Chapter 81.--TRADEMARKS AND SERVICE MARKS

Article 2.--REVISED KANSAS TRADEMARK ACT:......81-201. Title. 81-202. Definitions. 81-203. Registrability. 81-204. Application for registration. 81-205. Filing of applications; refusal of registration; same or similar marks, procedure. 81-206. Certificate of registration, issuance. 81-207. Duration of registration; renewal. 81-208. Assignments; changes of name; other instruments. 81-209. Records. 81-210. Cancellation. 81-211. Classification of goods and services. 81-212. Fraudulent registration; liability for damages. 81-213. Infringement; liability. 81-214. Injury to business reputation; dilution. 81-215. Remedies........ 81-216. Forum for action regarding registration; service on nonresidents. 81-217. Common law rights. 81-218. Fees. 81-219. Severability. 81-220. Effect; intent.

81-201. Title.

This act shall be known and may be cited as the revised Kansas trademark act.

History: L. 1999, ch. 85, § 1; July 1. Top

81-202. Definitions.

As used in K.S.A. 2000 Supp. 81-201 through 81-220: (a) "Trademark" means any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the goods of such person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown.

(b) "Service mark" means any word, name, symbol, or device or any combination thereof used by a person, to identify and distinguish the services of one person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown. Titles, character names used by a person, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that, such titles, names or features, or the programs, may advertise the goods of the sponsor.

(c) "Mark" includes any trademark or service mark entitled to registration under this act whether registered or not.

(d) "Trade name" means any name used by a person to identify a business or vocation of such person.

(e) "Person" and any other word or term used to designate the applicant or other party entitled to a benefit or privilege or rendered liable under the provisions of this act includes a juristic person as well as a natural person. The term "juristic person" includes a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.

(f) "Applicant" means the person filing an application for registration of a mark under this act, and the legal representatives, successors, or assigns of such person.

(g) "Registrant" means the person to whom the registration of a mark under this act is issued, and the legal representatives, successors, or assigns of such person.

(h) "Use" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For the purposes of this act, a mark shall be deemed to be in use:

(1) On goods when it is placed in any manner on the goods or other containers or the displays associated with such goods or containers or on the tags or labels affixed to such goods or containers, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or the good's sale, and the goods are sold or transported in commerce in this state; and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in this state.

(i) A mark shall be deemed to be "abandoned" when either of the following occurs:

(1) When the mark's use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall constitute prima facie evidence of abandonment; or

(2) when any course of conduct of the owner, including acts of omission as well as commission, causes the mark to lose its significance as a mark.

(j) "Secretary" means the secretary of state.

(k) "Dilution" means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of:

(1) Competition between the owner of the famous mark and other parties; or

(2) likelihood of confusion, mistake, or deception.

History: L. 1999, ch. 85, § 2; July 1. Top

81-203. Registrability.

A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if such mark:

(a) Consists of or comprises immoral, deceptive or scandalous matter;

(b) consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

(c) consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulation thereof; (d) consists of or comprises the name, signature or portrait identifying a particular living individual, except by the individual's written consent; (e) consists of a mark which:

(1) When used on or in connection with the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them;

(2) when used on or in connection with the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them; or

(3) is primarily merely a surname, except that nothing in this subsection shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods or services. The secretary may accept as evidence that the mark has become distinctive, as used on or in connection with the applicant's goods or services, proof of continuous use thereof as a mark by the applicant in this state for the five years before the date on which the claim of distinctiveness is made; or

(f) consists of or comprises a mark which so resembles a mark registered in this state or a mark or trade name previously used by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive.

History: L. 1999, ch. 85, § 3; July 1.Top

81-204. Application for registration.

(a) Subject to the limitations set forth in this act, any person who uses a mark may file in the office of the secretary, in a manner complying with the requirements of the secretary, an application for registration of that mark setting forth, but not limited to, the following information:

(1) The name and business address of the person applying for such registration; if a corporation, limited liability company, limited partnership, limited liability partnership or other business entity, the state of organization; and if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary;

(2) the goods or services on or in connection with which the mark is used and the mode or manner in which the mark is used on or in connection with such goods or services and the class in which such goods or services fall;

(3) the date when the mark was first used anywhere and the date when it was first used in this state by the applicant or a predecessor in interest; and

(4) a statement that the applicant is the owner of the mark, that the mark is in use, and that, to the knowledge of the person verifying the application, no other person has registered, either federally or in this state, or has the right to use such mark either in the identical form or in such near resemblance to such mark as to be likely, when applied to the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive. The secretary may also require a statement as to whether an application to register the mark, or portions or a composite of such mark, has been filed by the applicant or a predecessor in interest in the United States patent and trademark office. If such application has been filed in the United States patent and trademark office, the applicant shall provide full particulars with respect to such filing including the filing date and serial number of each application, the status of such filing and, if any application was finally refused registration or has otherwise not resulted in a registration, the reasons for such refusal.

(b) The secretary may also require that a drawing of the mark, complying with such requirements as the secretary may specify, accompany the application.

(c) The application shall be signed and verified by oath, affirmation or declaration subject to perjury laws by the applicant or by a member of the firm or an officer of the corporation or association applying.

(d) The application shall be accompanied by three specimens showing the mark as actually used. (e) The application shall be accompanied by the application fee payable to the secretary of state.

History: L. 1999, ch. 85, § 4; July 1. Top

81-205. Filing of applications; refusal of registration; same or similar marks, procedure.

(a) Upon the filing of an application for registration and payment of the application fee, the secretary may cause the application to be examined for conformity with this act.

(b) The applicant shall provide any additional pertinent information requested by the secretary including a description of a design mark and may make, or authorize the secretary to make, such amendments to the application as may be reasonably requested by the secretary or deemed by applicant to be advisable to respond to any rejection or objection.

(c) The secretary may require the applicant to disclaim an unregisterable component of a mark otherwise registerable, and an applicant may voluntarily disclaim a component of a mark sought to be registered. No disclaimer shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter, or the applicant's or registrant's rights of registration on another application if the disclaimed matter be or shall have become distinctive of the applicant's or registrant's goods or services.

(d) Amendments may be made by the secretary upon the application submitted by the applicant upon applicant's agreement, or a new application may be required to be submitted.

(e) If the applicant is found not to be entitled to registration, the secretary shall advise the applicant and state the reasons of such refusal. The applicant shall have a reasonable period of time specified by the secretary in which to reply or to amend the application, in which event the application shall then be reexamined. This procedure may be repeated until:

(1) The secretary finally refuses registration of the mark; or

(2) the applicant fails to reply or amend within the specified period, whereupon the application shall be deemed to have been abandoned.

(f) If the secretary finally refuses registration of the mark, the applicant may seek a writ of mandamus to compel such registration. Such writ may be granted, but without costs to the secretary, on proof that all the statements in the application are true and that the mark is otherwise entitled to registration.

(g) In the instance of applications concurrently being processed by the secretary seeking registration of the same or confusingly similar marks for the same or related goods or services, the secretary shall grant priority to the applications in order of filing. If a prior-filed application is granted a registration, the other application or applications shall be rejected. Any rejected applicant may bring an action for cancellation of the registration upon grounds of prior or superior rights to the mark, in accordance with the provisions of K.S.A. 2000 Supp. 81-210 and amendments thereto.

History: L. 1999, ch. 85, § 5; July 1. Top

81-206. Certificate of registration, issuance.

Upon compliance by the applicant with the requirements of this act, the secretary shall cause a certificate of registration to be issued and delivered to the applicant. The certificate of registration shall be issued under the signature of the secretary and the seal of the state, and such certificate shall show the name and business address of the person claiming ownership of the mark, the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in this state, the class of goods or services and a description of the goods or services on or in connection with which the mark is used, a reproduction of the mark, the registration date and the term of the registration. Any certificate of registration issued by the secretary under the provisions of this section or a copy of such certificate duly certified by the secretary shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any actions or judicial proceedings in any court of this state.

History: L. 1999, ch. 85, § 6; July 1. Top

81-207. Duration of registration; renewal.

(a) A registration of a mark as provided in this act shall be effective for a term of five years from the date of registration and, upon application filed within six months prior to the expiration of such term, in a manner complying with the requirements of the secretary, the registration may be renewed for a like term from the end of the expiring term. A renewal fee, payable to the secretary, shall accompany the application for renewal of the registration.

(b) A registration may be renewed for successive periods of five years in like manner.

(c) Any registration in force on the date on which this act shall become effective shall and continue in full force and effect for the unexpired term of such registration and may be renewed by filing an application for renewal with the secretary complying with the requirements of the secretary and paying the renewal fee as provided in this section within six months prior to the expiration of the registration.

(d) All applications for renewal under this act, whether of registrations made under this act or of registrations effected under any prior act, shall include a verified statement that the mark has been and is still in use and include a specimen showing actual use of the mark on or in connection with the goods or services.

History: L. 1999, ch. 85, § 7; July 1. Top

81-208. Assignments; changes of name; other instruments.

(a) Any mark and registration as provided in this act shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignment shall be by instruments in writing duly executed and may be recorded with the secretary upon the payment of the recording fee payable to the secretary who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal of the registration. An assignment of any registration under this act shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the secretary within three months after the date of assignment or prior to such subsequent purchase.

(b) Any registrant or applicant effecting a change of the name of the person to whom the mark was issued or for whom an application was filed may record a certificate of change of name of the registrant or applicant with the secretary upon the payment of the recording fee. The secretary may issue in the name of the assignee a certificate of registration of an assigned application. The secretary may issue in the name of the assignee, a new certificate or registration for the remainder of the term of the registration or last renewal of the registration.

(c) Other instruments which relate to a mark registered or application pending pursuant to this act, such as, licenses, security interests or mortgages, may be recorded in the discretion of the secretary, if such instrument is in writing and duly executed.

(d) Acknowledgment shall be prima facie evidence of the execution of an assignment or other instrument and, when recorded by the secretary, the record shall be prima facie evidence of execution.

(e) A photocopy of any instrument referred to in subsection (a),(b) or (c) above shall be accepted for recording if it is certified by any of the parties to the instrument, or their successors, to be a true and correct copy of the original.

History: L. 1999, ch. 85, § 8; July 1. Top

81-209. Records.

The secretary shall keep for public examination a record of all marks registered or renewed under this act, as well as a record of all documents recorded pursuant to K.S.A. 2000 Supp. 81-208 and amendments thereto.

History: L. 1999, ch. 85, § 9; July 1. Top

81-210. Cancellation.

The secretary shall cancel from the register, in whole or in part:

(a) Any registration which the secretary receives a voluntary request for cancellation thereof from the registrant or the assignee of record;

(b) all registrations granted under this act and not renewed in accordance with the provisions of this act;

(c) any registration concerning which a court of competent jurisdiction finds that:

(1) The registered mark has been abandoned;

(2) the registrant is not the owner of the mark;

(3) the registration was granted improperly;

(4) the registration was obtained fraudulently;

(5) the mark is or has become the generic name for the goods or services, or a portion of the goods or services, for which it has been registered; or

(6) the registered mark is so similar, as to be likely to cause confusion or mistake or to deceive, to a mark registered by another person in the United States patent and trademark office prior to the date of the filing of the application for registration by the registrant hereunder, and not abandoned, except that should the registrant prove that the registrant is the owner of a concurrent registration of a mark in the United States patent and trademark office covering an area including this state, the registration hereunder shall not be canceled for such area of the state; or

(d) when a court of competent jurisdiction orders cancellation of a registration on any ground.

History: L. 1999, ch. 85, § 10; July 1. Top

81-211. Classification of goods and services.

The secretary shall by regulation establish a classification of goods and services for convenience of administration of this act, but not to limit or extend the applicant's or registrant's rights, and a single application for registration of a mark may include any or all goods upon which, or services with which, the mark is actually being used indicating the appropriate class or classes of goods or services. When a single application includes goods or services which fall within multiple classes, the secretary may require payment of a fee for each class. To the extent practical, the classification of goods and services should conform to the classification adopted by the United States patent and trademark office.

History: L. 1999, ch. 85, § 11; July 1. Top

81-212. Fraudulent registration; liability for damages.

Any person who for such person's own behalf, or on behalf of any other person, procures the filing or registration of any mark in the office of the secretary under the provisions of this act, by knowingly making any false or fraudulent representation or declaration, orally or in writing, or by any other fraudulent means, shall be liable to pay all damages sustained in consequence of such filing or registration, to be recovered by or on behalf of the party injured by such person's finding in any court of competent jurisdiction.

History: L. 1999, ch. 85, § 12; July 1. Top

81-213. Infringement; liability.

Subject to the provisions of K.S.A. 2000 Supp. 81-217 and amendments thereto, any person who: (a) Uses, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this act in connection with the sale, distribution, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or (b) reproduces, counterfeits, copies, or colorably imitates any such mark and applies such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this state of such goods or services; shall be liable in a civil action by the registrant for any and all of the remedies provided in K.S.A. 2000 Supp. 81-215 and amendments thereto, except that under subsection

(b) the registrant shall not be entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion or mistake or to deceive.

History: L. 1999, ch. 85, § 13; July 1. Top

81-214. Injury to business reputation; dilution.

(a) The owner of a mark which is famous in this state shall be entitled, subject to the principles of equity and upon such terms as the court seems reasonable, to an injunction against another person's commercial use of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this section. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to:

(1) The degree of inherent or acquired distinctiveness of the mark in this state;

(2) the duration and extent of use of the mark in connection with the goods and services with which the mark is used;

(3) the duration and extent of advertising and publicity of the mark in this state;

(4) the geographical extent of the trading area in which the mark is used;

(5) the channels of trade for the goods or services with which the mark is used;

(6) the degree of recognition of the mark in the trading areas and channels of trade in this state used by the mark's owner and the person against whom the injunction is sought;

(7) the nature and extent of use of the same or similar mark by third parties; and

(8) whether the mark is the subject of a state registration in this state, or a federal registration under the act of March 3, 1881, or under the act of February 20, 1905, or on the principal register.

(b) In an action brought under this section, the owner of a famous mark shall be entitled only to injunctive relief in this state, unless the person against whom the injunctive relief is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark. If such willful intent is proven, the owner also shall be entitled to the remedies set forth in this act, subject to the discretion of the court and the principles of equity.

(c) The following shall not be actionable under this section:

(1) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark;

(2) noncommercial use of the mark; and

(3) all forms of news reporting and news commentary.

History: L. 1999, ch. 85, § 14; July 1. Top

81-215. Remedies.

(a) Any owner of a mark registered under this act may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations of such mark and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as the court deems just and reasonable, and may require the defendants to pay to such owner all profits derived from or all damages suffered by reason of such wrongful manufacture, use, display or sale, or both. Such court also may order that any such counterfeits or imitations in the possession or under the control of any defendant in such case be delivered to an officer of the court, or to the complainant, to be destroyed. The court, in its discretion, may enter judgment for an amount not to exceed three times such profits and damages or reasonable attorney fees of the prevailing party, or both, in such cases where the court finds the other party committed such wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case.

(b) The enumeration of any right or remedy in this section shall not affect a registrant's right to prosecute under any criminal law of this state.

History: L. 1999, ch. 85, § 15; July 1. Top

81-216. Forum for action regarding registration; service on nonresidents.

(a) Actions to require cancellation of a mark registered pursuant to this act or in mandamus to compel registration of a mark pursuant to this act shall be brought in the district court. In an action in mandamus, the proceeding shall be based solely upon the record before the secretary. In an action for cancellation, the secretary shall not be made a party to the proceeding but shall be notified of the filing of the complaint by the clerk of the court in which it is filed and shall be given the right to intervene in the action.

(b) In any action brought against a nonresident registrant, service may be effected upon the secretary as agent for service in accordance with the procedures established for service upon foreign corporations under K.S.A. 60-304 and amendments thereto.

History: L. 1999, ch. 85, § 16; July 1. Top

81-217. Common law rights.

Nothing in this act shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.

History: L. 1999, ch. 85, § 17; July 1. Top

81-218. Fees.

The application for registration of a mark and any renewal application shall be accompanied by a filing fee of $25. All other documents filed pursuant to this act shall be accompanied by a filing fee of $5. All fees shall be payable to the secretary of state.

History: L. 1999, ch. 85, § 18; July 1. Top

81-219. Severability.

If any provision of this act, or the application of such provision to any person or circumstance is held invalid or unconstitutional, it shall be conclusively presumed that the legislature would have enacted the remainder of this act without such invalid or unconstitutional provision.

History: L. 1999, ch. 85, § 19; July 1. Top

81-220. Effect; intent.

(a) The provisions of this act shall not affect any suit, proceeding or appeal pending on the effective date of this act. The provisions of this act are controlling as to all acts relating to marks and parts that are inconsistent with this act, except that as to any application, suit, proceeding or appeal, and for that purpose only, pending on the effective date of this act the provisions of this act shall be deemed not to be effective until final determination of such pending application, suit, proceeding or appeal.

(b) The intent of this act is to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the trademark act of 1946, as amended. To that end, the construction given the federal act should be examined as persuasive authority for interpreting and construing this act.

History: L. 1999, ch. 85, § 20; July 1. Top