

12         3.  Class B  Certification marks for services.

13         (d)  The goods and services recited in collective

14  trademark and collective service mark applications are

15  assigned to the same classes that are appropriate for those

16  goods and services in general.

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

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

19  limiting or extending the rights of the applicant or

20  registrant. A single application for registration of a mark

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

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

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

24  application includes goods or services in connection with

25  which the mark is being used which fall within different

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

27  fees for registration in each class shall be payable.

28         Section 14.  Section 495.131, Florida Statutes, is

29  amended to read:

30  

31  

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 1         495.131  Infringement.--Subject to the provisions of s.

 2  495.161, any person who shall, without the consent of the

 3  registrant:

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

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

 6  mark registered under this chapter on any goods or  in

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

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

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

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

11  goods or services; or

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

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

14  reproduction, counterfeit, copy, or colorable imitation to

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

16  advertisements intended to be used upon or in connection

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

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

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

20  to cause mistake, or to deceive;

21  

22  Shall be liable in a civil action by the owner of such

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

24  495.141, except that under subsection (2) hereof the

25  registrant shall not be entitled to recover profits or damages

26  unless the acts have been committed with knowledge that such

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

28  to deceive.

29         Section 15.  Section 495.141, Florida Statutes, is

30  amended to read:

31         495.141  Remedies.--

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

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

 3  or sale of any counterfeits or imitations thereof and any

 4  court of competent jurisdiction may grant injunctions to

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

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

 7  defendants to pay to such owner all profits derived from

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

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

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

11  counterfeits or imitations in the possession or under the

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

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

14  In assessing profits the plaintiff shall be required to prove

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

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

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

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

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

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

21  inadequate or excessive the court may in its discretion enter

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

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

24  of the above circumstances shall constitute compensation and

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

26  fees to the prevailing party according to the circumstances of

27  the case.

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

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

30  penal law of this state.

31  

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 1         Section 16.  Section 495.145, Florida Statutes, is

 2  created to read:

 3         495.145  Forum for actions regarding registration.--An

 4  action seeking cancellation of a registration of a mark

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

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

 7  nonresident registrant may be made in accordance with s.

 8  48.181. The department shall not be made a party to

 9  cancellation proceedings.

10         Section 17.  Section 495.151, Florida Statutes, is

11  amended to read:

12         (Substantial rewording of section. See

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

14         495.151  Dilution.--

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

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

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

18  injunction and to obtain such other relief against another

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

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

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

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

23  distinctive and famous, a court may consider factors,

24  including, but not limited to:

25         (a)  The degree of inherent or acquired distinctiveness

26  of the mark in this state.

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

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

29  used.

30         (c)  The duration and extent of advertising and

31  publicity of the mark in this state.

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

 2  which the mark is used.

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

 4  with which the mark is used.

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

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

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

 8  sought.

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

10  similar mark by third parties.

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

12  registration in this state or a federal registration under the

13  Federal Trademark Act of March 3, 1881, or the Federal

14  Trademark Act of February 20, 1905, or a principal register

15  registration under the Federal Trademark Act of July 5, 1946.

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

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

18  in this state unless the person against whom the injunctive

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

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

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

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

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

24  and the principles of equity.

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

26  section:

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

28  comparative commercial advertising or promotion to identify

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

30  mark.

31         (b)  Noncommercial use of the mark.

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

 2         Section 18.  Section 495.161, Florida Statutes, is

 3  amended to read:

 4         495.161  Common-law rights.--Nothing herein shall

 5  adversely affect or diminish the rights or the enforcement of

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

 7  law.

 8         Section 19.  Section 495.171, Florida Statutes, is

 9  amended to read:

10         495.171  Effective date; repeal of conflicting prior

11  acts.--

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

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

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

15  appeal then pending.

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

17  are repealed on January 1, 2007 the effective date of this

18  act, provided that as to any suit, proceeding or appeal, and

19  for that purpose only, pending at the time this chapter, as

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

21  not to be effective until final determination of said pending

22  suit, proceeding or appeal.

23         Section 20.  Section 495.181, Florida Statutes, is

24  amended to read:

25         (Substantial rewording of section. See

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

27         495.181  Construction of chapter.--The intent of this

28  chapter is to provide a system of state trademark registration

29  and protection substantially consistent with the federal

30  system of trademark registration and protection under the

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

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 1  construction given the federal act should be examined as

 2  persuasive authority for interpreting and construing this

 3  chapter.

 4         Section 21.  Section 495.191, Florida Statutes, is

 5  created to read:

 6         495.191  Fees.--Filing and other applicable fees

 7  payable to the department under this chapter shall be as

 8  follows:

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

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

11         (3)  Assignment filing fee: $50 per class.

12         (4)  Certificate of name change filing fee: $50.

13         (5)  Voluntary cancellation filing fee: $50.

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

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

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

17  506.11, 506.12, and 506.13, Florida Statutes, are repealed.

18         Section 23.  This act shall take effect January 1,

19  2007.

20  

21          STATEMENT OF SUBSTANTIAL CHANGES CONTAINED IN
                       COMMITTEE SUBSTITUTE FOR
22                     CS for Senate Bill 2186

23                                 

24  The committee substitute adds the word "deceptively" to the
    phrase "primary geographically misdescriptive" (relating to
25  certain marks that are excluded from registration) to make the
    phrase conform to federal law. The committee substitute also
26  makes other technical changes to the bill.

27  

28  

29  

30  

31  

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