A. Subject to the limitations set forth in the Trademark Act, any person who uses a mark may file in the office of the secretary on a form prescribed by the secretary an application for registration of that mark setting forth, but not limited to, the following information:
(1) the name and business address of the person applying for the registration; and if a corporation, the state of incorporation; if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary;
(2) 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 the goods or services and the class in which the goods or services fall;
(3) 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;
(4) a written description of the mark; and
(5) 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, either federally or in this state, or has the right to use the mark either in the identical form of it or in the near resemblance thereto as to be likely, when applied to the goods or services of the other person, to cause confusion, mistake or to deceive.
B. The secretary may also require a statement as to whether an application to register the mark or portions of it or a composite of it, 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 to it including the filing date, serial number of each application, its status and, if any application was finally refused registration or has otherwise not resulted in a registration, the reason for the refusal or for not being registered.
C. The secretary may also require that a drawing of the mark or three specimens showing the mark as it is actually used accompany the application and that it complies with the requirements specified by the secretary.
D. 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 for registration.
E. The application shall be accompanied by a fee of twenty-five dollars ($25.00) for each application.
History: Laws 1997, ch. 197, § 5.
ANNOTATIONSFederal trademark holder's rights not always superior to state holder's. — While a generalization has sometimes been made that the holder of a federal trademark registration has rights superior to the holder of a state registered trademark and superior to one who uses a trademark without any registration, this generalization is much too inclusive and is incorrect with respect to certain fact situations. In the first place, if the state registrant or nonregistrant actually was the prior user in the United States, and the federal registrant was the second to use the mark, the superior right lies with the state registrant or nonregistrant. If the state registrant or nonregistrant was the second user in the United States, but was the first user in a certain geographical area with continuous use from at least July 5, 1947, the second user has the prior right in that area. Even if the federal registrant is the prior user of the mark, the state registrant or nonregistrant can continue to use the mark unless he is using it "in commerce within the control of congress." Finally, the second user, whether a state registrant or nonregistrant, is not infringing on the federal registrant's trademark unless there is such a confusing similarity between the marks that consumer confusion, consumer mistake or consumer deception occurs. Whether there is a likelihood of confusion is a question of fact. 1961 Op. Att'y Gen. No. 61-106.
Federal trademarks prevail in interstate commerce. — A trademark registered under the Federal Trademark Law in cases involving interstate commerce will generally prevail over the same trademark registered under the state law. 1957 Op. Att'y Gen. No. 57-45 (rendered under former law).
State trademarks not given exclusive right of use in state. — Trademarks registered under the state statute are not conferred any exclusive right to the use of a trademark in the state. 1957 Op. Att'y Gen. No. 57-45 (rendered under former law).
Am. Jur. 2d, A.L.R. and C.J.S. references. — 74 Am. Jur. 2d Trademarks and Tradenames §§ 1 to 8, 12 to 14, 72.
Time as an element in determining whether a descriptive term has acquired a secondary meaning entitling it to protection against unfair competition, 40 A.L.R. 433.
Modern status of pendent federal jurisdiction, under 28 U.S.C.S. § 1338(b), over state claim of unfair competition when joined with related claim under federal trademark laws, 62 A.L.R. Fed. 428.
What constitutes abandonment of trademark by conduct causing mark to lose significance as indication of origin, under § 45 of Lanham Act (15 USC § 1127(b)), 81 A.L.R. Fed. 677.
Design on recreational object as valid trademark, 82 A.L.R. Fed. 9
What constitutes abandonment of trademark by discontinuance of use with intent not to resume it, under § 45 of Lanham Act (15 USC § 1127), 83 A.L.R. Fed. 295.
87 C.J.S. Trademarks, Tradenames and Unfair Competition §§ 21 to 28, 126 to 137.