HB 7107

1	A bill to be entitled
2	An act relating to trademarks; creating s. 495.001, F.S.;
3	providing a short title; amending s. 495.011, F.S.;
4	providing definitions; amending s. 495.021, F.S.;
5	precluding registration of certain marks; repealing s.
6	495.027, F.S., relating to reservation of a mark; amending
7	s. 495.031, F.S.; providing requirements for information
8	to be contained in an application for registration of a
9	mark; authorizing the Department of State to require
10	certain information in an application; requiring that the
11	application be signed and verified by any of certain
12	persons; requiring that the application be accompanied by
13	three specimens showing the mark; requiring that the
14	application be accompanied by a fee; creating s. 495.035,
15	F.S.; providing filing guidelines for applications;
16	providing for disclaimers of unregistrable components;
17	providing for amendment and judicial review; providing for
18	priority of registrations; amending s. 495.041, F.S.;
19	providing that first use shall inure to the benefit of the
20	registrant or applicant under certain circumstances;
21	amending s. 495.061, F.S.; providing for the issuance of a
22	certificate of registration by the department; removing a
23	provision relating to reservation of a mark; amending s.
24	495.071, F.S.; providing guidelines for the renewal of
25	marks; revising duration of effectiveness of a
26	registration; amending s. 495.081, F.S.; providing for the
27	assignability of marks; authorizing a photocopy of an
28	assignment to be acceptable for recording; providing for
29	change of name certificates for registrants; authorizing
30	recordation of certain instruments; providing
31	acknowledgment of recording as prima facie evidence of the
32	execution of an assignment or other instrument; specifying
33	requirements for creation and perfection of security
34	interests in marks; amending s. 495.091, F.S.; requiring
35	the department to record all marks registered with the
36	state; amending s. 495.101, F.S.; requiring the department
37	to cancel certain marks; amending s. 495.111, F.S., which
38	establishes a classification of goods and services;
39	providing that a single application for registration of a
40	mark may include any or all goods upon which, or services
41	with which, the mark is actually being used comprised in
42	one or more of the classes listed; amending s. 495.131,
43	F.S.; revising infringement provisions to include an
44	element of lack of consent by the registrant; conforming
45	language; amending s. 495.141, F.S.; providing additional
46	remedies for the unauthorized use of a mark; creating s.
47	495.145, F.S.; providing a forum for actions regarding
48	registration; providing for service of process on
49	nonresident registrants; amending s. 495.151, F.S.;
50	providing for an injunction in cases of dilution of a
51	famous mark; providing factors to be considered in
52	determining that a mark is famous; providing damages in
53	certain circumstances of dilution; amending s. 495.161,
54	F.S.; deleting language relating to the diminishing of
55	certain common law rights; amending s. 495.171, F.S.;
56	providing effective date of changes to ch. 495, F.S., as
57	amended by the act; providing for repeal of conflicting
58	acts; providing application to pending actions; amending
59	s. 495.181, F.S.; providing construction and legislative
60	intent; creating s. 495.191, F.S.; providing certain fees;
61	repealing s. 506.06, F.S., relating to unlawful to
62	counterfeit trademark, to conform; repealing s. 506.07,
63	F.S., relating to filing of trademark or other form of
64	advertisement for record with Department of State, to
65	conform; repealing s. 506.08, F.S., relating to fee for
66	filing, to conform; repealing s. 506.09, F.S., relating to
67	civil remedies, to conform; repealing s. 506.11, F.S.,
68	relating to unlawful use of trademark, to conform;
69	repealing s. 506.12, F.S., relating to procuring the
70	filing of trademark or other form of advertisement by
71	fraudulent representations, to conform; repealing s.
72	506.13, F.S., relating to using the name or seal of
73	another, to conform; providing an effective date.
74
75	Be It Enacted by the Legislature of the State of Florida:
76
77	Section 1.  Section 495.001, Florida Statutes, is created
78	to read:
79	495.001  Short title.--This chapter may be cited as the
80	"Registration and Protection of Trademarks Act."
81	Section 2.  Section 495.011, Florida Statutes, is amended
82	to read:
83	(Substantial rewording of section. See
84	s. 495.011, F.S., for present text.)
85	495.011  Definitions.--As used in this chapter:
86	(1)  "Abandoned" applies to a mark when either of the
87	following occurs:
88	(a)  When its use has been discontinued with intent not to
89	resume such use. Intent not to resume use may be inferred from
90	circumstances. Nonuse for 3 consecutive years shall constitute
91	prima facie evidence of abandonment.
92	(b)  When any course of conduct of the owner, including
93	acts of omission or commission, causes the mark to lose its
94	significance as a mark.
95	(2)  "Applicant" means the person filing an application for
96	registration of a mark under this chapter and the legal
97	representatives, successors, or assigns of such person.
98	(3)  "Certification mark" means any word, name, symbol, or
99	device, or any combination thereof, used by a person other than
100	the owner of the mark to certify regional or other origin,
101	material, mode of manufacture, quality, accuracy, or other
102	characteristics of such person's goods or services or that the
103	work or labor on the goods or services was performed by members
104	of a union or other organization.
105	(4)  "Collective mark" means a trademark or service mark
106	used by the members of a cooperative, an association, or other
107	collective group or organization, and includes marks used to
108	indicate membership in a union, an association, or other
109	organization.
110	(5)  "Department" means the Florida Department of State or
111	its designee charged with the administration of this chapter.
112	(6)  "Dilution" means the lessening of the capacity of a
113	mark to identify and distinguish goods or services, regardless
114	of the presence or absence of:
115	(a)  Competition between the owner of the mark and other
116	parties.
117	(b)  Likelihood of confusion, mistake, or deception.
118	(7)  "Mark" includes any trademark, service mark,
119	certification mark, or collective mark entitled to registration
120	under this chapter, whether or not registered.
121	(8)  "Person," and any other word or term used to designate
122	the applicant or other party entitled to a benefit or privilege
123	or rendered liable under the provisions of this chapter, means a
124	juristic person as well as a natural person. "Juristic person"
125	includes a firm, partnership, corporation, union, association,
126	or other organization capable of suing and being sued in a court
127	of law.
128	(9)  "Registrant" means the person to whom the registration
129	of a mark under this chapter is issued and the legal
130	representatives, successors, or assigns of such person.
131	(10)  "Related company" means any person whose use of a
132	mark is controlled by the owner of the mark with respect to the
133	nature and quality of the goods or services on or in connection
134	with which the mark is used.
135	(11)  "Service mark" means any word, name, symbol, or
136	device, or any combination thereof, used by a person to identify
137	and distinguish the services of such person, including a unique
138	service, from the services of others, and to indicate the source
139	of the services, even if that source is unknown. Titles,
140	character names, and other distinctive features of radio or
141	television programs may be registered as service marks
142	notwithstanding that the person or the programs may advertise
143	the goods of the sponsor.
144	(12)  "Trade name" means any name used by a person to
145	identify a business or vocation of such person.
146	(13)  "Trademark" means any word, name, symbol, or device,
147	or any combination thereof, used by a person to identify and
148	distinguish the goods of such person, including a unique
149	product, from those manufactured or sold by others, and to
150	indicate the source of the goods, even if the source is unknown.
151	(14)  "Use" means the bona fide use of a mark in the
152	ordinary course of trade and not used merely for the purpose of
153	reserving a right in a mark. For purposes of this chapter, a
154	mark is deemed to be in use:
155	(a)  On goods when:
156	1.  The mark is placed in any manner on the goods, their
157	containers or the displays associated therewith, or on the tags
158	or labels affixed thereto, or, if the nature of the goods makes
159	such placement impracticable, on documents associated with the
160	goods or their sale; and
161	2.  The goods are sold or transported in this state.
162	(b)  On services when the mark used or displayed in the
163	sale or advertising of services and the services are rendered in
164	this state.
165	Section 3.  Subsection (1) of section 495.021, Florida
166	Statutes, is amended to read:
167	495.021  Registrability.--
168	(1)  A mark by which the goods or services of any applicant
169	for registration may be distinguished from the goods or services
170	of others shall not be registered if it:
171	(a)  Consists of or, comprises or includes immoral,
172	deceptive, or scandalous matter; or
173	(b)  Consists of or, comprises or includes matter which may
174	disparage or falsely suggest a connection with persons, living
175	or dead, institutions, beliefs, or national symbols, or bring
176	them into contempt, or disrepute; or
177	(c)  Consists of or , comprises or includes the flag or
178	coat of arms or other insignia of the United States, or of any
179	state or municipality, or of any foreign nation, or any
180	simulation thereof; or
181	(d)  Consists of or , comprises a or includes the name,
182	signature, or portrait identifying a particular of any living
183	individual, except by with her or his written consent, or the
184	name, signature, or portrait of a deceased President of the
185	United States during the lifetime of his widow or her widower,
186	if any, except by the written consent of the widow or widower;
187	or
188	(e)  Consists of a mark which:
189	1.  When used on or in connection with applied to the goods
190	or services of the applicant, is merely descriptive or
191	deceptively misdescriptive of the goods; them,
192	2.  When used on or in connection with applied to the goods
193	or services of the applicant, is primarily geographically
194	descriptive or deceptively misdescriptive of the goods; them or
195	their source or origin, or
196	3.  When used on or in connection with the goods of the
197	applicant, is primarily geographically misdescriptive of the
198	goods;
199	4.3.  Is primarily merely a surname; or,
200	5.  Comprises any matter that, as a whole, is functional.
201
202	Except as expressly excluded in subparagraphs 3. and 5.,
203	provided, however, that nothing in this paragraph shall prevent
204	the registration of a mark used in this state by the applicant
205	which has become distinctive of the applicant's goods or
206	services in this state or elsewhere. The department of State may
207	accept as prima facie evidence that the mark has become
208	distinctive, as used on or in connection with applied to the
209	applicant's goods or services, proof of substantially exclusive
210	and continuous use thereof as a mark by the applicant in this
211	state or elsewhere for the 5 years before next preceding the
212	date on which the claim of distinctiveness is made; or
213	(f)  Consists of or comprises a mark which so resembles a
214	mark registered in this state or a mark or trade name previously
215	used in this state by another and not abandoned, as to be
216	likely, when applied to the goods or services of the applicant,
217	to cause confusion or mistake or to deceive. Registration shall
218	not be denied solely on the basis of reservation or registration
219	by another of a corporate name or fictitious name that is the
220	same or similar to the mark for which registration is sought.
221	Section 4.  Section 495.027, Florida Statutes, is repealed.
222	Section 5.  Section 495.031, Florida Statutes, is amended
223	to read:
224	495.031  Application for registration.--
225	(1)  Subject to the limitations set forth in this chapter,
226	any person who adopts and uses a trademark or service mark in
227	this state may file with the department of State, in a manner
228	and on a form complying with the requirements of to be furnished
229	by the department, an application for registration of that
230	trademark or service mark setting forth, but not limited to, the
231	following information:
232	(a)  The name and business address of the person applying
233	for such registration, and, if a business entity, the place
234	corporation, the state of incorporation or organization;
235	(b)  The goods or services on or in connection with which
236	the mark is used and the mode or manner in which the mark is
237	used in connection with such goods or services and the class or
238	classes in which such goods or services fall;
239	(c)  The date when the mark was first used anywhere and the
240	date when it was first used in this state by the applicant, the
241	applicant's or her or his predecessor in interest, business or a
242	related company of the applicant or the applicant's predecessor;
243	and
244	(d)  A statement that the applicant is the owner of the
245	mark, that the mark is in use, and that, to the best of the
246	applicant's knowledge, no other person except a related company
247	has registered such mark in this state, or has the right to use
248	such mark in this state, either in the identical form thereof or
249	in such near resemblance thereto as to be likely when, applied
250	to the goods or services of such other person, to cause
251	confusion, to cause mistake, or to deceive or confuse or to be
252	mistaken therefor.
253	(2)  Every applicant for registration of a certification
254	mark in this state shall file with the department of State, in a
255	manner and on a form complying with the requirements of to be
256	furnished by the department, an application setting forth, but
257	not limited to, the following information:
258	(a)  The information required by paragraph (1)(a);
259	(b)  The date when the certification mark was first used
260	anywhere and the date when it was first used in this state under
261	the authority of the applicant;
262	(c)  The manner in which and the conditions under which the
263	certification mark is used in this state; and
264	(d)  A statement that the applicant is exercising control
265	over the use of the mark, that the applicant is not herself or
266	himself engaged in the production or marketing of the goods or
267	services to which the mark is applied, and that no person except
268	the applicant or persons authorized by the applicant, or related
269	companies thereof, has the right to use such mark in this state
270	either in the identical form thereof or in such near resemblance
271	thereto as to be likely to deceive or confuse or to be mistaken
272	therefor.
273	(3)  Every applicant for registration of a collective mark
274	in this state shall file with the department of State, in a
275	manner and on a form complying with the requirements of to be
276	furnished by the department, an application setting forth, but
277	not limited to, the following information:
278	(a)  The information required by paragraphs (1)(a) and (b);
279	(b)  The date when the collective mark was first used
280	anywhere and the date when it was first used in this state by
281	any member of the applicant or a related company of such member;
282	(c)  The class of persons entitled to use the mark,
283	indicating their relationship to the applicant, and the nature
284	of the applicant's control over the use of the mark; and
285	(d)  A statement that no person except the applicant or
286	members of the applicant, or related companies thereof, has the
287	right to use such mark in this state either in the identical
288	form thereof or in such near resemblance thereto as to be likely
289	to deceive or confuse or to be mistaken therefor.
290	(4)  The department may also require that a drawing of the
291	mark, complying with the requirements of the department,
292	accompany the application.
293	(5)(4)  Every application under this section shall be
294	signed and verified by the applicant or by a member of the firm
295	or an officer or other authorized representative of the business
296	entity of the corporation, association, union or other
297	organization applying.
298	(6)(5)  Every application under this section shall be
299	accompanied by three specimens showing the mark as actually used
300	a specimen or facsimile of such mark in triplicate.
301	(7)(6)  Every application under this section shall be
302	accompanied by a filing fee of $87.50, payable to the department
303	in accordance with s. 495.191 of State, for each class of goods
304	or services as specified in s. 495.111, in connection with which
305	the mark is used.
306	Section 6.  Section 495.035, Florida Statutes, is created
307	to read:
308	495.035  Filing of applications.--
309	(1)  Upon the receipt of an application for registration
310	and payment of the application fee, the department may cause the
311	application to be examined for conformity with this chapter.
312	(2)  The applicant shall provide any additional pertinent
313	information requested by the department, including a description
314	of a design mark, and may make, or authorize the department to
315	make, such amendments to the application as may be reasonably
316	requested by the department or deemed by applicant to be
317	advisable to respond to any rejection or objection.
318	(3)  The department may require the applicant to disclaim
319	an unregistrable component of a mark otherwise registrable, and
320	an applicant may voluntarily disclaim a component of a mark
321	sought to be registered. No disclaimer shall prejudice or affect
322	the applicant's or registrant's rights then existing or
323	thereafter arising in the disclaimed matter, or the applicant's
324	or registrant's rights of registration on another application,
325	if the disclaimed matter is or has become distinctive of the
326	applicant's or registrant's goods or services.
327	(4)  Amendments may be made by the department upon the
328	application submitted by the applicant upon the applicant's
329	agreement, or a new application may be required to be submitted.
330	Amendments to an otherwise properly filed application shall not
331	affect the application filing date for purposes of determining
332	the applicant's or registrant's filing priority rights.
333	(5)  If the applicant is found not to be entitled to
334	registration, the department shall advise the applicant of the
335	rejection and of the reasons for rejection. The applicant shall
336	have 3 months in which to reply or amend the application, in
337	which event the application shall be reexamined. This procedure
338	may be repeated until:
339	(a)  The department makes final its refusal to register the
340	mark; or
341	(b)  The applicant fails to reply or amend the application
342	within the specified period, whereupon the application shall be
343	abandoned.
344
345	For good cause shown, such as the pendency of litigation
346	involving the mark, the department may extend the period of time
347	in which to respond to the rejection or suspend examination of
348	the application.
349	(6)  If the department makes its final refusal to register
350	the mark, the applicant may seek review of such decision in
351	accordance with ss. 120.569 and 120.57.
352	(7)  In the event of multiple applications concurrently
353	being processed by the department which seek registration of the
354	same or confusingly similar marks for the same or related goods
355	or services, the department shall grant priority to the
356	applications in order of receipt. If a prior-received
357	application is granted a registration, the other application or
358	applications shall then be rejected. The applicant of a rejected
359	application may bring an action for cancellation of the
360	registration upon grounds of prior or superior rights to the
361	mark, in accordance with the provisions of s. 495.101(3).
362	Section 7.  Section 495.041, Florida Statutes, is amended
363	to read:
364	495.041  Use by related companies.--Where a mark registered
365	or unregistered is or may be used legitimately by related
366	companies, such use shall inure to the benefit of the owner of
367	the mark, and such use shall not affect the validity of such
368	mark or of its registration, provided such mark is not used in
369	such manner as to deceive the public. If first use of a mark by
370	a person is controlled by the registrant or applicant for
371	registration of a mark with respect to the nature and quality of
372	the goods or services, such first use shall inure to the benefit
373	of that registrant or applicant, as the case may be.
374	Section 8.  Section 495.061, Florida Statutes, is amended
375	to read:
376	495.061  Certificate of registration.--
377	(1)  Upon compliance by the applicant with the requirements
378	of this chapter, the department of State shall cause a
379	certificate of registration to be issued and delivered to the
380	applicant. The certificate of registration shall be issued under
381	the signature of the Secretary of State and the seal of the
382	state, and it shall show the name and business address and, if a
383	business entity corporation, the place state of incorporation or
384	organization, of the person claiming ownership of the mark in
385	this state, the date claimed for the first use of the mark
386	anywhere and the date claimed for the first use of the mark in
387	this state, the class or classes of goods or services and a
388	description of the goods or services on or in connection with on
389	which the mark is used, a reproduction of the mark, the
390	registration date and the term of the registration.
391	(2)  Any certificate of registration issued by the
392	department of State under the provisions hereof or a copy
393	thereof duly certified by the department of State shall be
394	admissible in evidence as competent and sufficient proof of the
395	registration of such mark in any action or judicial proceedings
396	in any court of this state, and shall be prima facie evidence of
397	the validity of the registration, registrant's ownership of the
398	mark, and of registrant's exclusive right to use the mark in
399	this state on or in connection with the goods or services
400	specified in the certificate, subject to any conditions and
401	limitations stated therein.
402	(3)  Contingent on the registration of a mark under this
403	chapter, the reservation of such mark based on intent to use, as
404	provided in this chapter, shall be prima facie evidence of
405	priority of ownership of such mark within this state on or in
406	connection with the goods or services specified in the
407	reservation against any other person, except for a person whose
408	mark has not been abandoned and who, prior to such reservation,
409	has used the mark within this state on or in connection with
410	such goods or services.
411	Section 9.  Section 495.071, Florida Statutes, is amended
412	to read:
413	495.071  Duration and renewal.--
414	(1)  Registration of a mark hereunder shall be effective
415	for a term of 5 10 years from the date of registration and, upon
416	application filed within 6 months prior to the expiration of
417	such term, in a manner and form complying with the requirements
418	of on a form to be furnished by the department of State, the
419	registration may be renewed for a like term beginning at the end
420	of the expiring term. Every application under this section shall
421	be accompanied by a filing fee A renewal fee of $87.50 for each
422	class of goods or services with respect to which such renewal is
423	sought, payable to the department in accordance with s. 495.191
424	of State, shall accompany the application for renewal of the
425	registration.
426	(2)  A mark registration may be renewed for successive
427	periods of 5 10 years in like manner.
428	(3)  Any registration in effect on January 1, 2007, shall
429	continue in effect for the unexpired term thereof and may be
430	renewed by filing an application for renewal with the department
431	in a manner and form complying with the requirements of the
432	department and paying the renewal fee therefor within 6 months
433	prior to the expiration of the registration. The Department of
434	State shall notify registrants of marks hereunder of the
435	necessity of renewal within the year next preceding the
436	expiration of the 10 years from the date of registration by
437	writing to the last known address of the registrants. The
438	department shall prescribe the forms on which to make the
439	required notification and the renewal called for in subsection
440	(1) and may substitute the uniform business report, pursuant to
441	s. 606.06, as a means of satisfying the requirement of this
442	part.
443	(4)  All applications for renewal renewals under this
444	chapter, whether of registrations made under this act or of
445	registrations made under any prior acts, shall include a
446	verified statement that the mark is still in use in this state,
447	and shall include a specimen showing actual use of the mark on
448	or in connection with the goods or services subject to the
449	renewal application, or shall state that its nonuse is due to
450	special circumstances which excuse such nonuse and is not due to
451	any intention to abandon the mark.
452	Section 10.  Section 495.081, Florida Statutes, is amended
453	to read:
454	495.081  Assignments; changes of name; security interests
455	Assignment.--
456	(1)  A registered mark or a mark for which an application
457	for registration has been filed Any mark and its registration
458	hereunder shall be assignable with the goodwill good will of the
459	business in which the mark is used or with that part of the
460	goodwill good will of the business connected with the use of and
461	symbolized by the mark. Assignments Assignment shall be by an
462	instrument instruments in writing duly executed and may be
463	recorded with the department of State upon the payment of the
464	applicable a fee. A photocopy of an assignment shall be accepted
465	for recording if it is certified by any of the parties thereto,
466	or their successors, to be a true and correct copy of the
467	original. Upon recording of the assignment, of $50, payable to
468	the department of State which, upon recording of the assignment,
469	shall issue in the name of the assignee a new certificate for
470	the remainder of the term of the registration or of the last
471	renewal thereof.
472	(2)  An assignment of any registration under this chapter
473	shall be void as against any subsequent purchaser for valuable
474	consideration without notice, unless such assignment is recorded
475	with the department of State within 3 months after the date of
476	the assignment or prior to the subsequent purchase thereof or at
477	any time after the expiration of such 3-month period, unless an
478	assignment given in connection with any subsequent purchase is
479	recorded with the Department of State prior to or within 10 days
480	after such assignment is recorded.
481	(3)  A registrant or applicant for registration effecting a
482	change of the name may record a certificate of change of name of
483	the registrant or applicant with the department upon the payment
484	of the recording fee payable to the department in accordance
485	with s. 495.191. In the case of a pending application for a mark
486	that becomes approved for registration, the department shall
487	issue a certificate of registration in the registrant's new
488	name. In the case of a registered mark, the department shall
489	issue a new certificate of registration in the registrant's new
490	name for the remainder of the term of the registration or last
491	renewal thereof. A person's failure to record a name change in
492	accordance with this subsection shall not affect the person's
493	substantive rights in the mark or its registration.
494	(4)  Acknowledgment shall be prima facie evidence of the
495	execution of an assignment or other instrument and, when
496	recorded by the department, the record shall be prima facie
497	evidence of execution.
498	(5)  Security interests in marks shall be created and
499	perfected in accordance with chapter 679.
500	Section 11.  Section 495.091, Florida Statutes, is amended
501	to read:
502	495.091  Records.--The department of State shall keep for
503	public examination a record of all marks registered or renewed
504	under this chapter, including all documents recorded under s.
505	495.081.
506	Section 12.  Section 495.101, Florida Statutes, is amended
507	to read:
508	495.101  Cancellation.--The department of State shall
509	cancel from the register:
510	(1)  After 1 year from the effective date of this chapter,
511	all registrations under prior laws which are more than 10 years
512	old and not renewed in accordance with this chapter.
513	(1)(2)  Any registration for concerning which the
514	department of State has received shall receive a voluntary
515	request for cancellation by the registrant, which request shall
516	be in a manner and form complying with the requirements of the
517	department thereof from the registrant.
518	(2)(3)  All registrations granted under this chapter and
519	not renewed in accordance with the provisions hereof.
520	(3)(4)  Any registration for concerning which a court of
521	competent jurisdiction finds shall find that:
522	(a)  The registered mark has been abandoned. A mark shall
523	be deemed to be "abandoned" when either of the following occurs:
524	1.  When its use has been discontinued with intent not to
525	resume such use. Intent not to resume may be inferred from
526	circumstances. Nonuse for 2 consecutive years shall be prima
527	facie evidence of abandonment.
528	2.  When any course of conduct of the owner, including acts
529	of omission as well as commission, causes the mark to become the
530	generic name for the goods or services on or in connection with
531	which it is used, or otherwise to lose its significance as a
532	mark. Purchaser motivation shall not be a test for determining
533	abandonment under this paragraph.
534	(b)  The registrant of a trademark or service mark is not
535	the owner of the mark.
536	(c)  The registration was granted improperly.
537	(d)  The registration was obtained fraudulently.
538	(e)  The mark is or has become the generic name for the
539	goods or services, or a portion thereof, for which the mark has
540	been registered.
541	(f)(e)  The registered mark is so similar, as to be likely
542	to cause confusion or mistake or to deceive, to a mark
543	registered by another person in the United States Patent and
544	Trademark Office, prior to the date of the filing of the
545	application for registration by the registrant hereunder, and
546	not abandoned; provided, however, that should the registrant
547	prove that the registrant she or he is the owner of a concurrent
548	registration of a her or his mark in the United States Patent
549	and Trademark Office covering an area including this state, the
550	registration hereunder shall not be canceled.
551	(g)(f)  In the case of a certification mark, that the
552	registrant does not control or is not able to exercise control
553	over the use of such mark; or engages in the production or
554	marketing of any goods or services to which the certification
555	mark is applied; or the registrant permits the use of the
556	certification mark for purposes other than to certify; or the
557	registrant discriminately refuses refused to certify or to
558	continue to certify the goods or services of any person who
559	maintains the standards or conditions which such mark certifies.
560	Nothing in this paragraph shall be deemed to prohibit the
561	registrant from using its certification mark in advertising or
562	promoting recognition of the certification program or of the
563	goods or services meeting the certification standards of the
564	registrant.
565	(4)(5)  When a court of competent jurisdiction shall order
566	cancellation of a registration on any ground.
567	Section 13.  Section 495.111, Florida Statutes, is amended
568	to read:
569	(Substantial rewording of section. See
570	s. 495.111, F.S., for present text.)
571	495.111  Classification.--
572	(1)  The following general classes of goods and services,
573	conforming to the classification adopted by the United States
574	Patent and Trademark Office, are established for convenience of
575	administration of this chapter:
576	(a)  Goods:
577	1.  Class 1  Chemicals used in industry, science, and
578	photography; agriculture, horticulture, and forestry;
579	unprocessed artificial resins and, unprocessed plastics;
580	manures; fire extinguishing compositions; tempering and
581	soldering preparations; chemical substances for preserving
582	foodstuffs; tanning substances; and adhesives used in industry.
583	2.  Class 2  Paints, varnishes, lacquers; preservatives
584	against rust and against deterioration of wood; colorants;
585	mordants; raw natural resins; and metals in foil and powder form
586	for painters, decorators, printers, and artists.
587	3.  Class 3  Bleaching preparations and other substances
588	for laundry use; cleaning, polishing, scouring, and abrasive
589	preparations; soaps; perfumery, essential oils, cosmetics, and
590	hair lotions; and dentifrices.
591	4.  Class 4  Industrial oils and greases; lubricants; dust
592	absorbing, wetting, and binding compositions; fuels (including
593	motor spirit) and illuminants; and candles and wicks for
594	lighting.
595	5.  Class 5  Pharmaceuticals and veterinary preparations;
596	sanitary preparations for medical purposes; dietetic substances
597	adapted for medical use and food for babies; plasters and
598	materials for dressings; material for stopping teeth and dental
599	wax; disinfectants; preparations for destroying vermin; and
600	fungicides and herbicides.
601	6.  Class 6  Common metals and their alloys; metal building
602	materials; transportable buildings of metal; materials of metal
603	for railway tracks; nonelectric cables and wires of common
604	metal; ironmongery and small items of metal hardware; pipes and
605	tubes of metal; safes; goods of common metal not included in
606	other classes; and ores.
607	7.  Class 7  Machines and machine tools; motors and engines
608	(except for land vehicles); machine coupling and transmission
609	components (except for land vehicles); agricultural implements
610	other than hand-operated; incubators for eggs.
611	8.  Class 8  Hand tools and hand-operated implements;
612	cutlery; side arms; and razors.
613	9.  Class 9  Scientific, nautical, surveying, photographic,
614	cinematographic, optical, weighing, measuring, signaling,
615	checking (supervision), and life-saving and teaching apparatus
616	and instruments; apparatus and instruments for conducting,
617	switching, transforming, accumulating, regulating, or
618	controlling electricity; apparatus for recording, transmission,
619	or reproduction of sound or images; magnetic data carriers and
620	recording discs; automatic vending machines and mechanisms for
621	coin-operated apparatus; cash registers, calculating machines,
622	and data processing equipment and computers; and fire-
623	extinguishing apparatus.
624	10.  Class 10  Surgical, medical, dental, and veterinary
625	apparatus and instruments, artificial limbs, eyes, and teeth;
626	orthopedic articles; and suture materials.
627	11.  Class 11  Apparatus for lighting, heating, steam
628	generating, cooking, refrigerating, drying, ventilating, water
629	supply, and sanitary purposes.
630	12.  Class 12  Vehicles; apparatus for locomotion by land,
631	air, or water.
632	13.  Class 13  Firearms; ammunition and projectiles;
633	explosives; and fireworks.
634	14.  Class 14  Precious metals and their alloys and goods
635	in precious metals or coated therewith (not included in other
636	classes); jewelry and precious stones; and horological and
637	chronometric instruments.
638	15.  Class 15  Musical instruments.
639	16.  Class 16  Paper, cardboard, and goods made from these
640	materials (not included in other classes); printed matter;
641	bookbinding material; photographs; stationery; adhesives for
642	stationery or household purposes; artists' materials; paint
643	brushes; typewriters and office requisites (except furniture);
644	instructional and teaching material (except apparatus); plastic
645	materials for packaging (not included in other classes);
646	printers' type; and printing blocks.
647	17.  Class 17  Rubber, gutta-percha, gum, asbestos, mica,
648	and goods made from these materials and not included in other
649	classes; plastics in extruded form for use in manufacture;
650	packing, stopping, and insulating materials; and flexible pipes
651	not of metal.
652	18.  Class 18  Leather and imitations of leather and goods
653	made of these materials and not included in other classes;
654	animal skins and hides; trunks and traveling bags; umbrellas,
655	parasols, and walking sticks; and whips, harness, and saddlery.
656	19.  Class 19  Building materials (nonmetallic);
657	nonmetallic rigid pipes for building; asphalt, pitch, and
658	bitumen; nonmetallic transportable buildings; monuments, not of
659	metal.
660	20.  Class 20  Furniture, mirrors, and picture frames;
661	goods (not included in other classes) of wood, cork, reed, cane,
662	wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-
663	pearl, and meerschaum and substitutes for all these materials,
664	or of plastics.
665	21.  Class 21  Household or kitchen utensils and containers
666	(not of precious metal or coated therewith); combs and sponges;
667	brushes (except paint brushes); brush-making materials; articles
668	for cleaning purposes; steel wool; unworked or semiworked glass
669	(except glass used in building); and glassware, porcelain, and
670	earthenware not included in other classes.
671	22.  Class 22  Ropes, string, nets, tents, awnings,
672	tarpaulins, sails, sacks, and bags (not included in other
673	classes); padding and stuffing materials (except of rubber or
674	plastics); and raw fibrous textile materials.
675	23.  Class 23  Yarns and threads for textile use.
676	24.  Class 24  Textiles and textile goods not included in
677	other classes and bed and table covers.
678	25.  Class 25  Clothing, footwear, and  headgear.
679	26.  Class 26  Lace and embroidery, ribbons, and braid;
680	buttons, hooks and eyes, pins, and needles; and artificial
681	flowers.
682	27.  Class 27  Carpets, rugs, mats and matting, linoleum,
683	and other materials for covering existing floors; and wall
684	hangings (nontextile).
685	28.  Class 28  Games and playthings; gymnastic and sporting
686	articles not included in other classes; and decorations for
687	Christmas trees.
688	29.  Class 29  Meat, fish, poultry, and game; meat
689	extracts; preserved, dried, and cooked fruits and vegetables;
690	jellies, jams, and compotes; eggs, milk, and milk products; and
691	edible oils and fats.
692	30.  Class 30  Coffee, tea, cocoa, sugar, rice, tapioca,
693	sago, and artificial coffee; flour and preparations made from
694	cereals, bread, pastry and confectionery, and ices; honey and
695	treacle; yeast, baking powder; salt, and mustard; vinegar and
696	sauces (condiments); spices; and ice.
697	31.  Class 31  Agricultural, horticultural, and forestry
698	products and grains not included in other classes; live animals;
699	fresh fruits and vegetables; seeds, natural plants, and flowers;
700	foodstuffs for animals and malt.
701	32.  Class 32  Beers; mineral and aerated waters and other
702	nonalcoholic drinks; fruit drinks and fruit juices; and syrups
703	and other preparations for making beverages.
704	33.  Class 33  Alcoholic beverages except beers.
705	34.  Class 34  Tobacco; smokers' articles; and matches.
706	(b)  Services:
707	1.  Class 35  Advertising; business management; business
708	administration; and office functions.
709	2.  Class 36  Insurance; financial affairs; monetary
710	affairs; and real estate affairs.
711	3.  Class 37  Building construction; repair; and
712	installation services.
713	4.  Class 38  Telecommunications.
714	5.  Class 39  Transport; packaging and storage of goods;
715	and travel arrangements.
716	6.  Class 40  Treatment of materials.
717	7.  Class 41  Education; providing of training;
718	entertainment; and sporting and cultural activities.
719	8.  Class 42  Scientific and technological services and
720	research and design relating thereto; industrial analysis and
721	research services; design and development of computer hardware
722	and software; and legal services.
723	9.  Class 43  Services for providing food and drink; and
724	temporary accommodation.
725	10.  Class 44  Medical services; veterinary services;
726	hygienic and beauty care for human beings or animals; and
727	agriculture, horticulture, and forestry services.
728	11.  Class 45  Personal and social services rendered by
729	others to meet the needs of individuals; and security services
730	for the protection of property and individuals.
731	(c)  Certification and collective membership marks:
732	1.  Class 200  Collective membership marks.
733	2.  Class A  Certification marks for goods.
734	3.  Class B  Certification marks for services.
735	(d)  The goods and services recited in collective trademark
736	and collective service mark applications are assigned to the
737	same classes that are appropriate for those goods and services
738	in general.
739	(2)  The establishment of the classes of goods and services
740	set forth in subsection (1) is not for the purpose of limiting
741	or extending the rights of the applicant or registrant. A single
742	application for registration of a mark may include any or all
743	goods upon which, or services with which, the mark is actually
744	being used comprised in one or more of the classes listed, but
745	in the event that a single application includes goods or
746	services in connection with which the mark is being used which
747	fall within different classes of goods or services, a fee
748	equaling the sum of the fees for registration in each class
749	shall be payable.
750	Section 14.  Section 495.131, Florida Statutes, is amended
751	to read:
752	495.131  Infringement.--Subject to the provisions of s.
753	495.161, any person who shall, without the consent of the
754	registrant:
755	(1)  Use, without the consent of the registrant, any
756	reproduction, counterfeit, copy, or colorable imitation of a
757	mark registered under this chapter on any goods or in connection
758	with the sale, offering for sale, distribution, or advertising
759	of any goods or services on or in connection with which such use
760	is likely to cause confusion, or to cause mistake, or to deceive
761	as to the source or origin of such goods or services; or
762	(2)  Reproduce, counterfeit, copy, or colorably imitate a
763	any such mark registered under this chapter and apply such
764	reproduction, counterfeit, copy, or colorable imitation to
765	labels, signs, prints, packages, wrappers, receptacles, or
766	advertisements intended to be used upon or in connection
767	conjunction with the sale, offering for sale, distribution, or
768	advertising in this state of goods or services on or in
769	connection with which such use is likely to cause confusion, to
770	cause mistake, or to deceive;
771
772	shall be liable in a civil action by the owner of such
773	registered mark for any or all of the remedies provided in s.
774	495.141, except that under subsection (2) hereof the registrant
775	shall not be entitled to recover profits or damages unless the
776	acts have been committed with knowledge that such mark is
777	intended to be used to cause confusion or mistake or to deceive.
778	Section 15.  Section 495.141, Florida Statutes, is amended
779	to read:
780	495.141  Remedies.--
781	(1)  Any owner of a mark registered under this chapter may
782	proceed by suit to enjoin the manufacture, use, display, or sale
783	of any counterfeits or imitations thereof and any court of
784	competent jurisdiction may grant injunctions to restrain such
785	manufacture, use, display or sale as may be by the said court
786	deemed just and reasonable, and may require the defendants to
787	pay to such owner all profits derived from and/or all damages
788	suffered by reason of such wrongful manufacture, use, display,
789	or sale and to pay the costs of the action; and such court may
790	also order that any such counterfeits or imitations in the
791	possession or under the control of any defendant in such case be
792	delivered to an officer of the court, or to the complainant, to
793	be destroyed. In assessing profits the plaintiff shall be
794	required to prove defendant's sales only; defendant must prove
795	all elements of cost or deduction claimed. In assessing damages
796	the court may enter judgment, according to the circumstances of
797	the case, for any sum above the amount found as actual damages,
798	not exceeding three 3 times such amount. If the court shall find
799	that the amount of the recovery based on profits is either
800	inadequate or excessive the court may in its discretion enter
801	judgment for such sum as the court shall find to be just,
802	according to the circumstances of the case. Such sum in either
803	of the above circumstances shall constitute compensation and not
804	a penalty. The court may also award reasonable attorney's fees
805	to the prevailing party according to the circumstances of the
806	case.
807	(2)  The enumeration of any right or remedy herein shall
808	not affect a registrant's right to prosecute under any penal law
809	of this state.
810	Section 16.  Section 495.145, Florida Statutes, is created
811	to read:
812	495.145  Forum for actions regarding registration.--An
813	action seeking cancellation of a registration of a mark
814	registered under this chapter may be brought in any court of
815	competent jurisdiction in this state. Service of process on a
816	nonresident registrant may be made in accordance with s. 48.181.
817	The department shall not be made a party to cancellation
818	proceedings.
819	Section 17.  Section 495.151, Florida Statutes, is amended
820	to read:
821	(Substantial rewording of section. See
822	s. 495.151, F.S., for present text.)
823	495.151  Dilution.--
824	(1)  The owner of a mark that is famous in this state shall
825	be entitled, subject to the principles of equity and upon such
826	terms as the court deems reasonable, to an injunction and to
827	obtain such other relief against another person's commercial use
828	of a mark or trade name if such use begins after the mark has
829	become famous and is likely to cause dilution of the distinctive
830	quality of the famous mark, as provided in this section. In
831	determining whether a mark is distinctive and famous, a court
832	may consider factors, including, but not limited to:
833	(a)  The degree of inherent or acquired distinctiveness of
834	the mark in this state.
835	(b)  The duration and extent of use of the mark in
836	connection with the goods and services with which the mark is
837	used.
838	(c)  The duration and extent of advertising and publicity
839	of the mark in this state.
840	(d)  The geographical extent of the trading area in which
841	the mark is used.
842	(e)  The channels of trade for the goods or services with
843	which the mark is used.
844	(f)  The degree of recognition of the mark in the trading
845	areas and channels of trade in this state used by the mark's
846	owner and the person against whom the injunction is sought.
847	(g)  The nature and extent of use of the same or similar
848	mark by third parties.
849	(h)  Whether the mark is the subject of a state
850	registration in this state or a federal registration under the
851	Federal Trademark Act of March 3, 1881, or the Federal Trademark
852	Act of February 20, 1905, or a principal register registration
853	under the Federal Trademark Act of July 5, 1946.
854	(2)  In an action brought under this section, the owner of
855	a famous mark shall be entitled only to injunctive relief in
856	this state unless the person against whom the injunctive relief
857	is sought willfully intended to trade on the owner's reputation
858	or to cause dilution of the famous mark. If such willful intent
859	is proven, and the mark is registered in this state, the owner
860	shall also be entitled to all remedies set forth in this
861	chapter, subject to the discretion of the court and the
862	principles of equity.
863	(3)  The following shall not be actionable under this
864	section:
865	(a)  Fair use of a famous mark by another person in
866	comparative commercial advertising or promotion to identify the
867	competing goods or services of the owner of the famous mark.
868	(b)  Noncommercial use of the mark.
869	(c)  All forms of news reporting and news commentary.
870	Section 18.  Section 495.161, Florida Statutes, is amended
871	to read:
872	495.161  Common-law rights.--Nothing herein shall adversely
873	affect or diminish the rights or the enforcement of rights in
874	marks acquired in good faith at any time at common law.
875	Section 19.  Section 495.171, Florida Statutes, is amended
876	to read:
877	495.171  Effective date; repeal of conflicting prior
878	acts.--
879	(1)  This chapter, as amended by this act, shall be in
880	force and take effect January October 1, 2007 1967, after its
881	enactment, but shall not affect any suit, proceeding, or appeal
882	then pending.
883	(2)  Sections 506.06-506.13 Former ss. 495.01-495.14 are
884	repealed on January 1, 2007 the effective date of this act,
885	provided that as to any suit, proceeding or appeal, and for that
886	purpose only, pending at the time this chapter, as amended by
887	this act, takes effect such repeal shall be deemed not to be
888	effective until final determination of said pending suit,
889	proceeding or appeal.
890	Section 20.  Section 495.181, Florida Statutes, is amended
891	to read:
892	(Substantial rewording of section. See
893	s. 495.181, F.S., for present text.)
894	495.181  Construction of chapter.--The intent of this
895	chapter is to provide a system of state trademark registration
896	and protection substantially consistent with the federal system
897	of trademark registration and protection under the Trademark Act
898	of 1946, as amended. To that end, the construction given the
899	federal act should be examined as persuasive authority for
900	interpreting and construing this chapter.
901	Section 21.  Section 495.191, Florida Statutes, is created
902	to read:
903	495.191  Fees.--Filing and other applicable fees payable to
904	the department under this chapter shall be as follows:
905	(1)  Application filing fee: $87.50 per class.
906	(2)  Renewal application fee: $87.50 per class.
907	(3)  Assignment filing fee: $50 per class.
908	(4)  Certificate of name change filing fee: $50.
909	(5)  Voluntary cancellation filing fee: $50.
910	(6)  Certificate of registration under seal: $8.75.
911	(7)  Certified copy of application file: $52.50.
912	Section 22.  Sections 506.06, 506.07, 506.08, 506.09,
913	506.11, 506.12, and 506.13, Florida Statutes, are repealed.
914	Section 23.  This act shall take effect January 1, 2007.

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