HB 7107

1
A bill to be entitled
2An act relating to trademarks; creating s. 495.001, F.S.;
3providing a short title; amending s. 495.011, F.S.;
4providing definitions; amending s. 495.021, F.S.;
5precluding registration of certain marks; repealing s.
6495.027, F.S., relating to reservation of a mark; amending
7s. 495.031, F.S.; providing requirements for information
8to be contained in an application for registration of a
9mark; authorizing the Department of State to require
10certain information in an application; requiring that the
11application be signed and verified by any of certain
12persons; requiring that the application be accompanied by
13three specimens or facsimiles showing the mark; requiring
14that the application be accompanied by a fee; creating s.
15495.035, F.S.; providing filing guidelines for
16applications; providing for disclaimers of unregistrable
17components; providing for amendment and judicial review;
18providing for priority of registrations; amending s.
19495.041, F.S.; providing that first use shall inure to the
20benefit of the registrant or applicant under certain
21circumstances; amending s. 495.061, F.S.; providing for
22the issuance of a certificate of registration by the
23department; removing a provision relating to reservation
24of a mark; amending s. 495.071, F.S.; providing guidelines
25for the renewal of marks; revising duration of
26effectiveness of a registration; amending s. 495.081,
27F.S.; providing for the assignability of marks;
28authorizing a photocopy of an assignment to be acceptable
29for recording; providing for change of name certificates
30for registrants; authorizing recordation of certain
31instruments; providing acknowledgment of recording as
32prima facie evidence of the execution of an assignment or
33other instrument; specifying requirements for creation and
34perfection of security interests in marks; amending s.
35495.091, F.S.; requiring the department to record all
36marks registered with the state; amending s. 495.101,
37F.S.; requiring the department to cancel certain marks;
38amending s. 495.111, F.S., which establishes a
39classification of goods and services; providing that a
40single application for registration of a mark may include
41any or all goods upon which, or services with which, the
42mark is actually being used comprised in one or more of
43the classes listed; amending s. 495.131, F.S.; revising
44infringement provisions to include an element of lack of
45consent by the registrant; conforming language; amending
46s. 495.141, F.S.; providing additional remedies for the
47unauthorized use of a mark; creating s. 495.145, F.S.;
48providing a forum for actions regarding registration;
49providing for service of process on nonresident
50registrants; amending s. 495.151, F.S.; providing for an
51injunction in cases of dilution of a famous mark;
52providing factors to be considered in determining that a
53mark is famous; providing damages in certain circumstances
54of dilution; amending s. 495.161, F.S.; deleting language
55relating to the diminishing of certain common law rights;
56amending s. 495.171, F.S.; providing effective date of
57changes to ch. 495, F.S., as amended by the act; providing
58for repeal of conflicting acts; providing application to
59pending actions; amending s. 495.181, F.S.; providing
60construction and legislative intent; creating s. 495.191,
61F.S.; providing certain fees; repealing s. 506.06, F.S.,
62relating to unlawful to counterfeit trademark, to conform;
63repealing s. 506.07, F.S., relating to filing of trademark
64or other form of advertisement for record with Department
65of State, to conform; repealing s. 506.08, F.S., relating
66to fee for filing, to conform; repealing s. 506.09, F.S.,
67relating to civil remedies, to conform; repealing s.
68506.11, F.S., relating to unlawful use of trademark, to
69conform; repealing s. 506.12, F.S., relating to procuring
70the filing of trademark or other form of advertisement by
71fraudulent representations, to conform; repealing s.
72506.13, F.S., relating to using the name or seal of
73another, to conform; providing an effective date.
74
75Be It Enacted by the Legislature of the State of Florida:
76
77     Section 1.  Section 495.001, Florida Statutes, is created
78to 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
82to read:
83(Substantial rewording of section. See
84s. 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
87following occurs:
88     (a)  When its use has been discontinued with intent not to
89resume such use. Intent not to resume use may be inferred from
90circumstances. Nonuse for 3 consecutive years shall constitute
91prima facie evidence of abandonment.
92     (b)  When any course of conduct of the owner, including
93acts of omission or commission, causes the mark to lose its
94significance as a mark.
95     (2)  "Applicant" means the person filing an application for
96registration of a mark under this chapter and the legal
97representatives, successors, or assigns of such person.
98     (3)  "Certification mark" means any word, name, symbol, or
99device, or any combination thereof, used by a person other than
100the owner of the mark to certify regional or other origin,
101material, mode of manufacture, quality, accuracy, or other
102characteristics of such person's goods or services or that the
103work or labor on the goods or services was performed by members
104of a union or other organization.
105     (4)  "Collective mark" means a trademark or service mark
106used by the members of a cooperative, an association, or other
107collective group or organization, and includes marks used to
108indicate membership in a union, an association, or other
109organization.
110     (5)  "Department" means the Florida Department of State or
111its designee charged with the administration of this chapter.
112     (6)  "Dilution" means the lessening of the capacity of a
113mark to identify and distinguish goods or services, regardless
114of the presence or absence of:
115     (a)  Competition between the owner of the mark and other
116parties.
117     (b)  Likelihood of confusion, mistake, or deception.
118     (7)  "Mark" includes any trademark, service mark,
119certification mark, or collective mark entitled to registration
120under this chapter, whether or not registered.
121     (8)  "Person," and any other word or term used to designate
122the applicant or other party entitled to a benefit or privilege
123or rendered liable under the provisions of this chapter, means a
124juristic person as well as a natural person. "Juristic person"
125includes a firm, partnership, corporation, union, association,
126or other organization capable of suing and being sued in a court
127of law.
128     (9)  "Registrant" means the person to whom the registration
129of a mark under this chapter is issued and the legal
130representatives, successors, or assigns of such person.
131     (10)  "Related company" means any person whose use of a
132mark is controlled by the owner of the mark with respect to the
133nature and quality of the goods or services on or in connection
134with which the mark is used.
135     (11)  "Service mark" means any word, name, symbol, or
136device, or any combination thereof, used by a person to identify
137and distinguish the services of such person, including a unique
138service, from the services of others, and to indicate the source
139of the services, even if that source is unknown. Titles,
140character names, and other distinctive features of radio or
141television programs may be registered as service marks
142notwithstanding that the person or the programs may advertise
143the goods of the sponsor.
144     (12)  "Trade name" means any name used by a person to
145identify a business or vocation of such person.
146     (13)  "Trademark" means any word, name, symbol, or device,
147or any combination thereof, used by a person to identify and
148distinguish the goods of such person, including a unique
149product, from those manufactured or sold by others, and to
150indicate the source of the goods, even if the source is unknown.
151     (14)  "Use" means the bona fide use of a mark in the
152ordinary course of trade and not used merely for the purpose of
153reserving a right in a mark. For purposes of this chapter, a
154mark is deemed to be in use:
155     (a)  On goods when:
156     1.  The mark is placed in any manner on the goods, their
157containers or the displays associated therewith, or on the tags
158or labels affixed thereto, or, if the nature of the goods makes
159such placement impracticable, on documents associated with the
160goods or their sale; and
161     2.  The goods are sold or transported in this state.
162     (b)  On services when the mark is used or displayed in the
163sale or advertising of services and the services are rendered in
164this state.
165     Section 3.  Subsection (1) of section 495.021, Florida
166Statutes, is amended to read:
167     495.021  Registrability.--
168     (1)  A mark by which the goods or services of any applicant
169for registration may be distinguished from the goods or services
170of others shall not be registered if it:
171     (a)  Consists of or, comprises or includes immoral,
172deceptive, or scandalous matter; or
173     (b)  Consists of or, comprises or includes matter which may
174disparage or falsely suggest a connection with persons, living
175or dead, institutions, beliefs, or national symbols, or bring
176them into contempt, or disrepute; or
177     (c)  Consists of or , comprises or includes the flag or
178coat of arms or other insignia of the United States, or of any
179state or municipality, or of any foreign nation, or any
180simulation thereof; or
181     (d)  Consists of or , comprises a or includes the name,
182signature, or portrait identifying a particular of any living
183individual, except by with her or his written consent, or the
184name, signature, or portrait of a deceased President of the
185United States during the lifetime of his widow or her widower,
186if any, except by the written consent of the widow or widower;
187or
188     (e)  Consists of a mark which:
189     1.  When used on or in connection with applied to the goods
190or services of the applicant, is merely descriptive or
191deceptively misdescriptive of them;,
192     2.  When used on or in connection with applied to the goods
193or services of the applicant, is primarily geographically
194descriptive or deceptively misdescriptive of them; or their
195source or origin, or
196     3.  When used on or in connection with the goods or
197services of the applicant, is primarily geographically
198deceptively misdescriptive of them;
199     4.3.  Is primarily merely a surname; or,
200     5.  Comprises any matter that, as a whole, is functional.
201
202Except as expressly excluded in subparagraphs 3. and 5.,
203provided, however, that nothing in this paragraph shall prevent
204the registration of a mark used in this state by the applicant
205which has become distinctive of the applicant's goods or
206services in this state or elsewhere. The department of State may
207accept as prima facie evidence that the mark has become
208distinctive, as used on or in connection with applied to the
209applicant's goods or services, proof of substantially exclusive
210and continuous use thereof as a mark by the applicant in this
211state or elsewhere for the 5 years before next preceding the
212date on which the claim of distinctiveness is made; or
213     (f)  Consists of or comprises a mark which so resembles a
214mark registered in this state or a mark or trade name previously
215used in this state by another and not abandoned, as to be
216likely, when applied to the goods or services of the applicant,
217to cause confusion or mistake or to deceive. Registration shall
218not be denied solely on the basis of reservation or registration
219by another of a corporate name or fictitious name that is the
220same 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
223to read:
224     495.031  Application for registration.--
225     (1)  Subject to the limitations set forth in this chapter,
226any person who adopts and uses a trademark or service mark in
227this state may file with the department of State, in a manner
228and on a form complying with the requirements of to be furnished
229by the department, an application for registration of that
230trademark or service mark setting forth, but not limited to, the
231following information:
232     (a)  The name and business address of the person applying
233for such registration, and, if a business entity, the place
234corporation, the state of incorporation or organization;
235     (b)  The goods or services on or in connection with which
236the mark is used and the mode or manner in which the mark is
237used in connection with such goods or services and the class or
238classes in which such goods or services fall;
239     (c)  The date when the mark was first used anywhere and the
240date when it was first used in this state by the applicant, the
241applicant's or her or his predecessor in interest, business or a
242related company of the applicant or the applicant's predecessor;
243and
244     (d)  A statement that the applicant is the owner of the
245mark, that the mark is in use, and that, to the best of the
246applicant's knowledge, no other person except a related company
247has registered such mark in this state, or has the right to use
248such mark in this state, either in the identical form thereof or
249in such near resemblance thereto as to be likely, when applied
250to the goods or services of such other person, to cause
251confusion, to cause mistake, or to deceive or confuse or to be
252mistaken therefor.
253     (2)  Every applicant for registration of a certification
254mark in this state shall file with the department of State, in a
255manner and on a form complying with the requirements of to be
256furnished by the department, an application setting forth, but
257not 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
260anywhere and the date when it was first used in this state under
261the authority of the applicant;
262     (c)  The manner in which and the conditions under which the
263certification mark is used in this state; and
264     (d)  A statement that the applicant is exercising control
265over the use of the mark, that the applicant is not herself or
266himself engaged in the production or marketing of the goods or
267services to which the mark is applied, and that no person except
268the applicant or persons authorized by the applicant, or related
269companies thereof, has the right to use such mark in this state,
270either in the identical form thereof or in such near resemblance
271thereto as to be likely, when applied to the goods or services
272of such other person, to cause confusion, to cause mistake, or
273to deceive or confuse or to be mistaken therefor.
274     (3)  Every applicant for registration of a collective mark
275in this state shall file with the department of State, in a
276manner and on a form complying with the requirements of to be
277furnished by the department, an application setting forth, but
278not limited to, the following information:
279     (a)  The information required by paragraphs (1)(a) and (b);
280     (b)  The date when the collective mark was first used
281anywhere and the date when it was first used in this state by
282any member of the applicant or a related company of such member;
283     (c)  The class of persons entitled to use the mark,
284indicating their relationship to the applicant, and the nature
285of the applicant's control over the use of the mark; and
286     (d)  A statement that no person except the applicant or
287members of the applicant, or related companies thereof, has the
288right to use such mark in this state, either in the identical
289form thereof or in such near resemblance thereto as to be
290likely, when applied to the goods or services of such other
291person, to cause confusion, to cause mistake, or to deceive or
292confuse or to be mistaken therefor.
293     (4)  The department may also require that a drawing of the
294mark, complying with the requirements of the department,
295accompany the application.
296     (5)(4)  Every application under this section shall be
297signed and verified by the applicant or by a member of the firm
298or an officer or other authorized representative of the business
299entity of the corporation, association, union or other
300organization applying.
301     (6)(5)  Every application under this section shall be
302accompanied by three specimens or facsimiles showing the mark as
303actually used a specimen or facsimile of such mark in
304triplicate.
305     (7)(6)  Every application under this section shall be
306accompanied by a filing fee of $87.50, payable to the department
307in accordance with s. 495.191 of State, for each class of goods
308or services as specified in s. 495.111, in connection with which
309the mark is used.
310     Section 6.  Section 495.035, Florida Statutes, is created
311to read:
312     495.035  Filing of applications.--
313     (1)  Upon the receipt of an application for registration
314and payment of the application fee, the department may cause the
315application to be examined for conformity with this chapter.
316     (2)  The applicant shall provide any additional pertinent
317information requested by the department, including a description
318of a design mark, and may make, or authorize the department to
319make, such amendments to the application as may be reasonably
320requested by the department or deemed by applicant to be
321advisable to respond to any rejection or objection.
322     (3)  The department may require the applicant to disclaim
323an unregistrable component of a mark otherwise registrable, and
324an applicant may voluntarily disclaim a component of a mark
325sought to be registered. No disclaimer shall prejudice or affect
326the applicant's or registrant's rights then existing or
327thereafter arising in the disclaimed matter, or the applicant's
328or registrant's rights of registration on another application,
329if the disclaimed matter is or has become distinctive of the
330applicant's or registrant's goods or services.
331     (4)  Amendments may be made by the department upon the
332application submitted by the applicant upon the applicant's
333agreement, or a new application may be required to be submitted.
334Amendments to an otherwise properly filed application shall not
335affect the application filing date for purposes of determining
336the applicant's or registrant's filing priority rights.
337     (5)  If the applicant is found not to be entitled to
338registration, the department shall advise the applicant of the
339rejection and of the reasons for rejection. The applicant shall
340have 3 months in which to reply or amend the application, in
341which event the application shall be reexamined. This procedure
342may be repeated until:
343     (a)  The department makes final its refusal to register the
344mark; or
345     (b)  The applicant fails to reply or amend the application
346within the specified period, whereupon the application shall be
347abandoned.
348
349For good cause shown, such as the pendency of litigation
350involving the mark, the department may extend the period of time
351in which to respond to the rejection or suspend examination of
352the application.
353     (6)  If the department makes final its refusal to register
354the mark, the applicant may seek review of such decision in
355accordance with ss. 120.569 and 120.57.
356     (7)  In the event of multiple applications concurrently
357being processed by the department which seek registration of the
358same or confusingly similar marks for the same or related goods
359or services, the department shall grant priority to the
360applications in order of receipt. If a prior-received
361application is granted a registration, the other application or
362applications shall then be rejected. The applicant of a rejected
363application may bring an action for cancellation of the
364registration upon grounds of prior or superior rights to the
365mark, in accordance with the provisions of s. 495.101(3).
366     Section 7.  Section 495.041, Florida Statutes, is amended
367to read:
368     495.041  Use by related companies.--Where a mark registered
369or unregistered is or may be used legitimately by related
370companies, such use shall inure to the benefit of the owner of
371the mark, and such use shall not affect the validity of such
372mark or of its registration, provided such mark is not used in
373such manner as to deceive the public. If first use of a mark by
374a person is controlled by the registrant or applicant for
375registration of a mark with respect to the nature and quality of
376the goods or services, such first use shall inure to the benefit
377of that registrant or applicant, as the case may be.
378     Section 8.  Section 495.061, Florida Statutes, is amended
379to read:
380     495.061  Certificate of registration.--
381     (1)  Upon compliance by the applicant with the requirements
382of this chapter, the department of State shall cause a
383certificate of registration to be issued and delivered to the
384applicant. The certificate of registration shall be issued under
385the signature of the Secretary of State and the seal of the
386state, and it shall show the name and business address and, if a
387business entity corporation, the place state of incorporation or
388organization, of the person claiming ownership of the mark in
389this state, the date claimed for the first use of the mark
390anywhere and the date claimed for the first use of the mark in
391this state, the class or classes of goods or services and a
392description of the goods or services on or in connection with on
393which the mark is used, a reproduction of the mark, the
394registration date and the term of the registration.
395     (2)  Any certificate of registration issued by the
396department of State under the provisions hereof or a copy
397thereof duly certified by the department of State shall be
398admissible in evidence as competent and sufficient proof of the
399registration of such mark in any action or judicial proceedings
400in any court of this state, and shall be prima facie evidence of
401the validity of the registration, registrant's ownership of the
402mark, and of registrant's exclusive right to use the mark in
403this state on or in connection with the goods or services
404specified in the certificate, subject to any conditions and
405limitations stated therein.
406     (3)  Contingent on the registration of a mark under this
407chapter, the reservation of such mark based on intent to use, as
408provided in this chapter, shall be prima facie evidence of
409priority of ownership of such mark within this state on or in
410connection with the goods or services specified in the
411reservation against any other person, except for a person whose
412mark has not been abandoned and who, prior to such reservation,
413has used the mark within this state on or in connection with
414such goods or services.
415     Section 9.  Section 495.071, Florida Statutes, is amended
416to read:
417     495.071  Duration and renewal.--
418     (1)  Registration of a mark hereunder shall be effective
419for a term of 5 10 years from the date of registration and, upon
420application filed within 6 months prior to the expiration of
421such term, in a manner and form complying with the requirements
422of on a form to be furnished by the department of State, the
423registration may be renewed for a like term beginning at the end
424of the expiring term. Every application under this section shall
425be accompanied by a filing fee A renewal fee of $87.50 for each
426class of goods or services with respect to which such renewal is
427sought, payable to the department in accordance with s. 495.191
428of State, shall accompany the application for renewal of the
429registration.
430     (2)  A mark registration may be renewed for successive
431periods of 5 10 years in like manner.
432     (3)  Any registration in effect on January 1, 2007, shall
433continue in effect for the unexpired term thereof and may be
434renewed by filing an application for renewal with the department
435in a manner and form complying with the requirements of the
436department and paying the renewal fee therefor within 6 months
437prior to the expiration of the registration. The Department of
438State shall notify registrants of marks hereunder of the
439necessity of renewal within the year next preceding the
440expiration of the 10 years from the date of registration by
441writing to the last known address of the registrants. The
442department shall prescribe the forms on which to make the
443required notification and the renewal called for in subsection
444(1) and may substitute the uniform business report, pursuant to
445s. 606.06, as a means of satisfying the requirement of this
446part.
447     (4)  All applications for renewal renewals under this
448chapter, whether of registrations made under this act or of
449registrations made under any prior acts, shall include a
450verified statement that the mark is still in use in this state,
451and shall include a specimen showing actual use of the mark on
452or in connection with the goods or services subject to the
453renewal application, or shall state that its nonuse is due to
454special circumstances which excuse such nonuse and is not due to
455any intention to abandon the mark.
456     Section 10.  Section 495.081, Florida Statutes, is amended
457to read:
458     495.081  Assignments; changes of name; security interests
459Assignment.--
460     (1)  A registered mark or a mark for which an application
461for registration has been filed Any mark and its registration
462hereunder shall be assignable with the goodwill good will of the
463business in which the mark is used or with that part of the
464goodwill good will of the business connected with the use of and
465symbolized by the mark. Assignments Assignment shall be by an
466instrument instruments in writing duly executed and may be
467recorded with the department of State upon the payment of the
468applicable a fee. A photocopy of an assignment shall be accepted
469for recording if it is certified by any of the parties thereto,
470or their successors, to be a true and correct copy of the
471original. Upon recording of the assignment, of $50, payable to
472the department of State which, upon recording of the assignment,
473shall issue in the name of the assignee a new certificate for
474the remainder of the term of the registration or of the last
475renewal thereof.
476     (2)  An assignment of any registration under this chapter
477shall be void as against any subsequent purchaser for valuable
478consideration without notice, unless such assignment is recorded
479with the department of State within 3 months after the date of
480the assignment or prior to the subsequent purchase thereof or at
481any time after the expiration of such 3-month period, unless an
482assignment given in connection with any subsequent purchase is
483recorded with the Department of State prior to or within 10 days
484after such assignment is recorded.
485     (3)  A registrant or applicant for registration effecting a
486change of the name may record a certificate of change of name of
487the registrant or applicant with the department upon the payment
488of the recording fee payable to the department in accordance
489with s. 495.191. In the case of a pending application for a mark
490that becomes approved for registration, the department shall
491issue a certificate of registration in the registrant's new
492name. In the case of a registered mark, the department shall
493issue a new certificate of registration in the registrant's new
494name for the remainder of the term of the registration or last
495renewal thereof. A person's failure to record a name change in
496accordance with this subsection shall not affect the person's
497substantive rights in the mark or its registration.
498     (4)  Acknowledgment shall be prima facie evidence of the
499execution of an assignment or other instrument and, when
500recorded by the department, the record shall be prima facie
501evidence of execution.
502     (5)  Security interests in marks shall be created and
503perfected in accordance with chapter 679.
504     Section 11.  Section 495.091, Florida Statutes, is amended
505to read:
506     495.091  Records.--The department of State shall keep for
507public examination a record of all marks registered or renewed
508under this chapter, including all documents recorded under s.
509495.081.
510     Section 12.  Section 495.101, Florida Statutes, is amended
511to read:
512     495.101  Cancellation.--The department of State shall
513cancel from the register:
514     (1)  After 1 year from the effective date of this chapter,
515all registrations under prior laws which are more than 10 years
516old and not renewed in accordance with this chapter.
517     (1)(2)  Any registration for concerning which the
518department of State has received shall receive a voluntary
519request for cancellation by the registrant, which request shall
520be in a manner and form complying with the requirements of the
521department thereof from the registrant.
522     (2)(3)  All registrations granted under this chapter and
523not renewed in accordance with the provisions hereof.
524     (3)(4)  Any registration for concerning which a court of
525competent jurisdiction finds shall find that:
526     (a)  The registered mark has been abandoned. A mark shall
527be deemed to be "abandoned" when either of the following occurs:
528     1.  When its use has been discontinued with intent not to
529resume such use. Intent not to resume may be inferred from
530circumstances. Nonuse for 2 consecutive years shall be prima
531facie evidence of abandonment.
532     2.  When any course of conduct of the owner, including acts
533of omission as well as commission, causes the mark to become the
534generic name for the goods or services on or in connection with
535which it is used, or otherwise to lose its significance as a
536mark. Purchaser motivation shall not be a test for determining
537abandonment under this paragraph.
538     (b)  The registrant of a trademark or service mark is not
539the owner of the mark.
540     (c)  The registration was granted improperly.
541     (d)  The registration was obtained fraudulently.
542     (e)  The mark is or has become the generic name for the
543goods or services, or a portion thereof, for which the mark has
544been registered.
545     (f)(e)  The registered mark is so similar, as to be likely
546to cause confusion or mistake or to deceive, to a mark
547registered by another person in the United States Patent and
548Trademark Office, prior to the date of the filing of the
549application for registration by the registrant hereunder, and
550not abandoned; provided, however, that should the registrant
551prove that the registrant she or he is the owner of a concurrent
552registration of a her or his mark in the United States Patent
553and Trademark Office covering an area including this state, the
554registration hereunder shall not be canceled.
555     (g)(f)  In the case of a certification mark, that the
556registrant does not control or is not able to exercise control
557over the use of such mark; or engages in the production or
558marketing of any goods or services to which the certification
559mark is applied; or the registrant permits the use of the
560certification mark for purposes other than to certify; or the
561registrant discriminately refuses refused to certify or to
562continue to certify the goods or services of any person who
563maintains the standards or conditions which such mark certifies.
564Nothing in this paragraph shall be deemed to prohibit the
565registrant from using its certification mark in advertising or
566promoting recognition of the certification program or of the
567goods or services meeting the certification standards of the
568registrant.
569     (4)(5)  When a court of competent jurisdiction shall order
570cancellation of a registration on any ground.
571     Section 13.  Section 495.111, Florida Statutes, is amended
572to read:
573(Substantial rewording of section. See s. 495.111, F.S.,
574for present text.)
575     495.111  Classification.--
576     (1)  The following general classes of goods and services,
577conforming to the classification adopted by the United States
578Patent and Trademark Office, are established for convenience of
579administration of this chapter:
580     (a)  Goods:
581     1.  Class 1  Chemicals used in industry, science, and
582photography; agriculture, horticulture, and forestry;
583unprocessed artificial resins and, unprocessed plastics;
584manures; fire extinguishing compositions; tempering and
585soldering preparations; chemical substances for preserving
586foodstuffs; tanning substances; and adhesives used in industry.
587     2.  Class 2  Paints, varnishes, lacquers; preservatives
588against rust and against deterioration of wood; colorants;
589mordants; raw natural resins; and metals in foil and powder form
590for painters, decorators, printers, and artists.
591     3.  Class 3  Bleaching preparations and other substances
592for laundry use; cleaning, polishing, scouring, and abrasive
593preparations; soaps; perfumery, essential oils, cosmetics, and
594hair lotions; and dentifrices.
595     4.  Class 4  Industrial oils and greases; lubricants; dust
596absorbing, wetting, and binding compositions; fuels (including
597motor spirit) and illuminants; and candles and wicks for
598lighting.
599     5.  Class 5  Pharmaceuticals and veterinary preparations;
600sanitary preparations for medical purposes; dietetic substances
601adapted for medical use and food for babies; plasters and
602materials for dressings; material for stopping teeth and dental
603wax; disinfectants; preparations for destroying vermin; and
604fungicides and herbicides.
605     6.  Class 6  Common metals and their alloys; metal building
606materials; transportable buildings of metal; materials of metal
607for railway tracks; nonelectric cables and wires of common
608metal; ironmongery and small items of metal hardware; pipes and
609tubes of metal; safes; goods of common metal not included in
610other classes; and ores.
611     7.  Class 7  Machines and machine tools; motors and engines
612(except for land vehicles); machine coupling and transmission
613components (except for land vehicles); agricultural implements
614other than hand-operated; incubators for eggs.
615     8.  Class 8  Hand tools and hand-operated implements;
616cutlery; side arms; and razors.
617     9.  Class 9  Scientific, nautical, surveying, photographic,
618cinematographic, optical, weighing, measuring, signaling,
619checking (supervision), and life-saving and teaching apparatus
620and instruments; apparatus and instruments for conducting,
621switching, transforming, accumulating, regulating, or
622controlling electricity; apparatus for recording, transmission,
623or reproduction of sound or images; magnetic data carriers and
624recording discs; automatic vending machines and mechanisms for
625coin-operated apparatus; cash registers, calculating machines,
626and data processing equipment and computers; and fire-
627extinguishing apparatus.
628     10.  Class 10  Surgical, medical, dental, and veterinary
629apparatus and instruments, artificial limbs, eyes, and teeth;
630orthopedic articles; and suture materials.
631     11.  Class 11  Apparatus for lighting, heating, steam
632generating, cooking, refrigerating, drying, ventilating, water
633supply, and sanitary purposes.
634     12.  Class 12  Vehicles; apparatus for locomotion by land,
635air, or water.
636     13.  Class 13  Firearms; ammunition and projectiles;
637explosives; and fireworks.
638     14.  Class 14  Precious metals and their alloys and goods
639in precious metals or coated therewith (not included in other
640classes); jewelry and precious stones; and horological and
641chronometric instruments.
642     15.  Class 15  Musical instruments.
643     16.  Class 16  Paper, cardboard, and goods made from these
644materials (not included in other classes); printed matter;
645bookbinding material; photographs; stationery; adhesives for
646stationery or household purposes; artists' materials; paint
647brushes; typewriters and office requisites (except furniture);
648instructional and teaching material (except apparatus); plastic
649materials for packaging (not included in other classes);
650printers' type; and printing blocks.
651     17.  Class 17  Rubber, gutta-percha, gum, asbestos, mica,
652and goods made from these materials and not included in other
653classes; plastics in extruded form for use in manufacture;
654packing, stopping, and insulating materials; and flexible pipes
655not of metal.
656     18.  Class 18  Leather and imitations of leather and goods
657made of these materials and not included in other classes;
658animal skins and hides; trunks and traveling bags; umbrellas,
659parasols, and walking sticks; and whips, harness, and saddlery.
660     19.  Class 19  Building materials (nonmetallic);
661nonmetallic rigid pipes for building; asphalt, pitch, and
662bitumen; nonmetallic transportable buildings; monuments, not of
663metal.
664     20.  Class 20  Furniture, mirrors, and picture frames;
665goods (not included in other classes) of wood, cork, reed, cane,
666wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-
667pearl, and meerschaum and substitutes for all these materials,
668or of plastics.
669     21.  Class 21  Household or kitchen utensils and containers
670(not of precious metal or coated therewith); combs and sponges;
671brushes (except paint brushes); brush-making materials; articles
672for cleaning purposes; steel wool; unworked or semiworked glass
673(except glass used in building); and glassware, porcelain, and
674earthenware not included in other classes.
675     22.  Class 22  Ropes, string, nets, tents, awnings,
676tarpaulins, sails, sacks, and bags (not included in other
677classes); padding and stuffing materials (except of rubber or
678plastics); and raw fibrous textile materials.
679     23.  Class 23  Yarns and threads for textile use.
680     24.  Class 24  Textiles and textile goods not included in
681other classes and bed and table covers.
682     25.  Class 25  Clothing, footwear, and  headgear.
683     26.  Class 26  Lace and embroidery, ribbons, and braid;
684buttons, hooks and eyes, pins, and needles; and artificial
685flowers.
686     27.  Class 27  Carpets, rugs, mats and matting, linoleum,
687and other materials for covering existing floors; and wall
688hangings (nontextile).
689     28.  Class 28  Games and playthings; gymnastic and sporting
690articles not included in other classes; and decorations for
691Christmas trees.
692     29.  Class 29  Meat, fish, poultry, and game; meat
693extracts; preserved, dried, and cooked fruits and vegetables;
694jellies, jams, and compotes; eggs, milk, and milk products; and
695edible oils and fats.
696     30.  Class 30  Coffee, tea, cocoa, sugar, rice, tapioca,
697sago, and artificial coffee; flour and preparations made from
698cereals, bread, pastry and confectionery, and ices; honey and
699treacle; yeast, baking powder; salt, and mustard; vinegar and
700sauces (condiments); spices; and ice.
701     31.  Class 31  Agricultural, horticultural, and forestry
702products and grains not included in other classes; live animals;
703fresh fruits and vegetables; seeds, natural plants, and flowers;
704foodstuffs for animals and malt.
705     32.  Class 32  Beers; mineral and aerated waters and other
706nonalcoholic drinks; fruit drinks and fruit juices; and syrups
707and other preparations for making beverages.
708     33.  Class 33  Alcoholic beverages except beers.
709     34.  Class 34  Tobacco; smokers' articles; and matches.
710     (b)  Services:
711     1.  Class 35  Advertising; business management; business
712administration; and office functions.
713     2.  Class 36  Insurance; financial affairs; monetary
714affairs; and real estate affairs.
715     3.  Class 37  Building construction; repair; and
716installation services.
717     4.  Class 38  Telecommunications.
718     5.  Class 39  Transport; packaging and storage of goods;
719and travel arrangements.
720     6.  Class 40  Treatment of materials.
721     7.  Class 41  Education; providing of training;
722entertainment; and sporting and cultural activities.
723     8.  Class 42  Scientific and technological services and
724research and design relating thereto; industrial analysis and
725research services; design and development of computer hardware
726and software; and legal services.
727     9.  Class 43  Services for providing food and drink; and
728temporary accommodation.
729     10.  Class 44  Medical services; veterinary services;
730hygienic and beauty care for human beings or animals; and
731agriculture, horticulture, and forestry services.
732     11.  Class 45  Personal and social services rendered by
733others to meet the needs of individuals; and security services
734for the protection of property and individuals.
735     (c)  Certification and collective membership marks:
736     1.  Class 200  Collective membership marks.
737     2.  Class A  Certification marks for goods.
738     3.  Class B  Certification marks for services.
739     (d)  The goods and services recited in collective trademark
740and collective service mark applications are assigned to the
741same classes that are appropriate for those goods and services
742in general.
743     (2)  The establishment of the classes of goods and services
744set forth in subsection (1) is not for the purpose of limiting
745or extending the rights of the applicant or registrant. A single
746application for registration of a mark may include any or all
747goods upon which, or services with which, the mark is actually
748being used comprised in one or more of the classes listed, but
749in the event that a single application includes goods or
750services in connection with which the mark is being used which
751fall within different classes of goods or services, a fee
752equaling the sum of the fees for registration in each class
753shall be payable.
754     Section 14.  Section 495.131, Florida Statutes, is amended
755to read:
756     495.131  Infringement.--Subject to the provisions of s.
757495.161, any person who shall, without the consent of the
758registrant:
759     (1)  Use, without the consent of the registrant, any
760reproduction, counterfeit, copy, or colorable imitation of a
761mark registered under this chapter on any goods or in connection
762with the sale, offering for sale, distribution, or advertising
763of any goods or services on or in connection with which such use
764is likely to cause confusion, or to cause mistake, or to deceive
765as to the source or origin of such goods or services; or
766     (2)  Reproduce, counterfeit, copy, or colorably imitate a
767any such mark registered under this chapter and apply such
768reproduction, counterfeit, copy, or colorable imitation to
769labels, signs, prints, packages, wrappers, receptacles, or
770advertisements intended to be used upon or in connection
771conjunction with the sale, offering for sale, distribution, or
772advertising in this state of goods or services on or in
773connection with which such use is likely to cause confusion, to
774cause mistake, or to deceive;
775
776shall be liable in a civil action by the owner of such
777registered mark for any or all of the remedies provided in s.
778495.141, except that under subsection (2) hereof the registrant
779shall not be entitled to recover profits or damages unless the
780acts have been committed with knowledge that such mark is
781intended to be used to cause confusion or mistake or to deceive.
782     Section 15.  Section 495.141, Florida Statutes, is amended
783to read:
784     495.141  Remedies.--
785     (1)  Any owner of a mark registered under this chapter may
786proceed by suit to enjoin the manufacture, use, display, or sale
787of any counterfeits or imitations thereof and any court of
788competent jurisdiction may grant injunctions to restrain such
789manufacture, use, display or sale as may be by the said court
790deemed just and reasonable, and may require the defendants to
791pay to such owner all profits derived from and/or all damages
792suffered by reason of such wrongful manufacture, use, display,
793or sale and to pay the costs of the action; and such court may
794also order that any such counterfeits or imitations in the
795possession or under the control of any defendant in such case be
796delivered to an officer of the court, or to the complainant, to
797be destroyed. In assessing profits the plaintiff shall be
798required to prove defendant's sales only; defendant must prove
799all elements of cost or deduction claimed. In assessing damages
800the court may enter judgment, according to the circumstances of
801the case, for any sum above the amount found as actual damages,
802not exceeding three 3 times such amount. If the court shall find
803that the amount of the recovery based on profits is either
804inadequate or excessive the court may in its discretion enter
805judgment for such sum as the court shall find to be just,
806according to the circumstances of the case. Such sum in either
807of the above circumstances shall constitute compensation and not
808a penalty. The court may also award reasonable attorney's fees
809to the prevailing party according to the circumstances of the
810case.
811     (2)  The enumeration of any right or remedy herein shall
812not affect a registrant's right to prosecute under any penal law
813of this state.
814     Section 16.  Section 495.145, Florida Statutes, is created
815to read:
816     495.145  Forum for actions regarding registration.--An
817action seeking cancellation of a registration of a mark
818registered under this chapter may be brought in any court of
819competent jurisdiction in this state. Service of process on a
820nonresident registrant may be made in accordance with s. 48.181.
821The department shall not be made a party to cancellation
822proceedings.
823     Section 17.  Section 495.151, Florida Statutes, is amended
824to read:
825(Substantial rewording of section. See
826s. 495.151, F.S., for present text.)
827     495.151  Dilution.--
828     (1)  The owner of a mark that is famous in this state shall
829be entitled, subject to the principles of equity and upon such
830terms as the court deems reasonable, to an injunction and to
831obtain such other relief against another person's commercial use
832of a mark or trade name if such use begins after the mark has
833become famous and is likely to cause dilution of the distinctive
834quality of the famous mark, as provided in this section. In
835determining whether a mark is distinctive and famous, a court
836may consider factors, including, but not limited to:
837     (a)  The degree of inherent or acquired distinctiveness of
838the mark in this state.
839     (b)  The duration and extent of use of the mark in
840connection with the goods and services with which the mark is
841used.
842     (c)  The duration and extent of advertising and publicity
843of the mark in this state.
844     (d)  The geographical extent of the trading area in which
845the mark is used.
846     (e)  The channels of trade for the goods or services with
847which the mark is used.
848     (f)  The degree of recognition of the mark in the trading
849areas and channels of trade in this state used by the mark's
850owner and the person against whom the injunction is sought.
851     (g)  The nature and extent of use of the same or similar
852mark by third parties.
853     (h)  Whether the mark is the subject of a state
854registration in this state or a federal registration under the
855Federal Trademark Act of March 3, 1881, or the Federal Trademark
856Act of February 20, 1905, or a principal register registration
857under the Federal Trademark Act of July 5, 1946.
858     (2)  In an action brought under this section, the owner of
859a famous mark shall be entitled only to injunctive relief in
860this state unless the person against whom the injunctive relief
861is sought willfully intended to trade on the owner's reputation
862or to cause dilution of the famous mark. If such willful intent
863is proven, and the mark is registered in this state, the owner
864shall also be entitled to all remedies set forth in this
865chapter, subject to the discretion of the court and the
866principles of equity.
867     (3)  The following shall not be actionable under this
868section:
869     (a)  Fair use of a famous mark by another person in
870comparative commercial advertising or promotion to identify the
871competing goods or services of the owner of the famous mark.
872     (b)  Noncommercial use of the mark.
873     (c)  All forms of news reporting and news commentary.
874     Section 18.  Section 495.161, Florida Statutes, is amended
875to read:
876     495.161  Common-law rights.--Nothing herein shall adversely
877affect or diminish the rights or the enforcement of rights in
878marks acquired in good faith at any time at common law.
879     Section 19.  Section 495.171, Florida Statutes, is amended
880to read:
881     495.171  Effective date; repeal of conflicting prior
882acts.--
883     (1)  This chapter, as amended by this act, shall be in
884force and take effect January October 1, 2007 1967, after its
885enactment, but shall not affect any suit, proceeding, or appeal
886then pending.
887     (2)  Sections 506.06-506.13 Former ss. 495.01-495.14 are
888repealed on January 1, 2007 the effective date of this act,
889provided that as to any suit, proceeding or appeal, and for that
890purpose only, pending at the time this chapter, as amended by
891this act, takes effect such repeal shall be deemed not to be
892effective until final determination of said pending suit,
893proceeding or appeal.
894     Section 20.  Section 495.181, Florida Statutes, is amended
895to read:
896(Substantial rewording of section. See
897s. 495.181, F.S., for present text.)
898     495.181  Construction of chapter.--The intent of this
899chapter is to provide a system of state trademark registration
900and protection substantially consistent with the federal system
901of trademark registration and protection under the Trademark Act
902of 1946, as amended. To that end, the construction given the
903federal act should be examined as persuasive authority for
904interpreting and construing this chapter.
905     Section 21.  Section 495.191, Florida Statutes, is created
906to read:
907     495.191  Fees.--Filing and other applicable fees payable to
908the department under this chapter shall be as follows:
909     (1)  Application filing fee: $87.50 per class.
910     (2)  Renewal application fee: $87.50 per class.
911     (3)  Assignment filing fee: $50 per class.
912     (4)  Certificate of name change filing fee: $50.
913     (5)  Voluntary cancellation filing fee: $50.
914     (6)  Certificate of registration under seal: $8.75.
915     (7)  Certified copy of application file: $52.50.
916     Section 22.  Sections 506.06, 506.07, 506.08, 506.09,
917506.11, 506.12, and 506.13, Florida Statutes, are repealed.
918     Section 23.  This act shall take effect January 1, 2007.


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