56:3-13a. Purpose of act, construction. 56:3-13.1a. Definitions relative to trademarks. 56:3-13.2. Registrability. 56:3-13.3. Application for registration. 56:3-13.3a. Examination of applications, procedures. 56:3-13.3b. Review of registration decisions, procedure. 56:3-13.4. Certificate of registration. 56:3-13.5. Duration and renewal. 56:3-13.6. Assignment, other instruments. 56:3-13.7. Records. 56:3-13.7a. Certificate of availability. 56:3-13.8 Cancellation. 56:3-13.9a. Establishment of classification of goods, services. 56:3-13.10. Fraudulent registration. 56:3-13.13. Common law rights. 56:3-13.14. Severability. 56:3-13.15. Repeal. 56:3-13.16. Action for trafficking in counterfeit marks; remedies. 56:3-13.17. Destruction order. 56:3-13.18. Not exclusive remedy. 56:3-13.19. Estoppel. 56:3-13.20. Remedies for dilution of famous marks. 56:3-13.21. Regulations, fees.
56:3-13a. Purpose of act, construction
This 1995 amendatory and supplementary act is intended to provide a system of State trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the federal Trademark Act of 1946, 15 U.S.C. s.1051 et seq. The interpretation and construction of the federal Trademark Act of 1946 shall be examined as persuasive authority for the interpretation and construction of this 1995 amendatory and supplementary act. L.1995,c.171,s.16.
56:3-13.1a. Definitions relative to trademarks
As used in this act: "Abandoned," when used with reference to a mark, means the occurrence of either of the following:
(1) When its use has been discontinued with intent not to resume that use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall constitute prima facie evidence of abandonment.
(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. "Act" means and refers to P.L.1966, c.263 (C.56:3-13.2 et seq.) as amended and supplemented by: P.L.1971, c.171 (C.56:3-13.7a); P.L.1987, c.454 (C.56:3-13.16 et seq.); and P.L.1995, c.171 (C.56:3-13.1a et al.).
"Applicant" means the person filing an application for registration of a mark under this act, and the legal representatives, successors, or assigns of that person.
"Dilution" means the lessening of the capacity of the registrant's mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the parties, or the likelihood of confusion, mistake, or deception.
"Mark" means any trademark or service mark entitled to registration under this act, whether registered or not.
"Owner" means a person who has legal rights to a mark either as a result of registration or at common law.
"Person" means a natural person, and also includes a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.
"Registrant" means the person to whom the registration of a mark under this act is issued, and the legal representatives, successors, or assigns of that person.
"Secretary" or "Secretary of State" means the Secretary of State of New Jersey or the designee of the secretary charged with the administration of this act.
"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. Service mark includes titles, character names used by a person, and other distinctive features of radio or television programs, notwithstanding that they, or the programs, advertise the goods of the sponsor.
"Trademark" means any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the goods of the person, including a unique product, from those manufactured and sold by others, and to indicate the source of the goods, even if that source is unknown. "Trade name" means any name used by a person to identify a business or vocation of the person.
"Use" means the bona fide use of a mark in the ordinary course of trade in this State, and not made merely to reserve a right in a mark. A mark shall be deemed to be in use:
(1) on goods when it is placed in any manner on the goods or their containers, or the displays associated with the goods or containers, or on the tags or labels affixed to the goods or containers, or if the nature of the goods makes placement impracticable, then on the documents associated with the goods or their 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. L.1995,c.171,s.1.
56:3-13.2. Registrability.
A mark by which the goods or services of an applicant for registration may be distinguished from the goods or services of others shall not be registered if it:
(a) consists of or comprises immoral, deceptive or scandalous matter; or
(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; or
(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; or
(d) consists of or comprises the name, signature or portrait identifying a particular living individual, except by the individual's written consent; or
(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, or (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; provided, however, that nothing in this subsection (e) shall prevent the registration of a mark used 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 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 in this State by another and not abandoned or dissolved, 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. L.1966,c.263,s.2; amended 1995,c.171,s.2.
56:3-13.3. Application for registration
Subject to the limitations set forth in this act, any person who uses a mark may file in the office of the Secretary of State, in a manner complying with the requirements of the Secretary of State, an application for registration of that mark setting forth, but not limited to, the following information:
(a) the name and business address of the person applying for registration; and, if a corporation the state of incorporation, or, if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the Secretary of State;
(b) 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;
(c) 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
(d) 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 the mark, either with the United States Patent and Trademark Office or with the Secretary of State, or has the right to use such mark either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive. The Secretary of State may require a statement as to whether an application to register the mark, or portions of a composite of the mark, has been filed by the applicant or a predecessor in interest in the United States Patent and Trademark Office; and, if so, the applicant shall provide the Secretary of State with information regarding any application, including the filing date and serial number of each application, the status of each application and, if any application was refused registration or has otherwise not resulted in a registration, the reasons for the refusal or for the application not resulting in registration. The application shall be typed and prepared on 8-1/2" x 11" bond paper, or prepared using any other means approved by the Secretary of State. The Secretary of State shall also require that a drawing of the mark, complying with requirements that the Secretary of State may specify, accompany the application. The application shall be signed and verified by oath, affirmation or declaration subject to punishment for perjury, by the applicant or by a member of the firm or an officer of the corporation or association applying. The application shall be accompanied by three specimens showing the mark as actually used. The application shall be accompanied by an application fee established by and payable to the Secretary of State. L.1966,c.263,s.3; amended 1971,c.171,s.1; 1982,c.52,s.8; 1987,c.435,s.22; 1995,c.171,s.3.
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 the requirements of 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, any amendments to the application that may be reasonably requested by the secretary or deemed by the applicant to be advisable to respond to any rejection or objection.
c. The secretary may require the applicant to disclaim an unregistrable component of a mark otherwise registrable, and an applicant may voluntarily disclaim a component of a mark sought to be registered. The disclaimer shall not 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 is or becomes distinctive of the applicant's or registrant's goods or services.
d. Amendments may be made by the secretary to the application submitted by the applicant upon the applicant's agreement; or the secretary may require submission of a fresh application.
e. If the applicant is found not to be entitled to registration, the secretary shall notify the applicant and shall advise the applicant of the reasons for the denial of registration. 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, in which case the application shall be deemed to have been abandoned.
f. If the secretary finally refuses registration of the mark, the applicant may seek a review in accordance with the procedures set forth in section 14 of P.L.1995, c.171 (C.56:3-13.3b).
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, any other application for the same or confusingly similar marks shall be rejected. A rejected applicant may bring an action for cancellation of the registration of the same or confusingly similar mark upon grounds of prior or superior rights to the mark, in accordance with the provisions of subsection b. of section 14 of P.L.1995, c.171 (C.56:3-13.3b). L.1995,c.171,s.11.
56:3-13.3b. Review of registration decisions, procedure
a. An applicant or registrant shall have the right of appeal solely on the record to an administrative law judge designated by the Office of Administrative Law or to the Superior Court in Mercer County as follows:
(1) The grounds shall include:
(a) any decision by the Secretary of State refusing registration or renewal of an existing registration, or;
(b) the failure of the Secretary of State to update the register of marks in the manner provided by section 8 of P.L.1966, c.263 (C.56:3-13.8).
(2) An appeal shall not be taken until a formal request for reconsideration of the action at issue has been filed and denied by the Office of the Secretary of State.
(3) A notice of intent to appeal shall be filed with the Secretary of State at least 10 days prior to the taking of any appeal.
(4) An appeal may be taken by filing a complaint with the designated administrative law judge or with the Superior Court in Mercer County requesting equitable relief for the grounds on which the appeal is made. No money damages or costs shall be awarded if the requested relief is granted.
(5) A copy of the complaint shall be served on the Secretary of State, and the Secretary of State shall have the right to elect to intervene and defend, oppose or otherwise participate in the appeal.
(6) The Secretary of State shall promulgate the fees and charges for the appeal, which fees and charges shall be the same as that for other appeals, to an administrative law judge or to the New Jersey Superior Court.
b. Where grounds exist for cancellation as provided in section 8 of P.L.1966, c.263 (C.56:3-13.8), and the Secretary of State has not cancelled the mark, a third party with standing may, by petition to the Secretary of State, move to have the registration declared void and removed from the register of marks of record by acting as follows:
(1) A petition to cancel shall be filed with the Secretary of State, which shall state the facts in support of the petition, and shall be accompanied by a fee established by the Secretary of State.
(2) A copy of the petition shall be served on the registrant or the owner of the mark by certified mail, return receipt requested, and notice of the service shall be filed with the Secretary of State.
(3) The registrant or owner shall have 20 days from receipt of the petition within which to respond to the petition, providing evidence in support of the objection to the cancellation. The Secretary of State may provide an extension of time for the response.
(4) In the event that the registrant or owner files no objection to the cancellation, or in the event that grounds for cancellation are clear on the record, the Secretary of State shall order cancellation. In the event that the Secretary of State denies cancellation, the petitioner shall have a right of appeal to the designated administrative law judge or to the Superior Court in Mercer County in accordance with the procedures set forth in paragraphs (4), (5) and (6) of subsection a. of this section.
(5) Upon service of a copy of the complaint on the Secretary of State, the Secretary of State shall have the right to elect to intervene and defend, oppose or otherwise participate in the appeal. c. In any action brought against a nonresident registrant under this section, service may be effected in accordance with the procedures established for service upon nonresident corporations and business entities as provided in Rule 4:4-4(c) of the Rules Governing the Courts of the State of New Jersey, or any amendment to that rule. L.1995,c.171,s.14.
56:3-13.4. Certificate of registration
Upon compliance by the applicant with the requirements of this act, the Secretary of State 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 of State and the Seal of the State, and it shall show the name and business address and, if a corporation, the state of incorporation, or if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the Secretary of State, 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 of State under the provisions of this act or a copy of a certificate of registration duly certified by the Secretary of State shall be admissible in evidence as competent and sufficient proof of the registration of the mark in any action or judicial proceedings in any court of this State. L.1966,c.263,s.4; amended 1971,c.171,s.2; 1987,c.435,s.23; 1995,c.171,s.4.
56:3-13.5. Duration and renewal
Registration of a mark with the Secretary of State 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 the term, in a manner complying with the requirements of the Secretary of State, the registration may be renewed for a like term from the end of the expiring term. A renewal fee in an amount established by and payable to the Secretary of State, shall accompany the application for renewal of the registration. A mark registration may be renewed for successive periods of five years in like manner. Any registration in force on the effective date of P.L.1995, c.171 (C.56:3-13.1a et al.) shall continue in full force and effect for the unexpired term of the registration, and may be renewed by filing an application for renewal with the Secretary of State complying with the requirements of the Secretary of State and paying the renewal fee established by the Secretary of State within six months prior to the expiration of the registration. All applications for renewal shall include a verified statement that the mark has been and is still in use and shall include a specimen showing actual use of the mark on or in connection with the goods or services. L.1966,c.263,s.5; amended 1971,c.171,s.3; 1982,c.52,s.9; 1987,c.435,s.24; 1995,c.171,s.5.
56:3-13.6. Assignment, other instruments
a. Any mark and its registration or application for registration 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 shall be recorded with the Secretary of State upon the payment of the recording fee payable to the Secretary of State. An assignment of any registration under this act shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is filed for recording with the Secretary of State within 20 days after the date of the assignment or prior to the subsequent purchase or transfer.
b. Other instruments which relate to a mark registered or application pending pursuant to this act, including, but not limited to, a change of owner name, shall be recorded by the Secretary of State upon the payment of the recording fee established by and payable to the Secretary of State, provided that the instrument is in writing and executed by the applicant or registrant. Instruments recordable under the provisions of the Uniform Commercial Code, such as security interests and mortgages, and their recordation, shall continue to be governed by and recorded under the provisions of the Uniform Commercial Code.
c. Acknowledgement by the assignee or transferee shall be prima facie evidence of the execution of an assignment or other instrument and, when recorded by the Secretary of State, the record shall be prima facie evidence of execution.
d. A photocopy of any instrument referred to in subsections a. and b. of this section 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. L.1966,c.263,s.6; amended 1971,c.171,s.4; 1982,c.52,s.10; 1987,c.435,s.25; 1995,c.171,s.6.
56:3-13.7. Records
The Secretary of State shall keep for public examination a record of all marks registered or renewed under this act and applications for registration of a mark, and all documents recorded pursuant to section 6 of P.L.1966, c.263 (C.56:3-13.6). The Secretary of State shall provide copies of these records to the public upon payment of a fee established by and payable to the Secretary of State. L.1966,c.263,s.7; amended 1995,c.171,s.7.
56:3-13.7a. Certificate of availability
Upon request of any person, the Secretary of State shall issue upon the payment of a fee of $25.00 a certificate of availability of a mark (one to three marks). L. 1971, c. 171, s. 5; amended 1982,c.52,s.11; 1987,c.435,s.26.
56:3-13.8. Cancellation
The Secretary of State shall cancel from the register:
(a) after one year from the effective date of this act, all registrations under prior acts which are more than 10 years old and not renewed in accordance with this act;
(b) any registration concerning which the Secretary of State shall receive a voluntary request for cancellation thereof from the registrant or the assignee of record;
(c) all registrations granted under this act and not renewed in accordance with the provisions of this act;
(d) any registration concerning which a federal court of competent jurisdiction or a court of competent jurisdiction in this State shall find:
(1) that the registered mark has been abandoned;
(2) that the registrant is not the owner of the mark;
(3) that the registration was granted contrary to the provisions of section 2 of P.L.1966, c.263 (C.56:3-13.2);
(4) that the registration was obtained fraudulently;
(5) that 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 under this act, and not abandoned; provided, however, that should the registrant prove that he is the owner of a concurrent registration of his mark in the United States Patent and Trademark Office covering an area including this State, the registration under this act shall not be canceled;
(6) that the mark is or has become the generic name for the goods or services, or a portion thereof, for which it has been registered.
(e) when a federal court of competent jurisdiction or a court of competent jurisdiction in this State shall order cancellation of a registration on any ground. L.1966,c.263,s.8; amended 1995,c.171,s.8.
56:3-13.9a. Establishment of classification of goods, services
The secretary shall by regulation establish a classification of goods and services for convenience of administration of this act, but which shall not 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 or services on or in connection 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 shall require payment of a fee for each class. The classification of goods and services shall conform to the classification adopted by the United States Patent and Trademark Office pursuant to 15 U.S.C. s.1112. L.1995,c.171,s.12. 56:3-13.7a.
56:3-13.10. Fraudulent registration.
Any person who shall for himself or herself, or on behalf of any other person, procure the filing or registration of any mark in the office of the Secretary of State 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 the filing or registration, to be recovered by or on behalf of the injured party in any court of competent jurisdiction. L.1966,c.263,s.10; amended 1995,c.171,s.9.
56:3-13.13. Common law rights.
Nothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law. L.1966, c. 263, s. 13. 56:3-13.14. Severability If any provision hereof, or the application of such provision to any person or circumstance is held invalid, the remainder of this act shall not be affected thereby. L.1966, c. 263, s. 14.
56:3-13.14. Severability.
If any provision hereof, or the application of such provision to any person or circumstance is held invalid, the remainder of this act shall not be affected thereby. L.1966, c. 263, s. 14.
56:3-13.15. Repeal.
Sections 56:3-1 to 56:3-13 of the Revised Statutes are repealed, except that as to any suit, proceeding or appeal, and for that purpose only, pending at the time this act takes effect such repeal shall be deemed not to be effective until final determination of said pending suit, proceeding or appeal. L.1966, c. 263, s. 15.
56:3-13.16. Action for trafficking in counterfeit marks; remedies.
a. Subject to the provisions of section 13 of P.L.1966, c.263 (C.56:3-13.13), and with respect to a mark registered pursuant to this act and a mark protected at common law, any person who engages in the conduct specified in paragraphs (1) and (2) of this subsection shall be liable in a civil action by the owner or the designee of the owner of the mark for any or all of the remedies provided in subsections d., e. and f. of this section, except that under paragraph (2) of this subsection, the owner or designee shall not be entitled to recover profits or damages unless the conduct has been committed with the intent to cause confusion or mistake or to deceive.
(1) The use, without consent of the owner or designee, of any reproduction, counterfeit, copy, or colorable imitation of a mark in connection with the sale, distribution, offering for sale, or advertising in this State of any goods or services on or in connection with which the use is likely to cause confusion or mistake or to deceive as to the source of origin of the goods or services; or
(2) The reproduction, counterfeiting, copying or colorable imitation of a mark and the application of a reproduction, counterfeit, copy or colorable imitation of a mark 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 the goods or services.
b. The action shall be brought in the Superior Court of the county in which the defendant resides, is found, has an agent, transacts business, or in which the reproduction, counterfeit, copy or imitation of the mark is found.
c. The plaintiff in the civil action shall establish violation of subsection a. of this section by a preponderance of the evidence. A jury trial shall be available at the request of either party.
d. In an action brought pursuant to subsection a. of this section, the court may grant temporary restraining orders and injunctions, as may be deemed just and reasonable by the court, to prevent any conduct described in paragraphs (1) and (2) of subsection a. of this section, and may require the defendants to pay to the plaintiff all profits derived from or all damages suffered by reason of such conduct, or both. The court may also order that any reproduction, counterfeit, copy or imitation in the possession or under the control of any defendant in the case be disposed of or destroyed in accordance with the provisions of section 3 of P.L.1987, c.454 (C.56:3-13.17). The court, in its discretion, may enter judgment for an amount not to exceed three times the profits or damages and may also award reasonable attorneys' fees and costs of suit to the prevailing party in cases where the court finds the other party committed the wrongful acts with knowledge or in bad faith or if the court finds the other party's conduct so egregious as to justify such an award. In assessing defendant's profits, plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed therefrom.
e. Upon finding a violation of subsection a. of this section, the court may, in its discretion, award prejudgment interest on the monetary recovery awarded under subsection d. of this section, at an annual interest rate established pursuant to Rule 4:42-11 of the Rules Governing the Courts of the State of New Jersey, commencing on the date of the service of the plaintiff's pleadings which set forth the claim for monetary recovery and ending on the date the judgment is awarded or for a shorter time as the court deems appropriate.
f. Any provisional or equitable remedy that would be available in a comparable civil action commenced under the federal Trademark Act of 1946, 15 U.S.C. s.1051 et seq. may, to the same extent and upon a comparable showing, be made available to a party in an action commenced under this section, subject to the conditions and requirements imposed by the Civil Practice Rules of the Rules Governing the Courts of the State of New Jersey.
g. (Deleted by amendment, P.L.1995, c.171.)
h. In any civil proceeding brought under this section relating to the manufacture, use, display or sale of a counterfeit mark, in addition to the remedies available to an owner as provided in subsections d., e. and f. of this section, the court shall have jurisdiction to prevent and restrain the manufacture, use, display or sale of a counterfeit mark by issuing appropriate orders, including, in appropriate circumstances, an ex parte temporary restraining order without a seizure, or an ex parte order without notice for the seizure of counterfeit goods and the following materials:
(1) Spurious marks;
(2) The means of making the spurious marks;
(3) Articles in the defendant's possession bearing the spurious marks, or on or in connection with which the spurious marks are intended to be used;
(4) Business records documenting the manufacture, purchase or sale of counterfeit marks. Any business records seized through an ex parte seizure order under this subsection shall be taken into the custody of the court. The applicant or its representatives shall not be permitted to see these records during the course of the search or thereafter, except under an appropriate protective order, issued on notice to the person from whom the business records were seized, with respect to confidential business information.
i. Ex parte seizure orders under subsection h. of this section shall not be issued unless the applicant:
(1) Provides an affidavit clearly setting forth specific facts in support of the need for the seizure order, and
(2) Provides security in an amount as the court deems adequate for the payment of damages as any person may suffer as a result of a wrongful seizure or wrongful attempted seizure of his property under subsection h. of this section. These damages shall include but not be limited to lost profits, the cost of materials, and loss of good will. In any case in which it is shown that the applicant caused the seizure without adequate evidence that the goods or materials were counterfeit, damages shall include reasonable attorney's fees.
(3) The court shall place under seal any order for an ex parte seizure under subsection h. of this section, together with the papers upon which the order was granted, until the party in possession of the goods or materials has been given an opportunity to contest the order.
j. No order for an ex parte seizure under subsection h. of this section shall be issued unless the court finds that a temporary restraining order on notice to the defendant or an ex parte temporary restraining order would be inadequate to protect the applicant's interest. In particular, no court shall issue an order for an ex parte seizure under subsection h. of this section unless it clearly appears from specific facts offered under oath or affirmation that:
(1) Counterfeit goods or the materials described above are located at the place identified in the affidavit;
(2) The applicant will suffer immediate and irreparable injury, loss or damage if the goods or materials are not seized through execution of an ex parte order, in that:
(a) The person from whom the goods or materials are to be seized would not comply with an order directing him to retain the goods or materials and to make them available to the court, but would instead make the goods or materials inaccessible by destroying, hiding or transferring them; or
(b) The person from whom the goods or materials are to be seized will otherwise act to frustrate the court in a proceeding under this section; and
(3) The applicant has made no effort to publicize the requested seizure and will refrain from doing so until the party in possession of the goods and materials has been given an opportunity to contest the order.
k. An order for a seizure under subsection h. of this section shall particularly describe the goods or materials to be seized, the place from which they are to be seized, and the amount of security provided by the applicant.
l. The court shall set a hearing date not more than 10 court days after the last date on which seizure is ordered at which any person from whom goods are seized may appear and seek release of the seized goods.
m. Where an order for seizure is made, the court shall direct the sheriff of the county in which the property is located to make the seizure or, where the property to be seized is located in more than one county, the direction shall issue to the sheriff of each of those counties. The sheriff shall make the seizure within 72 hours of the order. L.1987,c.454,s.2; amended 1995,c.171,s.10.
56:3-13.17. Destruction order.
In any civil action brought pursuant to this act, if the court determines that a mark is counterfeit, the court may order the destruction of all marks, all means of making the marks, and all goods, articles or other matter bearing the marks, which are in the possession or control of the court or any party to the action; or, after obliteration of the counterfeit mark, the court may order the disposal of the aforesaid materials to the State, a civil plaintiff, an eleemosynary institution, or any appropriate private person other than the person from whom the materials were obtained. L. 1987, c. 454, s. 3.
56:3-13.18. Not exclusive remedy.
Nothing in this act shall supersede any provision of federal, State, or other law imposing criminal penalties or affording civil remedies in addition to those provided for in this act, except that no plaintiff who recovers treble damages or treble profits pursuant to subsection d. of section 2 of this act shall also be entitled to corresponding recovery under any other federal, State or other law in connection with the same underlying occurrences or transactions. L. 1987, c. 454, s. 4.
56:3-13.19. Estoppel.
A final judgment or decree rendered in favor of the State in a criminal proceeding brought under Chapter 20 or 21 of Title 2C of the New Jersey Statutes shall estop the defendant in the action or proceeding in any subsequent civil action as to all matters as to which the judgment in the action or proceeding would be an estoppel between the parties to it. L. 1987, c. 454, s. 5.
56:3-13.20. Remedies for dilution of famous marks.
The owner of a mark which is famous in this State shall be entitled, subject to the principles of equity, to an injunction, commencing after the owner's mark becomes famous, against another person's use of the mark which causes dilution of the distinctive quality of the owner's mark, and to obtain other relief provided in this section. In determining whether a mark is famous, a court may consider factors such as, but not limited to:
a. The degree of inherent or acquired distinctiveness of the mark in this State;
b. The duration and extent of use of the mark in connection with the goods and services;
c. The duration and extent of advertising and publicity of the mark in this State;
d. The geographical extent of the trading area in which the mark is used;
e. The channels of trade for the goods or services with which the registrant's mark is used;
f. The degree of recognition of the registrant's mark in its and in the other's trading areas and channels of trade in this State; and
g. The nature and extent of use of the same or similar mark by third parties. The owner of a famous mark shall be entitled only to injunctive relief in this State in an action brought under this section, unless the subsequent user willfully intended to trade on the owner's reputation or to cause dilution of the owner's mark. If willful intent is proven, the owner shall also be entitled to any other remedies set forth in this act, subject to the discretion of the court and the principles of equity. L.1995,c.171,s.13.
56:3-13.21. Regulations, fees.
The Secretary of State shall promulgate regulations pursuant to the provisions of the "Administrative Procedure Act," P.L.1968, c.410 (C.52:14B-1 et seq.) to effectuate the provisions of this act. The regulations promulgated by the secretary shall include the fees payable for the various applications and recording fees and for related services. Unless specified by the secretary, the fees shall not be refundable.
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