(765 ILCS 1036/1)
Sec. 1. Short title. This Act may be cited as the Trademark Registration and Protection Act.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/5)
Sec. 5. Definitions. In this Act:
(a) A mark shall be deemed to be "abandoned" when either of the following occurs:
(b) "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.
(c) "Dilution" means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.
(d) "Mark" includes any trademark or servicemark entitled to registration under this Act whether registered or not.
(e) "Person" and any other word or term used to designate the applicant or other party entitled to benefit or privilege or rendered liable under the provisions of this Act means a natural person as well as a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.
(f) "Registrant" means the person to whom the registration of a mark is issued under this Act, and the legal representatives, successors, or assigns of that person.
(g) "Secretary" means the Secretary of State of Illinois or the designee of the Secretary charged with the administration of this Act.
(h) "Servicemark" means any word, name, symbol, or device or any combination thereof used by a person, to identify and distinguish the services of one person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown. Titles, character names used by a person, and other distinctive features of radio or television programs may be registered as servicemarks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
(i) "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.
(j) "Tradename" means any name used by a person to identify a business or vocation of the person.
(k) "Use" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For the purposes of this Act, a mark shall be deemed to be in use (1) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on 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.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/10)
Sec. 10. 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 that 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; however, 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 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 5 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 of a mark of tradename previously used by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive; or
(g) without the consent of the United States Olympic Committee:
(765 ILCS 1036/15)
Sec. 15. 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, on a form to be furnished by the Secretary, 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 the registration; and, if a corporation, the state of incorporation, or if a partnership, the state in which the partnership is organized and name of one of the general partners, or if a limited liability company, the state in which the company is organized;
(b) an appointment of the Secretary of State as agent for service of process in any action relating only to the registration which may be issued, if the applicant be, or shall become a non-resident individual, or foreign partnership, limited liability company, association, or corporation not licensed to do business in this State, or cannot be found in this State;
(c) 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 class in which such 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 a predecessor in interest; and
(e) 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 federally or in this State, or has the right to use the mark either in the identical form thereof or in such near resemblance thereto as to be likely, when applied to the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive.
The Secretary may also require a statement as to whether an application to register the mark, or portions or a composite thereof, 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 full particulars with respect thereto including the filing date and serial number of each application, the status thereof and, if any application was finally refused registration or has otherwise not resulted in a registration, the reasons therefor.
The Secretary may also require that a drawing of the mark, complying with such requirements as the Secretary may specify, accompany the application.
The application shall be signed and verified (by oath, affirmation, or declaration subject to perjury laws) by the applicant or by a member of the firm or an officer of the corporation or association applying.
The application shall be accompanied by 3 specimens showing the mark as actually used.
The application shall be accompanied by the application fee of $10 payable to the Secretary of State.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/20)
Sec. 20. Filing of application.
(a) Upon the filing of an application for registration and payment of the application fee, the Secretary may cause the application to be examined for conformity with this Act.
(b) The applicant shall provide any additional pertinent information requested by the Secretary including a description of a design mark and may make, or authorize the Secretary to make, such amendments to the application as may be reasonably requested by the Secretary or deemed by applicant to be advisable to respond to any rejection or objection.
(c) The Secretary may require the applicant to disclaim an unregisterable component of a mark otherwise registerable, and an applicant may voluntarily disclaim a component of a mark sought to be registered. No disclaimer shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter, or the applicant's or registrant's rights of registration on another application if the disclaimed matter be or shall have become distinctive of the applicant's or registrant's goods or services.
(d) Amendments may be made by the Secretary upon the application submitted by the applicant upon applicant's agreement; or a fresh application may be required to be submitted.
(e) If the applicant is found not to be entitled to registration, the Secretary shall advise the applicant thereof and of the reasons therefor. The applicant shall have a reasonable period of time specified by the Secretary in which to reply or to amend the application, in which event the application shall then be reexamined. This procedure may be repeated until (1) the Secretary finally refuses registration of the mark or (2) the applicant fails to reply or amend within the specified period, whereupon the application shall be deemed to have been abandoned.
(f) All final decisions of the Secretary of State under this Act shall be deemed to be administrative decisions and subject to judicial review under the provisions of the Administrative Review Law and the rules adopted pursuant thereto.
(g) In the instance of applications concurrently being processed by the Secretary seeking registration of the same or confusingly similar marks for the same or related goods or services, the Secretary shall grant priority to the applications in order of filing. If a prior-filed application is granted a registration, the other application or applications shall then be rejected. Any rejected applicant may bring an action for cancellation of the registration upon grounds of prior or superior rights to the mark, in accordance with the provisions of Section 45 of this Act.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/25)
Sec. 25. Certificate of registration. Upon compliance by the applicant with the requirements of this Act, the Secretary shall cause a certificate of registration to be issued and delivered to the applicant. The certificate of registration shall be issued under the signature of the Secretary and the Seal of the State, and 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 name of one of the general partners, or if a limited liability company, the state in which the company is organized, of the person claiming ownership of the mark, the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in this State, the class of goods or services and a description of the goods or services on or in connection with which the mark is used, a reproduction of the mark, the registration date and the term of the registration.
Any certificate of registration issued by the Secretary under this Act or a copy thereof duly certified by the Secretary shall be admissible in evidence as competent and sufficient proof of the registration of a mark in any actions or judicial proceedings in any court of this State.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/30)
Sec. 30. Duration and renewal. A registration of a mark under this Act shall be effective for a term of 5 years from the date of registration and, upon application filed within 60 days before the expiration of the term, on a form furnished by the Secretary, the registration may be renewed for a like term from the end of the expiring term. A renewal fee of $5, payable to the Secretary, shall accompany the application for renewal of the registration.
A registration may be renewed for successive periods of 5 years in like manner.
Any registration in force on the effective date of this Act 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 complying with the requirements of the Secretary and paying the renewal fee within 60 days before the expiration of the registration.
All applications for renewal under this Act, whether of registrations made under this Act or of registrations effected under any prior Act, shall include a verified statement that the mark has been and is still in use and include 3 specimens showing actual use of the mark on or in connection with the goods or services.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/35)
Sec. 35. Assignments, changes of name or address and other instruments.
(a) Any mark and its registration under this Act shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark. Assignment shall be on a form furnished by the Secretary and may be recorded with the Secretary upon the payment of a recording fee of $5 payable to the Secretary who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal thereof. An assignment of any registration under this Act shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the Secretary within 3 months after the date thereof or prior to such subsequent purchase.
(b) Any registrant or applicant effecting a change of the name or address of the person to whom the mark was issued or for whom an application was filed may record, on a form furnished by the Secretary, a certificate of change of name or address of the registrant or applicant with the Secretary upon the payment of a recording fee of $5. The Secretary may issue in the name of the assignee a certificate of registration of an assigned application. The Secretary may issue in the name of the assignee, a new certificate of registration for the remainder of the term of the registration or last renewal thereof.
(c) Other instruments which relate to a mark registered or application pending pursuant to this Act, such as, by way of example, licenses, security interests, or mortgages, may be recorded in the discretion of the Secretary, provided that instrument is in writing and duly executed.
(d) Acknowledgement shall be prima facie evidence of the execution of an assignment or other instrument and when recorded by the Secretary, the record shall be prima facie evidence of execution.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/40)
Sec. 40. Records. The Secretary shall keep for public examination a record of all marks registered or renewed under this Act, as well as a record of all documents recorded pursuant to Section 35.
The Secretary will provide a certified copy of any single registration, or portion thereof, upon receiving a request in writing for the copy and payment of a $5 fee, payable to the Secretary.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/45)
Sec. 45. Cancellation. The Secretary shall cancel from the register, in whole or in part:
The clerk of the court ordering the cancellation or making any of the findings specified in subdivision (c)(3) shall, when such judgment becomes final, transmit a certified copy of the judgment to the Secretary of State.
(Source: P.A. 90-231, eff. 1-1-98; 91-357, eff. 7-29-99.)
(765 ILCS 1036/50)
Sec. 50. Classification. The Secretary shall by rule establish a classification of goods and services for convenience of administration of this Act, but not to limit or extend the applicant's or registrant's rights, and a single application for registration of a mark may include any or all goods upon which, or services with which, the mark is actually being used and which are comprised in a single class. In no event shall a single application include goods or services upon which the mark is being used and which fall within different classes. To the extent practical, the classification of goods and services should conform to the classification adopted by the United States Patent and Trademark Office.
1 Chemicals
2 Paints
3 Cosmetics and cleaning preparations
4 Lubricants and fuels
5 Pharmaceuticals
6 Metal goods
7 Machinery
8 Hand tools
9 Electrical and scientific apparatus
10 Medical apparatus
11 Environmental control apparatus
12 Vehicles
13 Firearms
14 Jewelry
15 Musical Instruments
16 Paper goods and printed matter
17 Rubber goods
18 Leather goods
19 Non-metallic building materials
20 Furniture and articles not otherwise classified
21 Housewares and glass
22 Cordage and fibers
23 Yarns and threads
24 Fabrics
25 Clothing
26 Fancy goods
27 Floor coverings
28 Toys and sporting goods
29 Meats and processed foods
30 Staple foods
31 Natural agricultural products
32 Light beverages
33 Wine and spirits
34 Smoker's articles
35 Advertising and business
36 Insurance and financial
37 Building construction and repair
38 Telecommunications
39 Transportation and storage
40 Treatment of materials
41 Education and entertainment
42 Scientific, technological, or legal
43 Restaurants, hotels, motels, and boarding
44 Medical, veterinary, beauty care, and forestry
45 Personal, social, and security
(Source: P.A. 93-59, eff. 7-1-03.)
(765 ILCS 1036/55)
Sec. 55. 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 under 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 party injured thereby in any court of competent jurisdiction.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/60)
Sec. 60. Infringement. Subject to the provisions of Section 80 of this Act, a person shall be liable in a civil action by the registrant for any and all of the remedies provided in Section 70 of this Act if the person:
(a) uses, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this Act in connection with the sale, distribution, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or
(b) reproduces, counterfeits, copies, or colorably imitates any such mark and applies such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this State of such goods or services. The registrant shall not be entitled to recover profits or damages under this subdivision (b) unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/62)
Sec. 62. Infringement of Olympic marks. Notwithstanding any other Section of this Act:
(a) The United States Olympic Committee has the exclusive right to use, and license for use, in this State any of the following:
(b) The United States Olympic Committee, Chicago 2016 as designee of the United States Olympic Committee, or both, may file a civil action in the Circuit Court of Cook County, or any other circuit court in the State of Illinois permitted by law, against any person for the remedies provided under Section 70 of this Act if the person, without the consent of the United States Olympic Committee or Chicago 2016, uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition:
(c) If any provision of this Section or the application thereof to any person or circumstance is held invalid, the invalidity shall not affect other provisions or applications of this Section which can be given effect without the invalid provision, and to this end the provisions of this Section are severable.
(d) For the purposes of this Section, references to Chicago 2016 include the Illinois not-for-profit corporation of that name and its successor organizing committee for the 2016 Olympic and Paralympic Games.
(e) Nothing in this Section is intended to limit any rights or remedies provided under the Counterfeit Trademark Act.
(Source: P.A. 96-7, eff. 4-3-09.)
(765 ILCS 1036/65)
Sec. 65. Injury to business reputation; dilution.
(a) The owner of a mark which is famous in this State shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use of a mark or tradename, if the use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this Section. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to:
In an action brought under this Section, the owner of a famous mark shall be entitled only to injunctive relief in this State, unless the person against whom injunctive relief is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark. If such willful intent is proven, the owner shall also be entitled to the remedies set forth in this Act, subject to the discretion of the court and the principles of equity.
(b) The following are not actionable under this Section:
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/70)
Sec. 70. Remedies. Any owner of a mark registered under this Act may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display, or sale as may be by the court deemed just and reasonable, and may require the defendants to pay to such owner all profits derived from or all damages suffered by reason of such wrongful manufacture, use, display, or sale or both; and the court may also order that any such counterfeits or imitations in the possession or under the control of any defendant in the case be delivered to an officer of the court, or to the complainant, to be destroyed. The court in its discretion, may enter judgment for an amount not to exceed 3 times the profits and damages or reasonable attorneys' fees of the prevailing party, or both, in those cases in which the court finds the other party committed the wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case.
The enumeration of any right or remedy in this Act shall not affect a registrant's right to prosecute under any penal law of this State.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/75)
Sec. 75. Forum for actions regarding registration; service on out of state registrants.
(a) Actions to require cancellation of a mark registered under this Act shall be brought in the circuit court. In an action for cancellation, the Secretary shall not be made a party to the proceeding but shall be notified of the filing of the complaint by the clerk of the court in which it is filed and shall be given the right to intervene in the action.
(b) Any action under this Section may be brought by any person who believes he is or will be damaged by the registration complained of. Such action shall be brought in the circuit court for the county in which the registrant resides or has a regular and established place of business, or has appointed an agent to receive service, or if the registrant is a non-resident individual, or foreign partnership, limited liability company, association or a corporation not licensed to do business in this State, or cannot be found in this State, in the Circuit Court that sits in the City of Springfield and the County of Sangamon.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/80)
Sec. 80. Common law rights. Nothing in this Act shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/85)
Sec. 85. Severability. The provisions of the Act are severable under Section 1.31 of the Statute on Statutes.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/90)
Sec. 90. Time of taking effect; conflicts with prior Acts; intent of Act. This Act shall not affect any application, suit, proceeding, or appeal then pending on its effective date. Except in the case of an application, suit, proceeding, or appeal pending on its effective date, this Act shall control in any conflict between the provisions of this Act and the provisions of any other Act relating to marks or any other Act that conflicts with this Act. Any application, suit, proceeding, or appeal pending at the time this Act takes effect shall continue under the law under which that application, suit, or appeal was initiated until final determination.
The intent of this Act is to provide a system of State trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946, as amended. To that end, the construction given the federal Act shall be examined as persuasive authority for interpreting and construing this Act.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/905)
Sec. 905. Repeal. The Trademark Registration Act is repealed.
(Source: P.A. 90-231, eff. 1-1-98.)
(765 ILCS 1036/910)
Sec. 910. (Amendatory provisions; text omitted).
(Source: P.A. 90-231, eff. 1-1-98; text omitted.)
(765 ILCS 1036/999)
Sec. 999. Effective date. This Act takes effect January 1, 1998.
(Source: P.A. 90-231, eff. 1-1-98.)