0001| SENATE PUBLIC AFFAIRS COMMITTEE SUBSTITUTE FOR | 0002| SENATE BILL 605 | 0003| 43rd legislature - STATE OF NEW MEXICO - first session, 1997 | 0004| | 0005| | 0006| | 0007| | 0008| | 0009| | 0010| | 0011| AN ACT | 0012| RELATING TO TRADEMARKS; ENACTING THE TRADEMARK ACT; REPEALING | 0013| AND ENACTING CERTAIN SECTIONS OF THE NMSA 1978. | 0014| | 0015| BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF NEW MEXICO: | 0016| Section 1. SHORT TITLE.--This act may be cited as the | 0017| "Trademark Act". | 0018| Section 2. PURPOSE AND INTENT OF ACT.--The purpose of the | 0019| Trademark Act is to provide a system of state trademark | 0020| registration and protection substantially consistent with the | 0021| federal system of trademark registration and protection under | 0022| the Trademark Act of 1946, as amended. It is the intent that | 0023| the construction given the federal act should be examined as | 0024| persuasive authority for interpreting and construing the | 0025| Trademark Act. | 0001| Section 3. DEFINITIONS.--As used in the Trademark Act: | 0002| A. "applicant" includes the person filing an | 0003| application for registration of a mark under the Trademark Act | 0004| as well as the legal representatives, successors or assigns of | 0005| the person; | 0006| B. "dilution" means the lessening of the capacity | 0007| of the registrant's mark to identify and distinguish goods or | 0008| services regardless of the presence or absence of: | 0009| (1) competition between the parties; or | 0010| (2) the likelihood of confusion, mistake or | 0011| deception; | 0012| C. "mark" includes any trademark or service mark | 0013| entitled to registration under the Trademark Act whether | 0014| registered or not; | 0015| D. "person" and any other word or term used to | 0016| designate the applicant or other party entitled to a benefit or | 0017| privilege or rendered liable under the provisions of the | 0018| Trademark Act, includes a juristic person as well as a natural | 0019| person; "juristic person" includes a firm, partnership, | 0020| corporation, union, association or other organization capable | 0021| of suing and being sued in a court of law; | 0022| E. "registrant" includes the person to whom the | 0023| registration of a mark under the Trademark Act is issued as | 0024| well as the legal representative, successors or assigns of the | 0025| person; | 0001| F. "secretary" means the secretary of state or the | 0002| secretary's designee charged with the administration of the | 0003| Trademark Act; | 0004| G. "service mark" means any word, name, symbol, device | 0005| or any combination of these used by a person to identify and | 0006| distinguish the services of one person, including a unique | 0007| service, from the services of other persons and to indicate the | 0008| source of the services, even if that source is unknown; provided, | 0009| titles and character names used by a person and other distinctive | 0010| features of radio or television programs may be registered as | 0011| service marks notwithstanding that they or the programs may | 0012| advertise the goods of the sponsor; | 0013| H. "trademark" means any word, name, symbol, device or | 0014| any combination of these used by a person to identify and | 0015| distinguish the goods of the person, including a unique product, | 0016| from those manufactured or sold by others, and to indicate the | 0017| source of the goods, even if that source is 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 in | 0022| the mark. For the purposes of the Trademark Act, a mark is deemed | 0023| to be in use: | 0024| (1) on goods when it is placed in any manner on | 0025| the goods or on the containers or the displays associated with it | 0001| or on the tags or labels affixed to them, or if the nature of the | 0002| goods makes the placement impracticable, then on documents | 0003| associated with the goods or their sale, and the goods are sold or | 0004| transported in commerce in this state; and | 0005| (2) on services when it is used or displayed in | 0006| the sale or advertising of services and the services are rendered | 0007| 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 or | 0011| services of others shall not be registered if it: | 0012| (1) consists of or comprises immoral, deceptive | 0013| or scandalous matter; | 0014| (2) consists of or comprises matter that may | 0015| disparage or falsely suggest a connection with persons living or | 0016| dead, institutions, beliefs or national symbols or that may bring | 0017| 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, signature | 0022| or portrait identifying a particular living individual, except by | 0023| the individual's written consent; | 0024| (5) consists of a mark that: | 0025| (a) when used on or in connection with the | 0001| goods or services of the applicant, is merely descriptive or | 0002| deceptively misdescriptive of them; | 0003| (b) when used on or in connection with the | 0004| goods or services of the applicant, is primarily geographically | 0005| descriptive or deceptively misdescriptive of them; | 0006| (c) is primarily merely a surname; | 0007| provided, however, nothing in this subsection shall prevent the | 0008| registration of a mark used by the applicant that has become | 0009| distinctive of the applicant's goods or services. The secretary | 0010| may accept as evidence that the mark has become distinctive as | 0011| used on or in connection with the applicant's goods or services, | 0012| proof of continuous use of it as a mark by the applicant in this | 0013| state for the five years before the date on which the claim of | 0014| distinctiveness is made; or | 0015| (d) consists of or comprises a mark that so | 0016| resembles a mark registered in this state or a mark or trade name | 0017| previously used by another and not abandoned, as to be likely, | 0018| when used on or in connection with the goods or services of the | 0019| applicant, to cause confusion or mistake or to deceive. | 0020| B. A mark is deemed to be abandoned when either of the | 0021| following occurs: | 0022| (1) when its use has been discontinued with | 0023| intent not to resume that use. Intent not to resume may be | 0024| inferred from circumstances; nonuse for two consecutive years | 0025| shall constitute prima facie evidence of abandonment; or | 0001| (2) when any course of conduct of the owner, | 0002| including acts of omission as well as commission, causes the mark | 0003| to lose its significance as a mark. | 0004| Section 5. APPLICATION OF REGISTRATION.-- | 0005| A. Subject to the limitations set forth in the | 0006| Trademark Act, any person who uses a mark may file in the office | 0007| of the secretary on a form prescribed by the secretary an | 0008| application for registration of that mark setting forth, but not | 0009| limited to, the following information: | 0010| (1) the name and business address of the person | 0011| applying for the registration; and if a corporation, the state of | 0012| incorporation; if a partnership, the state in which the | 0013| partnership is organized and the names of the general partners, as | 0014| specified by the secretary; | 0015| (2) the goods or services on or in connection | 0016| with which the mark is used and the mode or manner in which the | 0017| mark is used on or in connection with the goods or services and | 0018| the class in which the goods or services fall; | 0019| (3) the date when the mark was first used | 0020| anywhere and the date when it was first used in this state by the | 0021| applicant or a predecessor in interest; | 0022| (4) a written description of the mark; and | 0023| (5) a statement that the applicant is the owner | 0024| of the mark, that the mark is in use and that, to the knowledge of | 0025| the person verifying the application, no other person has | 0001| registered, either federally or in this state, or has the right to | 0002| use the mark either in the identical form of it or in the near | 0003| resemblance thereto as to be likely, when applied to the goods or | 0004| services of the other person, to cause confusion, mistake or to | 0005| deceive. | 0006| B. The secretary may also require a statement as to | 0007| whether an application to register the mark or portions of it or a | 0008| composite of it, has been filed by the applicant or a predecessor | 0009| in interest in the United States patent and trademark office; and, | 0010| if so, the applicant shall provide full particulars with respect | 0011| to it including the filing date, serial number of each | 0012| application, its status and, if any application was finally | 0013| refused registration or has otherwise not resulted in a | 0014| registration, the reason for the refusal or for not being | 0015| registered. | 0016| C. The secretary may also require that a drawing of | 0017| the mark or three specimens showing the mark as it is actually | 0018| used accompany the application and that it complies with the | 0019| requirements specified by the secretary. | 0020| D. The application shall be signed and verified by | 0021| oath, affirmation or declaration subject to perjury laws by the | 0022| applicant or by a member of the firm or an officer of the | 0023| corporation or association applying for registration. | 0024| E. The application shall be accompanied by a fee of | 0025| twenty-five dollars ($25.00) for each application. | 0001| Section 6. FILING OF APPLICATION.-- | 0002| A. Upon the filing of an application for registration | 0003| and payment of the application fee, the secretary may cause the | 0004| application to be examined for conformity with the Trademark Act. | 0005| B. The applicant shall provide any additional | 0006| pertinent information requested by the secretary, including a | 0007| description of a design mark and may make, or authorize the | 0008| secretary in writing to make, any reasonable amendments to the | 0009| application as may be requested by the secretary or deemed by the | 0010| applicant to be advisable to respond to any objection or rejection | 0011| of the application. | 0012| C. The secretary may require the applicant to disclaim | 0013| an unregistrable component of a mark that would otherwise be | 0014| registrable, and an applicant may voluntarily disclaim a component | 0015| of a mark sought to be registered. No disclaimer shall prejudice | 0016| or affect the applicant's or registrant's rights then existing or | 0017| thereafter arising in the disclaimed matter or the applicant's or | 0018| registrant's rights of registration on another application if the | 0019| disclaimed matter is or becomes distinctive of the applicant's or | 0020| registrant's goods or services. | 0021| D. The secretary may amend the application upon the | 0022| applicant's written agreement, or the secretary may require a new | 0023| application to be submitted. | 0024| E. If the applicant is found not to be entitled to | 0025| registration, the secretary shall advise the applicant of the | 0001| reasons for non-registration. The applicant shall have thirty | 0002| days from the date of notification of non-registration from the | 0003| secretary in which to reply or to amend the application for | 0004| reexamination. This procedure may be repeated until the secretary | 0005| makes a final refusal of registration of the mark or the applicant | 0006| fails to reply or amend the application within the period | 0007| specified by the secretary, in which case the application shall be | 0008| deemed to have been abandoned. | 0009| F. The secretary shall grant priority to the | 0010| applications in order of filing. In the case of any application | 0011| rejected because of a prior-filed application of the same or | 0012| confusingly similar mark for the same or related goods or | 0013| services, the applicant may bring an action for cancellation of | 0014| the registration on grounds of prior or superior rights to the | 0015| mark as provided in Section 11 of the Trademark Act. | 0016| Section 7. CERTIFICATE OF REGISTRATION.-- | 0017| A. Upon compliance by the applicant with the | 0018| requirements of the Trademark Act, the secretary shall issue and | 0019| deliver a certificate of registration to the applicant. The | 0020| certificate of registration shall be issued under the signature of | 0021| the secretary and the seal of the state, and it shall show: | 0022| (1) the name and business address; | 0023| (2) if a corporation, limited liability company | 0024| or partnership, the state of incorporation, or if a partnership, | 0025| the state in which the partnership is organized; | 0001| (3) the date claimed for the first use of the | 0002| mark anywhere; | 0003| (4) the date claimed for the first use of the | 0004| mark in New Mexico; | 0005| (5) the class and description of goods or | 0006| services on or in connection with which the mark is used; and | 0007| (6) the registration date and the term of | 0008| registration. | 0009| B. A certificate of registration issued by the | 0010| secretary or a copy of the certificate of registration duly | 0011| certified by the secretary shall be admissible in evidence as | 0012| competent and sufficient proof of the registration of the mark in | 0013| any actions or judicial proceedings in this state. | 0014| Section 8. DURATION AND RENEWAL.-- | 0015| A. A registration of a mark is effective for ten years | 0016| from the date of registration. An application for renewal shall | 0017| be filed within six months prior to its expiration in the manner | 0018| required by the secretary. The renewed registration shall be | 0019| effective for ten years from the date of expiration of the | 0020| original registration. The application for renewal shall be | 0021| accompanied by the renewal fee. A registration of a mark may be | 0022| renewed for successive periods of ten years as provided in this | 0023| section. | 0024| B. All applications for renewal, whether of | 0025| registrations made under the Trademark Act or of registrations | 0001| made under any act prior to the effective date of that act, shall | 0002| include a verified statement that the mark has been and is still | 0003| in use and include a specimen showing actual use of the mark on or | 0004| in connection with the goods or services. | 0005| Section 9. ASSIGNMENTS--CHANGES OF NAME AND OTHER | 0006| INSTRUMENTS.-- | 0007| A. A mark and its representation shall be assignable | 0008| with the good will of the business in which the mark is used, or | 0009| with that part of the good will of the business connected with the | 0010| use of and symbolized by the mark. The assignment shall be by | 0011| instruments in writing duly executed and may be recorded with the | 0012| secretary upon payment of a twenty-five dollar ($25.00) recording | 0013| fee. The secretary, upon recording the assignment, shall issue in | 0014| the name of the assignee a new certificate for the remainder of | 0015| the term of the registration or the last renewal of the | 0016| registration. An assignment of a registration shall be void as | 0017| against any subsequent purchaser for valuable consideration | 0018| without notice unless it is recorded with the secretary within | 0019| three months after its date or unless it is recorded prior to the | 0020| subsequent purchase. | 0021| B. A registrant or applicant effecting a change of the | 0022| name of the person to whom the mark was issued or for whom an | 0023| application was filed may record a certificate of change of name | 0024| of the registrant or applicant with the secretary upon payment of | 0025| the recording fee specified in Subsection A of this section. The | 0001| secretary may issue to the owner a certificate of amendment of | 0002| registration for the remainder of the term of registration or the | 0003| last renewal of that registration. | 0004| C. Other instruments that relate to a mark registered | 0005| or a pending application include licenses, security interests or | 0006| mortgages, and they may be recorded in the discretion of the | 0007| secretary provided the instrument is in writing and has been duly | 0008| executed. | 0009| D. Acknowledgment shall be prima facie evidence of the | 0010| execution of an assignment or other instrument and, when recorded | 0011| by the secretary, the record shall be prima facie evidence of | 0012| execution. A photocopy of an instrument specified in this section | 0013| shall be accepted for recording if it is certified by any of the | 0014| parties thereto or their successors. | 0015| Section 10. RECORDS.--The secretary shall keep for public | 0016| examination a record of all marks registered or renewed under the | 0017| Trademark Act and a record of all documents recorded pursuant to | 0018| Section 9 of the Trademark Act. | 0019| Section 11. CANCELLATION.--The secretary shall cancel from | 0020| the register, in whole or in part: | 0021| A. a registration where the secretary shall receive a | 0022| voluntary request for cancellation from the registrant or the | 0023| assignee of record; | 0024| B. a registration granted under the Trademark Act and | 0025| not renewed in accordance with its provisions; | 0001| C. a registration of which a court of competent | 0002| jurisdiction finds that: | 0003| (1) the registered mark has been abandoned; | 0004| (2) the registrant is not the owner of the mark; | 0005| (3) the registration was granted improperly; | 0006| (4) the registration was obtained fraudulently; | 0007| (5) the mark is or has become the generic name | 0008| for the goods or services or a portion of them, for which it has | 0009| been registered; or | 0010| (6) the registered mark is so similar as to | 0011| likely cause confusion or mistake or to deceive, to a mark | 0012| registered by another person in the United States patent and | 0013| trademark office prior to the date of the filing of the | 0014| application for registration by the registrant and not abandoned; | 0015| or | 0016| D. when a court of competent jurisdiction orders the | 0017| cancellation of a registration on any ground. | 0018| Section 12. CLASSIFICATION.--The secretary shall by | 0019| regulation establish a classification of goods and services for | 0020| convenience of administration of the Trademark Act but not to | 0021| limit or extend the applicant's or registrant's rights. A single | 0022| application for registration of a mark may include any or all | 0023| goods upon which, or services with which, the mark is actually | 0024| being used indicating the appropriate class or classes of goods or | 0025| services. When a single application includes goods or services | 0001| that fall within multiple classes, the secretary shall require | 0002| payment of twenty-five dollars ($25.00) for each class. As far as | 0003| practical the classification of goods and services should conform | 0004| to the classification adopted by the United States patent and | 0005| trademark office. | 0006| Section 13. FRAUDULENT REGISTRATION.--A person who, for | 0007| himself on or behalf of any other person, procures the filing or | 0008| registration of any mark in the office of the secretary by | 0009| knowingly making any false or fraudulent representation or | 0010| declaration, orally or in writing or by any other fraudulent | 0011| means, shall be liable to pay all damages sustained as a | 0012| consequence of that filing or registration recoverable by or on | 0013| behalf of the injured party in any court of competent | 0014| jurisdiction. | 0015| Section 14. INFRINGEMENT.--Any person shall be liable in a | 0016| civil action by the registrant for any and all of the remedies | 0017| provided in Section 16 of the Trademark Act, who shall: | 0018| A. use, without the consent of the registrant, any | 0019| reproduction, counterfeit, copy or colorable imitation of a mark | 0020| registered under the Trademark Act in connection with the sale, | 0021| distribution, offering for sale or advertising of any goods or | 0022| services on or in connection with which the use is likely to cause | 0023| confusion or mistake or to deceive as to the source of origin of | 0024| the goods or services; or | 0025| B. reproduce, counterfeit, copy or colorably imitate | 0001| any such mark and apply the reproduction, counterfeit, copy or | 0002| colorable imitation to labels, signs, prints, packages, wrappers, | 0003| receptacles, or advertisements intended to be used upon or in | 0004| connection with the sale or other distribution in this state of | 0005| these goods or services; | 0006| The registrant shall not be entitled to recover profits or | 0007| damages under Subsection B of this section unless the acts have | 0008| been committed with the intent to cause confusion or mistake or to | 0009| deceive. | 0010| Section 15. INJURY TO BUSINESS REPUTATION--DILUTION. | 0011| A. The owner of a mark that is famous in this state | 0012| shall be entitled, subject to the principles of equity, to an | 0013| injunction against another's use of a mark, commencing after the | 0014| owner's mark becomes famous, that causes dilution of the | 0015| distinctive quality of the owner's mark and to obtain other relief | 0016| as is provided in this section. In determining whether a mark is | 0017| famous a court may consider factors such as, but not limited to: | 0018| (1) the degree of inherent or acquired | 0019| distinctiveness of the mark in this state; | 0020| (2) the duration and extent of use of the mark | 0021| in connection with the goods and services; | 0022| (3) the duration and extent of advertising and | 0023| publicity of the mark in this state; | 0024| (4) the geographical extent of the trading area | 0025| in which the mark is used; | 0001| (5) the channels of trade for the goods or | 0002| services with which the owner's mark is used; | 0003| (6) the degree of recognition of the owner's | 0004| mark in its trading area and in the other's trading area, and in | 0005| the channels of trade in this state; and | 0006| (7) the nature and extent of use of the same or | 0007| similar mark by third parties. | 0008| B. The owner shall be entitled only to injunctive | 0009| relief in this state in an action brought under this section, | 0010| unless the subsequent user willfully intended to trade on the | 0011| owner's reputation or to cause dilution of the owner's mark. If | 0012| willful intent is proven, the owner shall also be entitled to the | 0013| remedies set forth in the Trademark Act, subject to the discretion | 0014| of the court and the principles of equity. | 0015| Section 16. REMEDIES.--Any owner of a mark registered under | 0016| the Trademark Act may proceed by suit to enjoin the manufacture, | 0017| use, display or sale of any counterfeits or imitations of that | 0018| mark and any court of competent jurisdiction may grant injunctions | 0019| to restrain the manufacture, use, display or sale as may be deemed | 0020| just and reasonable by the court. The court may require the | 0021| defendants to pay to the owner all profits derived from or all | 0022| damages suffered by reason of the wrongful manufacture, use, | 0023| display or sale, or by both payment of all profits derived and | 0024| damages suffered. The court may also order that any counterfeits | 0025| or imitations in the possession or under the control of any | 0001| defendant in the case be delivered to an officer of the court or | 0002| to the complainant and that the counterfeits or imitations be | 0003| destroyed. The court, in its discretion, may enter judgment for | 0004| an amount not to exceed three times the profits and damages and | 0005| for reasonable attorney fees of the prevailing party in those | 0006| cases where the court finds the other party committed the wrongful | 0007| acts with knowledge or in bad faith or as otherwise the | 0008| circumstances of the case may warrant. The enumeration of any | 0009| right or remedy in this section shall not affect a registrant's | 0010| right to prosecute under any criminal law of this state. | 0011| Section 17. REPEAL.--Sections 57-3-1, 57-3-2 and 57-3-4 | 0012| through 57-3-12 NMSA 1978 (being Laws 1969, Chapter 142, Section | 0013| 1, Laws 1959, Chapter 345, Sections 1 and 2, Laws 1969, Chapter | 0014| 142, Section 2, Laws 1959, Chapter 345, Sections 3 and 4, Laws | 0015| 1969, Chapter 142, Sections 4 through 7 and Laws 1959, Chapter | 0016| 345, Section 6, as amended) are repealed. | 0017| Section 18. SEVERABILITY.--If any part or application of | 0018| the Trademark Act is held invalid, the remainder or its | 0019| application to other situations or persons shall not be affected. | 0020| Section 19. APPLICABILITY.--Any registration of a mark in | 0021| force upon the effective date of the Trademark Act shall continue | 0022| in effect for the remainder of its unexpired term and may be | 0023| renewed under the provisions of that act within six months prior | 0024| to the expiration specified in its registration. The provisions | 0025| of the Trademark Act shall not affect any application, suit, | 0001| proceeding or appeal pending on the effective date of the | 0002| Trademark Act. | 0003| Section 20. EFFECTIVE DATE.--The effective date of the | 0004| provisions of this act is July 1, 1997. | 0005|  |