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 or facsimiles showing the mark; requiring
14	that the application be accompanied by a fee; creating s.
15	495.035, F.S.; providing filing guidelines for
16	applications; providing for disclaimers of unregistrable
17	components; providing for amendment and judicial review;
18	providing for priority of registrations; amending s.
19	495.041, F.S.; providing that first use shall inure to the
20	benefit of the registrant or applicant under certain
21	circumstances; amending s. 495.061, F.S.; providing for
22	the issuance of a certificate of registration by the
23	department; removing a provision relating to reservation
24	of a mark; amending s. 495.071, F.S.; providing guidelines
25	for the renewal of marks; revising duration of
26	effectiveness of a registration; amending s. 495.081,
27	F.S.; providing for the assignability of marks;
28	authorizing a photocopy of an assignment to be acceptable
29	for recording; providing for change of name certificates
30	for registrants; authorizing recordation of certain
31	instruments; providing acknowledgment of recording as
32	prima facie evidence of the execution of an assignment or
33	other instrument; specifying requirements for creation and
34	perfection of security interests in marks; amending s.
35	495.091, F.S.; requiring the department to record all
36	marks registered with the state; amending s. 495.101,
37	F.S.; requiring the department to cancel certain marks;
38	amending s. 495.111, F.S., which establishes a
39	classification of goods and services; providing that a
40	single application for registration of a mark may include
41	any or all goods upon which, or services with which, the
42	mark is actually being used comprised in one or more of
43	the classes listed; amending s. 495.131, F.S.; revising
44	infringement provisions to include an element of lack of
45	consent by the registrant; conforming language; amending
46	s. 495.141, F.S.; providing additional remedies for the
47	unauthorized use of a mark; creating s. 495.145, F.S.;
48	providing a forum for actions regarding registration;
49	providing for service of process on nonresident
50	registrants; amending s. 495.151, F.S.; providing for an
51	injunction in cases of dilution of a famous mark;
52	providing factors to be considered in determining that a
53	mark is famous; providing damages in certain circumstances
54	of dilution; amending s. 495.161, F.S.; deleting language
55	relating to the diminishing of certain common law rights;
56	amending s. 495.171, F.S.; providing effective date of
57	changes to ch. 495, F.S., as amended by the act; providing
58	for repeal of conflicting acts; providing application to
59	pending actions; amending s. 495.181, F.S.; providing
60	construction and legislative intent; creating s. 495.191,
61	F.S.; providing certain fees; repealing s. 506.06, F.S.,
62	relating to unlawful to counterfeit trademark, to conform;
63	repealing s. 506.07, F.S., relating to filing of trademark
64	or other form of advertisement for record with Department
65	of State, to conform; repealing s. 506.08, F.S., relating
66	to fee for filing, to conform; repealing s. 506.09, F.S.,
67	relating to civil remedies, to conform; repealing s.
68	506.11, F.S., relating to unlawful use of trademark, to
69	conform; repealing s. 506.12, F.S., relating to procuring
70	the 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 is 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 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 them; or their
195	source or origin, or
196	3.  When used on or in connection with the goods or
197	services of the applicant, is primarily geographically
198	deceptively misdescriptive of them;
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, when applied to the goods or services
272	of such other person, to cause confusion, to cause mistake, or
273	to deceive or confuse or to be mistaken therefor.
274	(3)  Every applicant for registration of a collective mark
275	in this state shall file with the department of State, in a
276	manner and on a form complying with the requirements of to be
277	furnished by the department, an application setting forth, but
278	not 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
281	anywhere and the date when it was first used in this state by
282	any member of the applicant or a related company of such member;
283	(c)  The class of persons entitled to use the mark,
284	indicating their relationship to the applicant, and the nature
285	of the applicant's control over the use of the mark; and
286	(d)  A statement that no person except the applicant or
287	members of the applicant, or related companies thereof, has the
288	right to use such mark in this state, either in the identical
289	form thereof or in such near resemblance thereto as to be
290	likely, when applied to the goods or services of such other
291	person, to cause confusion, to cause mistake, or to deceive or
292	confuse or to be mistaken therefor.
293	(4)  The department may also require that a drawing of the
294	mark, complying with the requirements of the department,
295	accompany the application.
296	(5)(4)  Every application under this section shall be
297	signed and verified by the applicant or by a member of the firm
298	or an officer or other authorized representative of the business
299	entity of the corporation, association, union or other
300	organization applying.
301	(6)(5)  Every application under this section shall be
302	accompanied by three specimens or facsimiles showing the mark as
303	actually used a specimen or facsimile of such mark in
304	triplicate.
305	(7)(6)  Every application under this section shall be
306	accompanied by a filing fee of $87.50, payable to the department
307	in accordance with s. 495.191 of State, for each class of goods
308	or services as specified in s. 495.111, in connection with which
309	the mark is used.
310	Section 6.  Section 495.035, Florida Statutes, is created
311	to read:
312	495.035  Filing of applications.--
313	(1)  Upon the receipt of an application for registration
314	and payment of the application fee, the department may cause the
315	application to be examined for conformity with this chapter.
316	(2)  The applicant shall provide any additional pertinent
317	information requested by the department, including a description
318	of a design mark, and may make, or authorize the department to
319	make, such amendments to the application as may be reasonably
320	requested by the department or deemed by applicant to be
321	advisable to respond to any rejection or objection.
322	(3)  The department may require the applicant to disclaim
323	an unregistrable component of a mark otherwise registrable, and
324	an applicant may voluntarily disclaim a component of a mark
325	sought to be registered. No disclaimer shall prejudice or affect
326	the applicant's or registrant's rights then existing or
327	thereafter arising in the disclaimed matter, or the applicant's
328	or registrant's rights of registration on another application,
329	if the disclaimed matter is or has become distinctive of the
330	applicant's or registrant's goods or services.
331	(4)  Amendments may be made by the department upon the
332	application submitted by the applicant upon the applicant's
333	agreement, or a new application may be required to be submitted.
334	Amendments to an otherwise properly filed application shall not
335	affect the application filing date for purposes of determining
336	the applicant's or registrant's filing priority rights.
337	(5)  If the applicant is found not to be entitled to
338	registration, the department shall advise the applicant of the
339	rejection and of the reasons for rejection. The applicant shall
340	have 3 months in which to reply or amend the application, in
341	which event the application shall be reexamined. This procedure
342	may be repeated until:
343	(a)  The department makes final its refusal to register the
344	mark; or
345	(b)  The applicant fails to reply or amend the application
346	within the specified period, whereupon the application shall be
347	abandoned.
348
349	For good cause shown, such as the pendency of litigation
350	involving the mark, the department may extend the period of time
351	in which to respond to the rejection or suspend examination of
352	the application.
353	(6)  If the department makes final its refusal to register
354	the mark, the applicant may seek review of such decision in
355	accordance with ss. 120.569 and 120.57.
356	(7)  In the event of multiple applications concurrently
357	being processed by the department which seek registration of the
358	same or confusingly similar marks for the same or related goods
359	or services, the department shall grant priority to the
360	applications in order of receipt. If a prior-received
361	application is granted a registration, the other application or
362	applications shall then be rejected. The applicant of a rejected
363	application may bring an action for cancellation of the
364	registration upon grounds of prior or superior rights to the
365	mark, in accordance with the provisions of s. 495.101(3).
366	Section 7.  Section 495.041, Florida Statutes, is amended
367	to read:
368	495.041  Use by related companies.--Where a mark registered
369	or unregistered is or may be used legitimately by related
370	companies, such use shall inure to the benefit of the owner of
371	the mark, and such use shall not affect the validity of such
372	mark or of its registration, provided such mark is not used in
373	such manner as to deceive the public. If first use of a mark by
374	a person is controlled by the registrant or applicant for
375	registration of a mark with respect to the nature and quality of
376	the goods or services, such first use shall inure to the benefit
377	of that registrant or applicant, as the case may be.
378	Section 8.  Section 495.061, Florida Statutes, is amended
379	to read:
380	495.061  Certificate of registration.--
381	(1)  Upon compliance by the applicant with the requirements
382	of this chapter, the department of State shall cause a
383	certificate of registration to be issued and delivered to the
384	applicant. The certificate of registration shall be issued under
385	the signature of the Secretary of State and the seal of the
386	state, and it shall show the name and business address and, if a
387	business entity corporation, the place state of incorporation or
388	organization, of the person claiming ownership of the mark in
389	this state, the date claimed for the first use of the mark
390	anywhere and the date claimed for the first use of the mark in
391	this state, the class or classes of goods or services and a
392	description of the goods or services on or in connection with on
393	which the mark is used, a reproduction of the mark, the
394	registration date and the term of the registration.
395	(2)  Any certificate of registration issued by the
396	department of State under the provisions hereof or a copy
397	thereof duly certified by the department of State shall be
398	admissible in evidence as competent and sufficient proof of the
399	registration of such mark in any action or judicial proceedings
400	in any court of this state, and shall be prima facie evidence of
401	the validity of the registration, registrant's ownership of the
402	mark, and of registrant's exclusive right to use the mark in
403	this state on or in connection with the goods or services
404	specified in the certificate, subject to any conditions and
405	limitations stated therein.
406	(3)  Contingent on the registration of a mark under this
407	chapter, the reservation of such mark based on intent to use, as
408	provided in this chapter, shall be prima facie evidence of
409	priority of ownership of such mark within this state on or in
410	connection with the goods or services specified in the
411	reservation against any other person, except for a person whose
412	mark has not been abandoned and who, prior to such reservation,
413	has used the mark within this state on or in connection with
414	such goods or services.
415	Section 9.  Section 495.071, Florida Statutes, is amended
416	to read:
417	495.071  Duration and renewal.--
418	(1)  Registration of a mark hereunder shall be effective
419	for a term of 5 10 years from the date of registration and, upon
420	application filed within 6 months prior to the expiration of
421	such term, in a manner and form complying with the requirements
422	of on a form to be furnished by the department of State, the
423	registration may be renewed for a like term beginning at the end
424	of the expiring term. Every application under this section shall
425	be accompanied by a filing fee A renewal fee of $87.50 for each
426	class of goods or services with respect to which such renewal is
427	sought, payable to the department in accordance with s. 495.191
428	of State, shall accompany the application for renewal of the
429	registration.
430	(2)  A mark registration may be renewed for successive
431	periods of 5 10 years in like manner.
432	(3)  Any registration in effect on January 1, 2007, shall
433	continue in effect for the unexpired term thereof and may be
434	renewed by filing an application for renewal with the department
435	in a manner and form complying with the requirements of the
436	department and paying the renewal fee therefor within 6 months
437	prior to the expiration of the registration. The Department of
438	State shall notify registrants of marks hereunder of the
439	necessity of renewal within the year next preceding the
440	expiration of the 10 years from the date of registration by
441	writing to the last known address of the registrants. The
442	department shall prescribe the forms on which to make the
443	required notification and the renewal called for in subsection
444	(1) and may substitute the uniform business report, pursuant to
445	s. 606.06, as a means of satisfying the requirement of this
446	part.
447	(4)  All applications for renewal renewals under this
448	chapter, whether of registrations made under this act or of
449	registrations made under any prior acts, shall include a
450	verified statement that the mark is still in use in this state,
451	and shall include a specimen showing actual use of the mark on
452	or in connection with the goods or services subject to the
453	renewal application, or shall state that its nonuse is due to
454	special circumstances which excuse such nonuse and is not due to
455	any intention to abandon the mark.
456	Section 10.  Section 495.081, Florida Statutes, is amended
457	to read:
458	495.081  Assignments; changes of name; security interests
459	Assignment.--
460	(1)  A registered mark or a mark for which an application
461	for registration has been filed Any mark and its registration
462	hereunder shall be assignable with the goodwill good will of the
463	business in which the mark is used or with that part of the
464	goodwill good will of the business connected with the use of and
465	symbolized by the mark. Assignments Assignment shall be by an
466	instrument instruments in writing duly executed and may be
467	recorded with the department of State upon the payment of the
468	applicable a fee. A photocopy of an assignment shall be accepted
469	for recording if it is certified by any of the parties thereto,
470	or their successors, to be a true and correct copy of the
471	original. Upon recording of the assignment, of $50, payable to
472	the department of State which, upon recording of the assignment,
473	shall issue in the name of the assignee a new certificate for
474	the remainder of the term of the registration or of the last
475	renewal thereof.
476	(2)  An assignment of any registration under this chapter
477	shall be void as against any subsequent purchaser for valuable
478	consideration without notice, unless such assignment is recorded
479	with the department of State within 3 months after the date of
480	the assignment or prior to the subsequent purchase thereof or at
481	any time after the expiration of such 3-month period, unless an
482	assignment given in connection with any subsequent purchase is
483	recorded with the Department of State prior to or within 10 days
484	after such assignment is recorded.
485	(3)  A registrant or applicant for registration effecting a
486	change of the name may record a certificate of change of name of
487	the registrant or applicant with the department upon the payment
488	of the recording fee payable to the department in accordance
489	with s. 495.191. In the case of a pending application for a mark
490	that becomes approved for registration, the department shall
491	issue a certificate of registration in the registrant's new
492	name. In the case of a registered mark, the department shall
493	issue a new certificate of registration in the registrant's new
494	name for the remainder of the term of the registration or last
495	renewal thereof. A person's failure to record a name change in
496	accordance with this subsection shall not affect the person's
497	substantive rights in the mark or its registration.
498	(4)  Acknowledgment shall be prima facie evidence of the
499	execution of an assignment or other instrument and, when
500	recorded by the department, the record shall be prima facie
501	evidence of execution.
502	(5)  Security interests in marks shall be created and
503	perfected in accordance with chapter 679.
504	Section 11.  Section 495.091, Florida Statutes, is amended
505	to read:
506	495.091  Records.--The department of State shall keep for
507	public examination a record of all marks registered or renewed
508	under this chapter, including all documents recorded under s.
509	495.081.
510	Section 12.  Section 495.101, Florida Statutes, is amended
511	to read:
512	495.101  Cancellation.--The department of State shall
513	cancel from the register:
514	(1)  After 1 year from the effective date of this chapter,
515	all registrations under prior laws which are more than 10 years
516	old and not renewed in accordance with this chapter.
517	(1)(2)  Any registration for concerning which the
518	department of State has received shall receive a voluntary
519	request for cancellation by the registrant, which request shall
520	be in a manner and form complying with the requirements of the
521	department thereof from the registrant.
522	(2)(3)  All registrations granted under this chapter and
523	not renewed in accordance with the provisions hereof.
524	(3)(4)  Any registration for concerning which a court of
525	competent jurisdiction finds shall find that:
526	(a)  The registered mark has been abandoned. A mark shall
527	be deemed to be "abandoned" when either of the following occurs:
528	1.  When its use has been discontinued with intent not to
529	resume such use. Intent not to resume may be inferred from
530	circumstances. Nonuse for 2 consecutive years shall be prima
531	facie evidence of abandonment.
532	2.  When any course of conduct of the owner, including acts
533	of omission as well as commission, causes the mark to become the
534	generic name for the goods or services on or in connection with
535	which it is used, or otherwise to lose its significance as a
536	mark. Purchaser motivation shall not be a test for determining
537	abandonment under this paragraph.
538	(b)  The registrant of a trademark or service mark is not
539	the 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
543	goods or services, or a portion thereof, for which the mark has
544	been registered.
545	(f)(e)  The registered mark is so similar, as to be likely
546	to cause confusion or mistake or to deceive, to a mark
547	registered by another person in the United States Patent and
548	Trademark Office, prior to the date of the filing of the
549	application for registration by the registrant hereunder, and
550	not abandoned; provided, however, that should the registrant
551	prove that the registrant she or he is the owner of a concurrent
552	registration of a her or his mark in the United States Patent
553	and Trademark Office covering an area including this state, the
554	registration hereunder shall not be canceled.
555	(g)(f)  In the case of a certification mark, that the
556	registrant does not control or is not able to exercise control
557	over the use of such mark; or engages in the production or
558	marketing of any goods or services to which the certification
559	mark is applied; or the registrant permits the use of the
560	certification mark for purposes other than to certify; or the
561	registrant discriminately refuses refused to certify or to
562	continue to certify the goods or services of any person who
563	maintains the standards or conditions which such mark certifies.
564	Nothing in this paragraph shall be deemed to prohibit the
565	registrant from using its certification mark in advertising or
566	promoting recognition of the certification program or of the
567	goods or services meeting the certification standards of the
568	registrant.
569	(4)(5)  When a court of competent jurisdiction shall order
570	cancellation of a registration on any ground.
571	Section 13.  Section 495.111, Florida Statutes, is amended
572	to read:
573	(Substantial rewording of section. See s. 495.111, F.S.,
574	for present text.)
575	495.111  Classification.--
576	(1)  The following general classes of goods and services,
577	conforming to the classification adopted by the United States
578	Patent and Trademark Office, are established for convenience of
579	administration of this chapter:
580	(a)  Goods:
581	1.  Class 1  Chemicals used in industry, science, and
582	photography; agriculture, horticulture, and forestry;
583	unprocessed artificial resins and, unprocessed plastics;
584	manures; fire extinguishing compositions; tempering and
585	soldering preparations; chemical substances for preserving
586	foodstuffs; tanning substances; and adhesives used in industry.
587	2.  Class 2  Paints, varnishes, lacquers; preservatives
588	against rust and against deterioration of wood; colorants;
589	mordants; raw natural resins; and metals in foil and powder form
590	for painters, decorators, printers, and artists.
591	3.  Class 3  Bleaching preparations and other substances
592	for laundry use; cleaning, polishing, scouring, and abrasive
593	preparations; soaps; perfumery, essential oils, cosmetics, and
594	hair lotions; and dentifrices.
595	4.  Class 4  Industrial oils and greases; lubricants; dust
596	absorbing, wetting, and binding compositions; fuels (including
597	motor spirit) and illuminants; and candles and wicks for
598	lighting.
599	5.  Class 5  Pharmaceuticals and veterinary preparations;
600	sanitary preparations for medical purposes; dietetic substances
601	adapted for medical use and food for babies; plasters and
602	materials for dressings; material for stopping teeth and dental
603	wax; disinfectants; preparations for destroying vermin; and
604	fungicides and herbicides.
605	6.  Class 6  Common metals and their alloys; metal building
606	materials; transportable buildings of metal; materials of metal
607	for railway tracks; nonelectric cables and wires of common
608	metal; ironmongery and small items of metal hardware; pipes and
609	tubes of metal; safes; goods of common metal not included in
610	other classes; and ores.
611	7.  Class 7  Machines and machine tools; motors and engines
612	(except for land vehicles); machine coupling and transmission
613	components (except for land vehicles); agricultural implements
614	other than hand-operated; incubators for eggs.
615	8.  Class 8  Hand tools and hand-operated implements;
616	cutlery; side arms; and razors.
617	9.  Class 9  Scientific, nautical, surveying, photographic,
618	cinematographic, optical, weighing, measuring, signaling,
619	checking (supervision), and life-saving and teaching apparatus
620	and instruments; apparatus and instruments for conducting,
621	switching, transforming, accumulating, regulating, or
622	controlling electricity; apparatus for recording, transmission,
623	or reproduction of sound or images; magnetic data carriers and
624	recording discs; automatic vending machines and mechanisms for
625	coin-operated apparatus; cash registers, calculating machines,
626	and data processing equipment and computers; and fire-
627	extinguishing apparatus.
628	10.  Class 10  Surgical, medical, dental, and veterinary
629	apparatus and instruments, artificial limbs, eyes, and teeth;
630	orthopedic articles; and suture materials.
631	11.  Class 11  Apparatus for lighting, heating, steam
632	generating, cooking, refrigerating, drying, ventilating, water
633	supply, and sanitary purposes.
634	12.  Class 12  Vehicles; apparatus for locomotion by land,
635	air, or water.
636	13.  Class 13  Firearms; ammunition and projectiles;
637	explosives; and fireworks.
638	14.  Class 14  Precious metals and their alloys and goods
639	in precious metals or coated therewith (not included in other
640	classes); jewelry and precious stones; and horological and
641	chronometric instruments.
642	15.  Class 15  Musical instruments.
643	16.  Class 16  Paper, cardboard, and goods made from these
644	materials (not included in other classes); printed matter;
645	bookbinding material; photographs; stationery; adhesives for
646	stationery or household purposes; artists' materials; paint
647	brushes; typewriters and office requisites (except furniture);
648	instructional and teaching material (except apparatus); plastic
649	materials for packaging (not included in other classes);
650	printers' type; and printing blocks.
651	17.  Class 17  Rubber, gutta-percha, gum, asbestos, mica,
652	and goods made from these materials and not included in other
653	classes; plastics in extruded form for use in manufacture;
654	packing, stopping, and insulating materials; and flexible pipes
655	not of metal.
656	18.  Class 18  Leather and imitations of leather and goods
657	made of these materials and not included in other classes;
658	animal skins and hides; trunks and traveling bags; umbrellas,
659	parasols, and walking sticks; and whips, harness, and saddlery.
660	19.  Class 19  Building materials (nonmetallic);
661	nonmetallic rigid pipes for building; asphalt, pitch, and
662	bitumen; nonmetallic transportable buildings; monuments, not of
663	metal.
664	20.  Class 20  Furniture, mirrors, and picture frames;
665	goods (not included in other classes) of wood, cork, reed, cane,
666	wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-
667	pearl, and meerschaum and substitutes for all these materials,
668	or of plastics.
669	21.  Class 21  Household or kitchen utensils and containers
670	(not of precious metal or coated therewith); combs and sponges;
671	brushes (except paint brushes); brush-making materials; articles
672	for cleaning purposes; steel wool; unworked or semiworked glass
673	(except glass used in building); and glassware, porcelain, and
674	earthenware not included in other classes.
675	22.  Class 22  Ropes, string, nets, tents, awnings,
676	tarpaulins, sails, sacks, and bags (not included in other
677	classes); padding and stuffing materials (except of rubber or
678	plastics); 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
681	other classes and bed and table covers.
682	25.  Class 25  Clothing, footwear, and  headgear.
683	26.  Class 26  Lace and embroidery, ribbons, and braid;
684	buttons, hooks and eyes, pins, and needles; and artificial
685	flowers.
686	27.  Class 27  Carpets, rugs, mats and matting, linoleum,
687	and other materials for covering existing floors; and wall
688	hangings (nontextile).
689	28.  Class 28  Games and playthings; gymnastic and sporting
690	articles not included in other classes; and decorations for
691	Christmas trees.
692	29.  Class 29  Meat, fish, poultry, and game; meat
693	extracts; preserved, dried, and cooked fruits and vegetables;
694	jellies, jams, and compotes; eggs, milk, and milk products; and
695	edible oils and fats.
696	30.  Class 30  Coffee, tea, cocoa, sugar, rice, tapioca,
697	sago, and artificial coffee; flour and preparations made from
698	cereals, bread, pastry and confectionery, and ices; honey and
699	treacle; yeast, baking powder; salt, and mustard; vinegar and
700	sauces (condiments); spices; and ice.
701	31.  Class 31  Agricultural, horticultural, and forestry
702	products and grains not included in other classes; live animals;
703	fresh fruits and vegetables; seeds, natural plants, and flowers;
704	foodstuffs for animals and malt.
705	32.  Class 32  Beers; mineral and aerated waters and other
706	nonalcoholic drinks; fruit drinks and fruit juices; and syrups
707	and 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
712	administration; and office functions.
713	2.  Class 36  Insurance; financial affairs; monetary
714	affairs; and real estate affairs.
715	3.  Class 37  Building construction; repair; and
716	installation services.
717	4.  Class 38  Telecommunications.
718	5.  Class 39  Transport; packaging and storage of goods;
719	and travel arrangements.
720	6.  Class 40  Treatment of materials.
721	7.  Class 41  Education; providing of training;
722	entertainment; and sporting and cultural activities.
723	8.  Class 42  Scientific and technological services and
724	research and design relating thereto; industrial analysis and
725	research services; design and development of computer hardware
726	and software; and legal services.
727	9.  Class 43  Services for providing food and drink; and
728	temporary accommodation.
729	10.  Class 44  Medical services; veterinary services;
730	hygienic and beauty care for human beings or animals; and
731	agriculture, horticulture, and forestry services.
732	11.  Class 45  Personal and social services rendered by
733	others to meet the needs of individuals; and security services
734	for 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
740	and collective service mark applications are assigned to the
741	same classes that are appropriate for those goods and services
742	in general.
743	(2)  The establishment of the classes of goods and services
744	set forth in subsection (1) is not for the purpose of limiting
745	or extending the rights of the applicant or registrant. A single
746	application for registration of a mark may include any or all
747	goods upon which, or services with which, the mark is actually
748	being used comprised in one or more of the classes listed, but
749	in the event that a single application includes goods or
750	services in connection with which the mark is being used which
751	fall within different classes of goods or services, a fee
752	equaling the sum of the fees for registration in each class
753	shall be payable.
754	Section 14.  Section 495.131, Florida Statutes, is amended
755	to read:
756	495.131  Infringement.--Subject to the provisions of s.
757	495.161, any person who shall, without the consent of the
758	registrant:
759	(1)  Use, without the consent of the registrant, any
760	reproduction, counterfeit, copy, or colorable imitation of a
761	mark registered under this chapter on any goods or in connection
762	with the sale, offering for sale, distribution, or advertising
763	of any goods or services on or in connection with which such use
764	is likely to cause confusion, or to cause mistake, or to deceive
765	as to the source or origin of such goods or services; or
766	(2)  Reproduce, counterfeit, copy, or colorably imitate a
767	any such mark registered under this chapter and apply such
768	reproduction, counterfeit, copy, or colorable imitation to
769	labels, signs, prints, packages, wrappers, receptacles, or
770	advertisements intended to be used upon or in connection
771	conjunction with the sale, offering for sale, distribution, or
772	advertising in this state of goods or services on or in
773	connection with which such use is likely to cause confusion, to
774	cause mistake, or to deceive;
775
776	shall be liable in a civil action by the owner of such
777	registered mark for any or all of the remedies provided in s.
778	495.141, except that under subsection (2) hereof the registrant
779	shall not be entitled to recover profits or damages unless the
780	acts have been committed with knowledge that such mark is
781	intended to be used to cause confusion or mistake or to deceive.
782	Section 15.  Section 495.141, Florida Statutes, is amended
783	to read:
784	495.141  Remedies.--
785	(1)  Any owner of a mark registered under this chapter may
786	proceed by suit to enjoin the manufacture, use, display, or sale
787	of any counterfeits or imitations thereof and any court of
788	competent jurisdiction may grant injunctions to restrain such
789	manufacture, use, display or sale as may be by the said court
790	deemed just and reasonable, and may require the defendants to
791	pay to such owner all profits derived from and/or all damages
792	suffered by reason of such wrongful manufacture, use, display,
793	or sale and to pay the costs of the action; and such court may
794	also order that any such counterfeits or imitations in the
795	possession or under the control of any defendant in such case be
796	delivered to an officer of the court, or to the complainant, to
797	be destroyed. In assessing profits the plaintiff shall be
798	required to prove defendant's sales only; defendant must prove
799	all elements of cost or deduction claimed. In assessing damages
800	the court may enter judgment, according to the circumstances of
801	the case, for any sum above the amount found as actual damages,
802	not exceeding three 3 times such amount. If the court shall find
803	that the amount of the recovery based on profits is either
804	inadequate or excessive the court may in its discretion enter
805	judgment for such sum as the court shall find to be just,
806	according to the circumstances of the case. Such sum in either
807	of the above circumstances shall constitute compensation and not
808	a penalty. The court may also award reasonable attorney's fees
809	to the prevailing party according to the circumstances of the
810	case.
811	(2)  The enumeration of any right or remedy herein shall
812	not affect a registrant's right to prosecute under any penal law
813	of this state.
814	Section 16.  Section 495.145, Florida Statutes, is created
815	to read:
816	495.145  Forum for actions regarding registration.--An
817	action seeking cancellation of a registration of a mark
818	registered under this chapter may be brought in any court of
819	competent jurisdiction in this state. Service of process on a
820	nonresident registrant may be made in accordance with s. 48.181.
821	The department shall not be made a party to cancellation
822	proceedings.
823	Section 17.  Section 495.151, Florida Statutes, is amended
824	to read:
825	(Substantial rewording of section. See
826	s. 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
829	be entitled, subject to the principles of equity and upon such
830	terms as the court deems reasonable, to an injunction and to
831	obtain such other relief against another person's commercial use
832	of a mark or trade name if such use begins after the mark has
833	become famous and is likely to cause dilution of the distinctive
834	quality of the famous mark, as provided in this section. In
835	determining whether a mark is distinctive and famous, a court
836	may consider factors, including, but not limited to:
837	(a)  The degree of inherent or acquired distinctiveness of
838	the mark in this state.
839	(b)  The duration and extent of use of the mark in
840	connection with the goods and services with which the mark is
841	used.
842	(c)  The duration and extent of advertising and publicity
843	of the mark in this state.
844	(d)  The geographical extent of the trading area in which
845	the mark is used.
846	(e)  The channels of trade for the goods or services with
847	which the mark is used.
848	(f)  The degree of recognition of the mark in the trading
849	areas and channels of trade in this state used by the mark's
850	owner and the person against whom the injunction is sought.
851	(g)  The nature and extent of use of the same or similar
852	mark by third parties.
853	(h)  Whether the mark is the subject of a state
854	registration in this state or a federal registration under the
855	Federal Trademark Act of March 3, 1881, or the Federal Trademark
856	Act of February 20, 1905, or a principal register registration
857	under the Federal Trademark Act of July 5, 1946.
858	(2)  In an action brought under this section, the owner of
859	a famous mark shall be entitled only to injunctive relief in
860	this state unless the person against whom the injunctive relief
861	is sought willfully intended to trade on the owner's reputation
862	or to cause dilution of the famous mark. If such willful intent
863	is proven, and the mark is registered in this state, the owner
864	shall also be entitled to all remedies set forth in this
865	chapter, subject to the discretion of the court and the
866	principles of equity.
867	(3)  The following shall not be actionable under this
868	section:
869	(a)  Fair use of a famous mark by another person in
870	comparative commercial advertising or promotion to identify the
871	competing 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
875	to read:
876	495.161  Common-law rights.--Nothing herein shall adversely
877	affect or diminish the rights or the enforcement of rights in
878	marks acquired in good faith at any time at common law.
879	Section 19.  Section 495.171, Florida Statutes, is amended
880	to read:
881	495.171  Effective date; repeal of conflicting prior
882	acts.--
883	(1)  This chapter, as amended by this act, shall be in
884	force and take effect January October 1, 2007 1967, after its
885	enactment, but shall not affect any suit, proceeding, or appeal
886	then pending.
887	(2)  Sections 506.06-506.13 Former ss. 495.01-495.14 are
888	repealed on January 1, 2007 the effective date of this act,
889	provided that as to any suit, proceeding or appeal, and for that
890	purpose only, pending at the time this chapter, as amended by
891	this act, takes effect such repeal shall be deemed not to be
892	effective until final determination of said pending suit,
893	proceeding or appeal.
894	Section 20.  Section 495.181, Florida Statutes, is amended
895	to read:
896	(Substantial rewording of section. See
897	s. 495.181, F.S., for present text.)
898	495.181  Construction of chapter.--The intent of this
899	chapter is to provide a system of state trademark registration
900	and protection substantially consistent with the federal system
901	of trademark registration and protection under the Trademark Act
902	of 1946, as amended. To that end, the construction given the
903	federal act should be examined as persuasive authority for
904	interpreting and construing this chapter.
905	Section 21.  Section 495.191, Florida Statutes, is created
906	to read:
907	495.191  Fees.--Filing and other applicable fees payable to
908	the 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,
917	506.11, 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.