Part 3 Trademarks: 30-13-301 Definitions. 30-13-302. When mark considered used in this state. 30-13-303. Registrability. 30-13-304 through 30-13-310 reserved. 30-13-311. Application for registration. 30-13-312. Filing application and issuing certificate of registration. 30-13-313. Duration and renewal. 30-13-314. Filing application for renewal of registration -- issuing certificate of renewal. 30-13-320. Secretary of state to establish and collect fees commensurate with costs.

30-13-301. Definitions. In this part, unless the context requires otherwise, the following definitions apply:

(1) "Applicant" means the person filing an application for registration of a trademark under this part or the person's legal representatives, successors, or assigns.

(2) "Mark" means any trademark or service mark entitled to registration under this part whether registered or not.

(3) "Person" means any individual, firm, partnership, limited liability company, corporation, association, union, or other organization.

(4) "Registrant" means the person to whom the registration of a trademark under this part is issued or the person's legal representatives, successors, or assigns.

(5) "Service mark" means a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.

(6) "Trade name" means a word, name, symbol, device, or any combination thereof used by a person to identify the person's business, vocation, or occupation and distinguish it from the business, vocation, or occupation of others.

(7) "Trademark" means any word, name, symbol, device, or any combination thereof adopted and used by a person to identify goods made or sold by the person and to distinguish them from goods made or sold by others.

History: En. Sec. 1, Ch. 429, L. 1979; amd. Sec. 81, Ch. 120, L. 1993. Top

30-13-302. When mark considered used in this state. For purposes of this part, a mark is considered to be used in this state:

(1) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto and such goods are sold or otherwise distributed in the 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.

History: En. Sec. 2, Ch. 429, L. 1979. Top

30-13-303. Registrability. (1) A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others may not be registered if it:

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

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

(c) comprises the flag or coat of arms or other insignia of the United States, of any state or municipality, or of any foreign nation or any simulation thereof; or

(d) comprises the name, signature, or portrait of any living individual, except with his written consent; or

(e) comprises a mark that:

(i) when applied to the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them;

(ii) when applied to the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them; or

(iii) is primarily merely a surname; or

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

(2) However, nothing in subsection (1)(e) prevents the registration of a mark used in this state by the applicant which has become distinctive of the applicant's goods or services. The secretary of state may accept as evidence that the mark has become distinctive, as applied to the applicant's goods or services, proof of continuous use thereof as a mark by the applicant in this state or elsewhere for the 5 years immediately preceding the date of the filing of the application for registration.

History: En. Sec. 3, Ch. 429, L. 1979. Top

30-13-304 through 30-13-310 reserved. Top

30-13-311. Application for registration.

(1) Subject to the limitations set forth in this part, a person who adopts and uses a mark in this state may file in the office of secretary of state, on a form to be furnished by the secretary of state, an application for registration of that mark setting forth information including but not limited to the following:

(a) the name and business address of the person applying for registration and, if a corporation, the state of incorporation or, if a limited liability company, the state of organization;

(b) the essential feature of the mark to be registered;

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

(d) the date when the mark was first used anywhere and the date when it was first used in this state by the applicant or the applicant's predecessor in business;

(e) a statement that the mark is presently in use in this state by the applicant; and

(f) a statement that the applicant is the owner of the mark and that no other person has the right to use the mark in this state either in the identical form or in a form that so nearly resembles it that it might be calculated to deceive or might be mistaken for it.

(2) The application must be signed by the applicant or a member of the firm or limited liability company or an officer of the corporation or association applying.

(3) The application must be accompanied by two copies of a specimen or facsimile of the mark.

(4) The application for registration must be accompanied by a filing fee as provided for in 30-13-320.

History: En. Sec. 4, Ch. 429, L. 1979; amd. Sec. 6, Ch. 131, L. 1983; amd. Sec. 6, Ch. 174, L. 1983; amd. Sec. 4, Ch. 119, L. 1985; amd. Sec. 82, Ch. 120, L. 1993. Top

30-13-312. Filing application and issuing certificate of registration.

(1) One original and one copy of an application for registration of a mark must be delivered to the secretary of state. If the secretary of state finds that the application complies with the requirements of this part, he shall, when all fees have been paid as prescribed in this part:

(a) endorse on the original and the copy the word "filed" and the month, day, and year of the filing thereof;

(b) file the original in his office; and

(c) issue a certificate of registration to which he shall affix the copy.

(2) The certificate of registration, together with the copy of the application for registration of mark affixed thereto, shall be returned to the applicant.

(3) Any certificate of registration issued by the secretary of state under the provisions of this section or a copy thereof duly certified by the secretary of state is admissible in evidence as competent and sufficient proof of the registration of such mark in any judicial proceeding in any court of this state.

History: En. Sec. 5, Ch. 429, L. 1979; amd. Sec. 7, Ch. 131, L. 1983. Top

30-13-313. Duration and renewal.

(1) Registration of a mark under this part is effective for a term of 10 years from the date of registration, and upon application filed within 6 months prior to the expiration of such term, the registration may be renewed for another 10 years.

(2) An application for renewal of mark registration must be delivered to the secretary of state and shall set forth information including but not limited to the following:

(a) the name and business address of the applicant;

(b) a description of the mark; and

(c) a statement that the mark is still in use by the applicant in this state.

(3) The application for renewal of mark registration must be signed by the applicant.

(4) The application for renewal of mark registration must be accompanied by a filing fee as provided for in 30-13-320.

History: En. Sec. 6, Ch. 429, L. 1979; amd. Sec. 7, Ch. 174, L. 1983; amd. Sec. 5, Ch. 119, L. 1985. Top

30-13-314. Filing application for renewal of registration -- issuing certificate of renewal.

(1) One original and one copy of an application for renewal of mark registration must be delivered to the secretary of state. If the secretary of state finds that the application complies with the requirements of this part, he shall, when all fees have been paid as prescribed in this part:

(a) endorse on the original and the copy the word "filed" and the month, day, and year of the filing thereof;

(b) file the original in his office; and

(c) issue a certificate of registration to which he shall affix the copy.

(2) The certificate of renewal of registration, together with the copy of the application for renewal of mark registration affixed thereto, shall be returned to the applicant.

(3) A mark registration may be renewed for successive periods of 10 years in the manner provided for in subsections (1) and (2).

(4) The secretary of state shall notify registrants of marks of the necessity of renewal within the year immediately preceding the expiration of the 10 years from the date of registration, by writing to the last-known address of the registrants.

(5) Any registration in force on July 1, 1979, expires 10 years from the date of the registration or from the date of the last renewal thereof or on July 1, 1980, whichever is later, if renewal of mark registration is not effected in the manner provided for in this part.

(6) The secretary of state shall, by January 1, 1981, notify each person who registered a mark prior to July 1, 1980, of the date of expiration of such registration unless renewed in accordance with the provisions of this part, by writing to the last-known address of the registrant. 30-13-320. Secretary of state to establish and collect fees commensurate with costs. The secretary of state shall by administrative rule establish and provide for collection of fees and miscellaneous charges for filing documents and issuing certificates as required by this part. The fees must be commensurate with the costs of processing the documents and certificates. The secretary of state shall maintain records sufficient to support the fees and miscellaneous charges established under this part.

30-13-320. Secretary of state to establish and collect fees commensurate with costs.

The secretary of state shall by administrative rule establish and provide for collection of fees and miscellaneous charges for filing documents and issuing certificates as required by this part. The fees must be commensurate with the costs of processing the documents and certificates. The secretary of state shall maintain records sufficient to support the fees and miscellaneous charges established under this part. Top