0001| SENATE BILL 605
|
0002| 43rd legislature - STATE OF NEW MEXICO - first session, 1997
|
0003| INTRODUCED BY
|
0004| MICHAEL S. SANCHEZ
|
0005|
|
0006|
|
0007|
|
0008|
|
0009|
|
0010| AN ACT
|
0011| RELATING TO TRADEMARKS; ENACTING THE TRADEMARK ACT; REPEALING
|
0012| AND ENACTING CERTAIN SECTIONS OF THE NMSA 1978.
|
0013|
|
0014| BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF NEW MEXICO:
|
0015| Section 1. SHORT TITLE.--This act may be cited as the
|
0016| "Trademark Act".
|
0017| Section 2. PURPOSE AND INTENT OF ACT.--The purpose of the
|
0018| Trademark Act is to provide a system of state trademark
|
0019| registration and protection substantially consistent with the
|
0020| federal system of trademark registration and protection under
|
0021| the Trademark Act of 1946, as amended. It is the intent that
|
0022| the construction given the federal act should be examined as
|
0023| persuasive authority for interpreting and construing the
|
0024| Trademark Act.
|
0025| Section 3. DEFINITIONS.--As used in the Trademark Act:
|
0001| A. "applicant" includes the person filing an
|
0002| application for registration of a mark under the Trademark Act
|
0003| as well as the legal representatives, successors or assigns of
|
0004| the person;
|
0005| B. "dilution" means the lessening of the capacity
|
0006| of the registrant's mark to identify and distinguish goods or
|
0007| services regardless of the presence or absence of:
|
0008| (1) competition between the parties; or
|
0009| (2) the likelihood of confusion, mistake or
|
0010| deception;
|
0011| C. "mark" includes any trademark or service mark
|
0012| entitled to registration under the Trademark Act whether
|
0013| registered or not;
|
0014| D. "person" and any other word or term used to
|
0015| designate the applicant or other party entitled to a benefit or
|
0016| privilege or rendered liable under the provisions of the
|
0017| Trademark Act, includes a juristic person as well as a natural
|
0018| person; "juristic person" includes a firm, partnership,
|
0019| corporation, union, association or other organization capable
|
0020| of suing and being sued in a court of law;
|
0021| E. "registrant" includes the person to whom the
|
0022| registration of a mark under the Trademark Act is issued as
|
0023| well as the legal representative, successors or assigns of the
|
0024| person;
|
0025| F. "secretary" means the secretary of state or the
|
0001| secretary's designee charged with the administration of the
|
0002| Trademark Act;
|
0003| G. "service mark" means any word, name, symbol,
|
0004| device or any combination of these used by a person to identify
|
0005| and distinguish the services of one person, including a unique
|
0006| service, from the services of other persons and to indicate the
|
0007| source of the services, even if that source is unknown;
|
0008| provided, titles and character names used by a person and other
|
0009| distinctive features of radio or television programs may be
|
0010| registered as service marks notwithstanding that they or the
|
0011| programs may advertise the goods of the sponsor;
|
0012| H. "trademark" means any word, name, symbol, device
|
0013| or any combination of these used by a person to identify and
|
0014| distinguish the goods of the person, including a unique
|
0015| product, from those manufactured or sold by others, and to
|
0016| indicate the source of the goods, even if that source is
|
0017| unknown;
|
0018| I. "trade name" means any name used by a person to
|
0019| identify a business or vocation of the person; and
|
0020| J. "use" means the bona fide use of a mark in the
|
0021| ordinary course of trade and not made merely to reserve a right
|
0022| in the mark. For the purposes of the Trademark Act, a mark is
|
0023| deemed to be in use:
|
0024| (1) on goods when it is placed in any manner
|
0025| on the goods or on the containers or the displays associated
|
0001| with it or on the tags or labels affixed to them, or if the
|
0002| nature of the goods makes the placement impracticable, then on
|
0003| documents associated with the goods or their sale, and the
|
0004| goods are sold or transported in commerce in this state; and
|
0005| (2) on services when it is used or displayed
|
0006| in the sale or advertising of services and the services are
|
0007| rendered in this state.
|
0008| Section 4. REGISTRABILITY.--
|
0009| A. A mark by which the goods or services of any
|
0010| applicant for registration may be distinguished from the goods
|
0011| or services of others shall not be registered if it:
|
0012| (1) consists of or comprises immoral,
|
0013| deceptive or scandalous matter;
|
0014| (2) consists of or comprises matter that may
|
0015| disparage or falsely suggest a connection with persons living
|
0016| or dead, institutions, beliefs or national symbols or that may
|
0017| bring them into contempt or disrepute;
|
0018| (3) consists of or comprises the flag, coat of
|
0019| arms or other insignia of the United States or of any state,
|
0020| municipality, foreign nation or any simulation of these;
|
0021| (4) consists of or comprises the name,
|
0022| signature or portrait identifying a particular living
|
0023| individual, except by the individual's written consent;
|
0024| (5) consists of a mark that:
|
0025| (a) when used on or in connection with
|
0001| the goods or services of the applicant, is merely descriptive
|
0002| or deceptively misdescriptive of them;
|
0003| (b) when used on or in connection with
|
0004| the goods or services of the applicant, is primarily
|
0005| geographically descriptive or deceptively misdescriptive of
|
0006| them;
|
0007| (c) is primarily merely a surname;
|
0008| provided, however, nothing in this subsection shall prevent the
|
0009| registration of a mark used by the applicant that has become
|
0010| distinctive of the applicant's goods or services. The
|
0011| secretary may accept as evidence that the mark has become
|
0012| distinctive as used on or in connection with the applicant's
|
0013| goods or services, proof of continuous use of it as a mark by
|
0014| the applicant in this state for the five years before the date
|
0015| on which the claim of distinctiveness is made; or
|
0016| (d) consists of or comprises a mark that
|
0017| so resembles a mark registered in this state or a mark or trade
|
0018| name previously used by another and not abandoned, as to be
|
0019| likely, when used on or in connection with the goods or
|
0020| services of the applicant, to cause confusion or mistake or to
|
0021| deceive.
|
0022| B. A mark is deemed to be abandoned when either of
|
0023| the following occurs:
|
0024| (1) when its use has been discontinued with
|
0025| intent not to resume that use. Intent not to resume may be
|
0001| inferred from circumstances; nonuse for two consecutive years
|
0002| shall constitute prima facie evidence of abandonment; or
|
0003| (2) when any course of conduct of the owner,
|
0004| including acts of omission as well as commission, causes the
|
0005| mark to lose its significance as a mark.
|
0006| Section 5. APPLICATION OF REGISTRATION.--
|
0007| A. Subject to the limitations set forth in the
|
0008| Trademark Act, any person who uses a mark may file in the
|
0009| office of the secretary on a form prescribed by the secretary
|
0010| an application for registration of that mark setting forth, but
|
0011| not limited to, the following information:
|
0012| (1) the name and business address of the
|
0013| person applying for the registration; and if a corporation, the
|
0014| state of incorporation; if a partnership, the state in which
|
0015| the partnership is organized and the names of the general
|
0016| partners, as specified by the secretary;
|
0017| (2) the goods or services on or in connection
|
0018| with which the mark is used and the mode or manner in which the
|
0019| mark is used on or in connection with the goods or services and
|
0020| the class in which the goods or services fall;
|
0021| (3) the date when the mark was first used
|
0022| anywhere and the date when it was first used in this state by
|
0023| the applicant or a predecessor in interest;
|
0024| (4) a written description of the mark; and
|
0025| (5) a statement that the applicant is the
|
0001| owner of the mark, that the mark is in use and that, to the
|
0002| knowledge of the person verifying the application, no other
|
0003| person has registered, either federally or in this state, or
|
0004| has the right to use the mark either in the identical form of
|
0005| it or in the near resemblance thereto as to be likely, when
|
0006| applied to the goods or services of the other person, to cause
|
0007| confusion, mistake or to deceive.
|
0008| B. The secretary may also require a statement as to
|
0009| whether an application to register the mark or portions of it
|
0010| or a composite of it, has been filed by the applicant or a
|
0011| predecessor in interest in the United States patent and
|
0012| trademark office; and, if so, the applicant shall provide full
|
0013| particulars with respect to it including the filing date,
|
0014| serial number of each application, its status and, if any
|
0015| application was finally refused registration or has otherwise
|
0016| not resulted in a registration, the reason for the refusal or
|
0017| for not being registered.
|
0018| C. The secretary may also require that a drawing of
|
0019| the mark or three specimens showing the mark as it is actually
|
0020| used accompany the application and that it complies with the
|
0021| requirements specified by the secretary.
|
0022| D. The application shall be signed and verified by
|
0023| oath, affirmation or declaration subject to perjury laws by the
|
0024| applicant or by a member of the firm or an officer of the
|
0025| corporation or association applying for registration.
|
0001| E. The application shall be accompanied by a fee of
|
0002| twenty-five dollars ($25.00) for each application.
|
0003| Section 6. FILING OF APPLICATION.--
|
0004| A. Upon the filing of an application for
|
0005| registration and payment of the application fee, the secretary
|
0006| may cause the application to be examined for conformity with
|
0007| the Trademark Act.
|
0008| B. The applicant shall provide any additional
|
0009| pertinent information requested by the secretary, including a
|
0010| description of a design mark and may make, or authorize the
|
0011| secretary to make, any reasonable amendments to the application
|
0012| as may be requested by the secretary or deemed by the applicant
|
0013| to be advisable to respond to any objection or rejection of the
|
0014| application.
|
0015| C. The secretary may require the applicant to
|
0016| disclaim an unregistrable component of a mark that would
|
0017| otherwise be registrable, and an applicant may voluntarily
|
0018| disclaim a component of a mark sought to be registered. No
|
0019| disclaimer shall prejudice or affect the applicant's or
|
0020| registrant's rights then existing or thereafter arising in the
|
0021| disclaimed matter or the applicant's or registrant's rights of
|
0022| registration on another application if the disclaimed matter is
|
0023| or becomes distinctive of the applicant's or registrant's goods
|
0024| or services.
|
0025| D. The secretary may amend the application upon the
|
0001| applicant's written agreement, or the secretary may require a
|
0002| new application to be submitted.
|
0003| E. If the applicant is found not to be entitled to
|
0004| registration, the secretary shall advise the applicant of the
|
0005| reasons for non-registration. The applicant shall have a
|
0006| reasonable period of time as specified by the secretary in
|
0007| which to reply or to amend the application for reexamination.
|
0008| This procedure may be repeated until the secretary makes a
|
0009| final refusal of registration of the mark or the applicant
|
0010| fails to reply or amend the application within the period
|
0011| specified by the secretary, in which case the application shall
|
0012| be deemed to have been abandoned.
|
0013| F. The secretary shall grant priority to the
|
0014| applications in order of filing. In the case of any
|
0015| application rejected because of a prior-filed application of
|
0016| the same or confusingly similar mark for the same or related
|
0017| goods or services, the applicant may bring an action for
|
0018| cancellation of the registration on grounds of prior or
|
0019| superior rights to the mark as provided in Section 11 of the
|
0020| Trademark Act.
|
0021| Section 7. CERTIFICATE OF REGISTRATION.--
|
0022| A. Upon compliance by the applicant with the
|
0023| requirements of the Trademark Act, the secretary shall issue
|
0024| and deliver a certificate of registration to the applicant.
|
0025| The certificate of registration shall be issued under the
|
0001| signature of the secretary and the seal of the state, and it
|
0002| shall show:
|
0003| (1) the name and business address;
|
0004| (2) if a corporation, limited liability
|
0005| company or partnership, the state of incorporation, or if a
|
0006| partnership, the state in which the partnership is organized;
|
0007| (3) the date claimed for the first use of the
|
0008| mark anywhere;
|
0009| (4) the date claimed for the first use of the
|
0010| mark in New Mexico;
|
0011| (5) the class and description of goods or
|
0012| services on or in connection with which the mark is used; and
|
0013| (6) the registration date and the term of
|
0014| registration.
|
0015| B. A certificate of registration issued by the
|
0016| secretary or a copy of the certificate of registration duly
|
0017| certified by the secretary shall be admissible in evidence as
|
0018| competent and sufficient proof of the registration of the mark
|
0019| in any actions or judicial proceedings in this state.
|
0020| Section 8. DURATION AND RENEWAL.--
|
0021| A. A registration of a mark is effective for ten
|
0022| years from the date of registration. An application for
|
0023| renewal shall be filed within six months prior to its
|
0024| expiration in the manner required by the secretary. The
|
0025| renewed registration shall be effective for ten years from the
|
0001| date of expiration of the original registration. The
|
0002| application for renewal shall be accompanied by the renewal
|
0003| fee. A registration of a mark may be renewed for successive
|
0004| periods of ten years as provided in this section.
|
0005| B. All applications for renewal, whether of
|
0006| registrations made under the Trademark Act or of registrations
|
0007| made under any act prior to the effective date of that act,
|
0008| shall include a verified statement that the mark has been and
|
0009| is still in use and include a specimen showing actual use of
|
0010| the mark on or in connection with the goods or services.
|
0011| Section 9. ASSIGNMENTS--CHANGES OF NAME AND OTHER
|
0012| INSTRUMENTS.--
|
0013| A. A mark and its representation shall be
|
0014| assignable with the good will of the business in which the mark
|
0015| is used, or with that part of the good will of the business
|
0016| connected with the use of and symbolized by the mark. The
|
0017| assignment shall be by instruments in writing duly executed and
|
0018| may be recorded with the secretary upon payment of a twenty-
|
0019| five dollar ($25.00) recording fee. The secretary, upon
|
0020| recording the assignment, shall issue in the name of the
|
0021| assignee a new certificate for the remainder of the term of the
|
0022| registration or the last renewal of the registration. An
|
0023| assignment of a registration shall be void as against any
|
0024| subsequent purchaser for valuable consideration without notice
|
0025| unless it is recorded with the secretary within three months
|
0001| after its date or unless it is recorded prior to the subsequent
|
0002| purchase.
|
0003| B. A registrant or applicant effecting a change of
|
0004| the name of the person to whom the mark was issued or for whom
|
0005| an application was filed may record a certificate of change of
|
0006| name of the registrant or applicant with the secretary upon
|
0007| payment of the recording fee specified in Subsection A of this
|
0008| section. The secretary may issue to the owner a certificate of
|
0009| amendment of registration for the remainder of the term of
|
0010| registration or the last renewal of that registration.
|
0011| C. Other instruments that relate to a mark
|
0012| registered or a pending application include licenses, security
|
0013| interests or mortgages, and they may be recorded in the
|
0014| discretion of the secretary provided the instrument is in
|
0015| writing and has been duly executed.
|
0016| D. Acknowledgment shall be prima facie evidence of
|
0017| the execution of an assignment or other instrument and, when
|
0018| recorded by the secretary, the record shall be prima facie
|
0019| evidence of execution. A photocopy of an instrument specified
|
0020| in this section shall be accepted for recording if it is
|
0021| certified by any of the parties thereto or their successors.
|
0022| Section 10. RECORDS.--The secretary shall keep for public
|
0023| examination a record of all marks registered or renewed under
|
0024| the Trademark Act and a record of all documents recorded
|
0025| pursuant to Section 9 of the Trademark Act.
|
0001| Section 11. CANCELLATION.--The secretary shall cancel
|
0002| from the register, in whole or in part:
|
0003| A. a registration where the secretary shall receive
|
0004| a voluntary request for cancellation from the registrant or the
|
0005| assignee of record;
|
0006| B. a registration granted under the Trademark Act
|
0007| and not renewed in accordance with its provisions;
|
0008| C. a registration of which a court of competent
|
0009| jurisdiction finds that:
|
0010| (1) the registered mark has been abandoned;
|
0011| (2) the registrant is not the owner of the
|
0012| mark;
|
0013| (3) the registration was granted improperly;
|
0014| (4) the registration was obtained
|
0015| fraudulently;
|
0016| (5) the mark is or has become the generic name
|
0017| for the goods or services or a portion of them, for which it
|
0018| has been registered; or
|
0019| (6) the registered mark is so similar as to
|
0020| likely cause confusion or mistake or to deceive, to a mark
|
0021| registered by another person in the United States patent and
|
0022| trademark office prior to the date of the filing of the
|
0023| application for registration by the registrant and not
|
0024| abandoned; or
|
0025| D. when a court of competent jurisdiction orders
|
0001| the cancellation of a registration on any ground.
|
0002| Section 12. CLASSIFICATION.--The secretary shall by
|
0003| regulation establish a classification of goods and services for
|
0004| convenience of administration of the Trademark Act but not to
|
0005| limit or extend the applicant's or registrant's rights. A
|
0006| single application for registration of a mark may include any
|
0007| or all goods upon which, or services with which, the mark is
|
0008| actually being used indicating the appropriate class or classes
|
0009| of goods or services. When a single application includes goods
|
0010| or services that fall within multiple classes, the secretary
|
0011| shall require payment of twenty-five dollars ($25.00) for each
|
0012| class. As far as practical the classification of goods and
|
0013| services should conform to the classification adopted by the
|
0014| United States patent and trademark office.
|
0015| Section 13. FRAUDULENT REGISTRATION.--A person who, for
|
0016| himself on or behalf of any other person, procures the filing
|
0017| or registration of any mark in the office of the secretary by
|
0018| knowingly making any false or fraudulent representation or
|
0019| declaration, orally or in writing or by any other fraudulent
|
0020| means, shall be liable to pay all damages sustained as a
|
0021| consequence of that filing or registration recoverable by or on
|
0022| behalf of the injured party in any court of competent
|
0023| jurisdiction.
|
0024| Section 14. FEES.--The secretary shall charge twenty-five
|
0025| dollars ($25.00) for the various applications and filing fees
|
0001| required by the Trademark Act and for related services. The
|
0002| fees required by the Trademark Act are not refundable.
|
0003| Section 15. REPEAL.--Sections 57-3-1, 57-3-2 and 57-3-4
|
0004| through 57-3-12 NMSA 1978 (being Laws 1969, Chapter 142,
|
0005| Section 1, Laws 1959, Chapter 345, Sections 1 and 2, Laws 1969,
|
0006| Chapter 142, Section 2, Laws 1959, Chapter 345, Sections 3 and
|
0007| 4, Laws 1969, Chapter 142, Sections 4 through 7 and Laws 1959,
|
0008| Chapter 345, Section 6, as amended) are repealed.
|
0009| Section 16. SEVERABILITY.--If any part or application of
|
0010| the Trademark Act is held invalid, the remainder or its
|
0011| application to other situations or persons shall not be
|
0012| affected.
|
0013| Section 17. APPLICABILITY.--Any registration of a mark in
|
0014| force upon the effective date of the Trademark Act shall
|
0015| continue in effect for the remainder of its unexpired term and
|
0016| may be renewed under the provisions of that act within six
|
0017| months prior to the expiration specified in its registration.
|
0018| The provisions of the Trademark Act shall not affect any
|
0019| application, suit, proceeding or appeal pending on the
|
0020| effective date of the Trademark Act.
|
0021| Section 18. EFFECTIVE DATE.--The effective date of the
|
0022| provisions of this act is July 1, 1997.
|
0023|
|
0024|
|
0025|
|
0001| FORTY-THIRD LEGISLATURE
|
0002| FIRST SESSION, 1997
|
0003|
|
0004|
|
0005| March 15, 1997
|
0006|
|
0007| Mr. President:
|
0008|
|
0009| Your JUDICIARY COMMITTEE, to whom has been referred
|
0010|
|
0011| SENATE PUBLIC AFFAIRS COMMITTEE SUBSTITUTE FOR
|
0012| SENATE BILL 605
|
0013|
|
0014| has had it under consideration and reports same with
|
0015| recommendation that it DO PASS.
|
0016|
|
0017| Respectfully submitted,
|
0018|
|
0019|
|
0020|
|
0021|
|
0022| __________________________________
|
0023| Fernando R. Macias, Chairman
|
0024|
|
0025|
|
0001|
|
0002| Adopted_______________________ Not
|
0003| Adopted_______________________
|
0004| (Chief Clerk) (Chief Clerk)
|
0005|
|
0006|
|
0007|
|
0008| Date ________________________
|
0009|
|
0010|
|
0011| The roll call vote was 6 For 0 Against
|
0012| Yes: 6
|
0013| No: 0
|
0014| Excused: Tsosie, Vernon
|
0015| Absent: None
|
0016|
|
0017|
|
0018| S0605JU1
|
0019| State of New Mexico
|
0020| House of Representatives
|
0021|
|
0022| FORTY-THIRD LEGISLATURE
|
0023| FIRST SESSION, 1997
|
0024|
|
0025|
|
0001| March 21, 1997
|
0002|
|
0003|
|
0004| Mr. Speaker:
|
0005|
|
0006| Your CONSUMER AND PUBLIC AFFAIRS COMMITTEE, to
|
0007| whom has been referred
|
0008|
|
0009| SENATE PUBLIC AFFAIRS COMMITTEE SUBSTITUTE FOR
|
0010| SENATE BILL 605
|
0011|
|
0012| has had it under consideration and reports same with
|
0013| recommendation that it DO PASS.
|
0014|
|
0015| Respectfully submitted,
|
0016|
|
0017|
|
0018|
|
0019|
|
0020| Gary King, Chairman
|
0021|
|
0022|
|
0023| Adopted Not Adopted
|
0024|
|
0025| (Chief Clerk) (Chief Clerk)
|
0001|
|
0002| Date
|
0003|
|
0004| The roll call vote was 6 For 0 Against
|
0005| Yes: 6
|
0006| Excused: Rios, Sandel, Vaughn, Vigil
|
0007| Absent: None
|
0008|
|
0009|
|
0010| G:\BILLTEXT\BILLW_97\S0605
|