1st Engrossment - 80th Legislature (1997 - 1998) Posted on 12/15/2009 12:00am
1.1 A bill for an act 1.2 relating to commerce; regulating trademarks and 1.3 service marks; defining terms; providing remedies; 1.4 amending Minnesota Statutes 1996, sections 333.18; 1.5 333.19, subdivision 1; 333.20, subdivisions 1 and 2; 1.6 333.21, subdivision 2; 333.23; 333.24; 333.25; 333.26; 1.7 and 333.29, subdivision 1; proposing coding for new 1.8 law in Minnesota Statutes, chapter 333; repealing 1.9 Minnesota Statutes 1996, section 325D.165. 1.10 BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MINNESOTA: 1.11 Section 1. Minnesota Statutes 1996, section 333.18, is 1.12 amended to read: 1.13 333.18 [
TRADEMARKS AND SERVICE MARKS;DEFINITIONS.] 1.14 Subdivision 1. [TRADEMARKS AND SERVICE MARKS.] (1)(a) The 1.15 term "trademark" as used in sections 333.18 to 333.31 means any 1.16 word, name, symbol, or device or any combination thereof adopted 1.17 and used by a person to identify goods made or sold by that 1.18 person and to distinguish them from goods made or sold by 1.19 others. Trademark includes a mark used on or in connection with 1.20 the goods of one or more persons other than the owner of the 1.21 mark to certify regional or other origin, material, mode of 1.22 manufacture, quality, accuracy, or other characteristics of the 1.23 goods or that the work or labor on the goods was performed by 1.24 the members of a union or other organization. The term also 1.25 includes a mark by members of a cooperative, an association, or 1.26 other collective group or organization and includes marks used 1.27 to indicate membership in a union, an association, or other 2.1 organization. 2.2 (2)(b) The term "service mark" as used in sections 333.18 2.3 to 333.31 means a word, name, symbol, or device or any 2.4 combination thereof adopted and used by a person to identify 2.5 that person's services and to distinguish them from services of 2.6 others and includes without limitation the marks, names, 2.7 symbols, titles, designations, slogans, character names, and 2.8 distinctive features of radio or other advertising used in 2.9 commerce. Service mark includes a mark used in connection with 2.10 the services of one or more persons other than the owner of the 2.11 mark to certify regional or other origin, material, quality, 2.12 accuracy, or other characteristics of the service or that the 2.13 work or labor on the services was performed by members of a 2.14 union or other organization. The term also includes a mark used 2.15 by members of a cooperative, an association, or other collective 2.16 group or organization and includes marks used to indicate 2.17 membership in a union, an association, or other organization. 2.18 (3)(c) The term "certification mark" means a mark used 2.19 upon or in connection with the products or services of one or 2.20 more persons other than the owner of the mark to certify 2.21 regional or other origin, material, mode of manufacture, 2.22 quality, accuracy or other characteristics of suchthe goods or 2.23 services or that the work or labor on the goods or services was 2.24 performed by members of a union or other organization. 2.25 (4)(d) The term "collective mark" means a trademark or 2.26 service mark used by the members of a cooperative, an 2.27 association or other collective group or organization and 2.28 includes marks used to indicate membership in a union, an 2.29 association or other organization. 2.30 Subd. 2. [PERSON.] The term "person" as used hereinin 2.31 sections 333.18 to 333.31 means any individual, firm, 2.32 partnership, limited partnership, limited liability partnership, 2.33 corporation, limited liability company, whether domestic or 2.34 foreign, association, union or other organization. 2.35 Subd. 3. [APPLICANT.] The term "applicant" as used herein2.36 in sections 333.18 to 333.31 embraces the person filing an 3.1 application for registration of a mark under sections 333.18 to 3.2 333.31, the applicant's legal representatives, successors or 3.3 assigns. 3.4 Subd. 4. [REGISTRANT.] The term "registrant" as used 3.5 hereinin sections 333.18 to 333.31 embraces the person to whom 3.6 the registration of a mark under sections 333.18 to 333.31 is 3.7 issued, a legal representative, successors or assigns. 3.8 Subd. 5. [USED; ADOPTED AND USED.] (1) For the purposes of 3.9 sections 333.18 to 333.31, a trademark shall be deemed to beis 3.10 "used" in this state when it is placed in any manner on the 3.11 goods or their containers or on the tags or labels affixed 3.12 theretoto them or on displays associated with the goods and 3.13 suchthe goods are sold or otherwise distributed in this state 3.14 for marketing or other legitimate business purposes. 3.15 (2) For the purpose of sections 333.18 to 333.31, a service 3.16 mark shall be deemed to beis "adopted and used" when it is 3.17 adopted and used in connection with the rendering, selling, or 3.18 advertising of services in this state to identify the services 3.19 of one person and distinguish them from the services of others, 3.20 and suchthe services are rendered for marketing or other 3.21 legitimate business purposes. 3.22 Subd. 6. [ABANDONED; ABANDONMENT.] For purposes of 3.23 sections 333.18 to 333.31, a trademark or service mark is 3.24 considered abandoned when either of the following occurs: 3.25 (1) when its use has been discontinued with intent not to 3.26 resume that use. Intent not to resume use may be inferred from 3.27 circumstances. Nonuse for two consecutive years constitutes 3.28 prima facie evidence of abandonment; or 3.29 (2) when a course of conduct of the owner, including acts 3.30 of omission as well as commission, causes the mark to lose its 3.31 significance as a mark. 3.32 Subd. 7. [DILUTION.] The term "dilution" means the 3.33 lessening of the capacity of a famous mark to identify and 3.34 distinguish goods and services, regardless of the presence or 3.35 absence of: 3.36 (1) competition between the owner of a famous mark and 4.1 other parties; or 4.2 (2) the likelihood of confusion, mistake, or deception. 4.3 Subd. 8. [GENERIC.] The term "generic" means that the 4.4 registered mark is no longer considered by the public to 4.5 identify exclusively the goods or services of the markholder as 4.6 described in the application for the mark. 4.7 Sec. 2. Minnesota Statutes 1996, section 333.19, 4.8 subdivision 1, is amended to read: 4.9 Subdivision 1. A trademark or service mark by which the 4.10 goods or services of any applicant for registration may be 4.11 distinguished from the goods or services of others shallmust 4.12 not be registered if it: 4.13 (1) consists of or comprises immoral, deceptive or 4.14 scandalous matter; or 4.15 (2) consists of or comprises matter which may disparage or 4.16 falsely suggest a connection with persons, living or dead, 4.17 institutions, beliefs, or national symbols, or bring them into 4.18 contempt, or disrepute; or 4.19 (3) consists of or comprises the flag or coat of arms or 4.20 other insignia of the United States, or of any state or 4.21 municipality, or of any foreign nation, or any simulation 4.22 thereofof this insignia; or 4.23 (4) consists of or comprises the name, signature or 4.24 portrait of any living individual, except with written consent; 4.25 or 4.26 (5) consists of a mark which, (a)(i) when applied to the 4.27 goods or used to identify the services of the applicant, is 4.28 merely descriptive or deceptively misdescriptive of them, 4.29 or (b)(ii) when applied to the goods or used to identify the 4.30 services of the applicant is primarily geographically 4.31 descriptive or deceptively misdescriptive of them, or (c)(iii) 4.32 is primarily merely a surname provided, however, that nothing in 4.33 this subsectionclause (5) shall prevent the registration of a 4.34 mark used in this state by the applicant which has become 4.35 distinctive of the applicant's goods or services. The secretary 4.36 of state may accept as evidence that the mark has become 5.1 distinctive, as applied to the applicant's goods or used to 5.2 identify the services, proof of substantially exclusive and 5.3 continuous use thereofas a mark by the applicant in this state 5.4 for the five years next preceding the date of the filing of the 5.5 application for registration; or 5.6 (6) consists of or comprises a mark which so resembles a 5.7 mark registered in this state or a corporate, limited liability 5.8 company, limited liability partnership, cooperative, or limited 5.9 partnership name in use or reserved in this state by another, or 5.10 a mark or trade name previously used in this state by another 5.11 and not abandoned, as to be likely, when applied to the goods or 5.12 used to identify the services of the applicant, to cause 5.13 confusion or mistake or to deceive. The secretary of state may 5.14 require affidavits by both the applicant and by the holder of 5.15 the previously registered name or mark in making this 5.16 determination. 5.17 Sec. 3. Minnesota Statutes 1996, section 333.20, 5.18 subdivision 1, is amended to read: 5.19 Subdivision 1. Subject to the limitations set forth in 5.20 sections 333.18 to 333.31, any person who adopts and uses a 5.21 trademark or a service mark in this state may file in the office 5.22 of the secretary of state, on a form to be furnished by the 5.23 secretary of state, an application for registration of that mark 5.24 setting forth , but not limited to,the following information: 5.25 (1) the name and business address of the person applying 5.26 for such registration; and, if a corporationbusiness entity, 5.27 the state of incorporation,registration; 5.28 (2) the goods or services in connection with which the mark 5.29 is used and the mode or manner in which the mark is used in 5.30 connection with suchthe goods or services and the class in 5.31 which suchthe goods or services fall ,; 5.32 (3) a description of the mark; 5.33 (4) the date when the mark was first used in this state by 5.34 the applicant or a predecessor in business,interest; and 5.35 (4)(5) the applicant's statement of belief that the 5.36 applicant is the owner of the mark and that no other person has 6.1 the right to use such mark in this state either in the identical 6.2 form thereof or in such near resemblance thereto as might be 6.3 calculated to deceive or to be mistaken therefor and the mark is 6.4 in use. 6.5 Sec. 4. Minnesota Statutes 1996, section 333.20, 6.6 subdivision 2, is amended to read: 6.7 Subd. 2. The application shall be signed as provided in 6.8 section 645.44, subdivision 14, and verified by the individual 6.9 applicant or by a member of the firm or an officer of the6.10 corporation, or association or by a manager of a domestic or6.11 foreign limited liability company, or association applying, for 6.12 business entity applicants, by a person with authority to sign 6.13 on behalf of the business entity. 6.14 Sec. 5. Minnesota Statutes 1996, section 333.21, 6.15 subdivision 2, is amended to read: 6.16 Subd. 2. Any certificate of registration issued by the 6.17 secretary of state under the provisions hereofor a copy thereof6.18 duly certified by the secretary of state shall be admissible in 6.19 evidence as competent and sufficient proof of the registration 6.20 of suchthe mark, in any action or judicial proceedings in any 6.21 court of this state and shall be prima facie evidence of 6.22 registrant's ownership and exclusive right to use the mark on or 6.23 in connection with the goods or services described in the 6.24 certificate. 6.25 Sec. 6. Minnesota Statutes 1996, section 333.23, is 6.26 amended to read: 6.27 333.23 [CONVEYANCES OF MARKS; RECORDATION, FEE, NECESSITY.] 6.28 The secretary of state shall record written conveyances of 6.29 any mark along with that part of the goodwill of the business in 6.30 connection with which the mark is used, and of the corresponding 6.31 application or registration which is presented for recording 6.32 along with a payment of a fee of $15 and shall issue in the name 6.33 of the assignee a new certificate for the remainder of the term 6.34 of the registration or of the last renewal thereof. An 6.35 assignment of any registration under sections 333.18 to 333.31 6.36 shall be void as against any subsequent purchaser for valuable 7.1 consideration without notice unless it is recordedfiled with 7.2 the secretary of state within three months after the date 7.3 thereofof the assignment or prior to suchbefore the subsequent 7.4 purchase. 7.5 Sec. 7. Minnesota Statutes 1996, section 333.24, is 7.6 amended to read: 7.7 333.24 [SECRETARY OF STATE'S RECORD OF MARKS.] 7.8 The secretary of state shall keep for public examination a 7.9 record of all marks registeredfiled or renewed under sections 7.10 333.18 to 333.31 in accordance withaccording to the 7.11 classification hereinafterset forth in sections 333.18 to 7.12 333.31. SuchThe record of registration shall beis 7.13 constructive notice of registrant's claim of ownership of the 7.14 mark registered. 7.15 Sec. 8. Minnesota Statutes 1996, section 333.25, is 7.16 amended to read: 7.17 333.25 [CANCELLATION OF MARKS.] 7.18 Subdivision 1. The secretary of state shall cancel from 7.19 the register: 7.20 (1) after two years from the effective date of Laws 1959, 7.21 chapter 600, all registrations under prior acts which are not 7.22 renewed in accordance withaccording to sections 333.18 to 7.23 333.31; 7.24 (2) any registration concerning which the secretary of 7.25 state shall receive a voluntary request for cancellation thereof7.26 from the registrant; 7.27 (3) all registrations grantedfiled under sections 333.18 7.28 to 333.31 and not renewed in accordance with theaccording to 7.29 its provisions thereof; 7.30 (4) in compliance with an order of a district court, any 7.31 registration concerning which the court shall find that: 7.32 a. that(i) the registered mark has been abandoned ,; 7.33 b. that(ii) the registrant is not the owner of the mark ,; 7.34 c. that(iii) the registration was grantedfiled 7.35 improperly ,; 7.36 d. that(iv) the registration was obtained fraudulently ,; 8.1 (v) the mark is or has become the generic name for the 8.2 goods or services, or a portion of the goods or services, for 8.3 which it has been registered; or 8.4 e. that(vi) the registered mark is so similar, as to be 8.5 likely to cause confusion or mistake or to deceive, to a mark 8.6 registered by another person previously in this state or in the 8.7 United States Patent and Trademark Office, prior tobefore the 8.8 date of the filing of the application for registration by the 8.9 registrant hereunderunder sections 333.18 to 333.31, and not 8.10 abandoned; provided, however, that should the registrant prove 8.11 that the registrant is the prior user of the mark or the owner 8.12 of a concurrent registration of the mark in the United States 8.13 Patent and Trademark Office covering an area including this 8.14 state, the registration hereundershall not be canceled .; or 8.15 (5) a registration when a district court shall order 8.16 cancellation of athe registration on any ground. 8.17 Subd. 2. No registration shall be canceled after the mark 8.18 has had substantially exclusive and continuous use by the 8.19 registrant for five years following the registration of saidthe 8.20 mark except for the reasons set forth in subdivision 1, 8.21 subsectionsclauses (1), (2), and (3) and subsections8.22 clause (4) a, b and d thereof, items (i), (ii), and (iv), or 8.23 unless a mark has been registered in this state prior tobefore 8.24 use of registrant's mark or a mark has been registered in the 8.25 United States Patent and Trademark Office with the publication 8.26 date thereof prior toof it before the date of use of 8.27 registrant's mark, which marks when used on or in connection 8.28 with the goods or services of the respective registrants would 8.29 be likely to cause confusion, mistake, or deception, or unless 8.30 the mark is the common descriptive name of any article, 8.31 substance, or service. 8.32 Sec. 9. Minnesota Statutes 1996, section 333.26, is 8.33 amended to read: 8.34 333.26 [CLASSIFICATION SYSTEM.] 8.35 For convenience of administration of sections 333.18 to 8.36 333.31, but not to limit or extend the applicant's or 9.1 registrant's rights, the secretary of state shall adopt the 9.2 classification system in effect in the United States Patent and 9.3 Trademark Office on the effective date of Laws 1959, Chapter9.4 600, and shall revise this classification system to conform with 9.5 saidthe United States Patent and Trademark Office system as and 9.6 if changes are made thereinin that system. A single 9.7 application for registration of a mark may include any or all 9.8 goods or services with which the mark is actually being used 9.9 comprised in a single class, but in no event shall a single 9.10 application include goods or service with which the mark is 9.11 being used which fall within different classes. 9.12 Sec. 10. [333.285] [INJURY TO BUSINESS REPUTATION; 9.13 DILUTION.] 9.14 (a) The owner of a mark that is famous in this state may, 9.15 subject to the principles of equity and upon terms the court 9.16 considers reasonable: seek an injunction against another 9.17 person's commercial use of a mark or trade name, if the use 9.18 begins after the mark has become famous and causes dilution of 9.19 the distinctive quality of the mark; and obtain other relief as 9.20 provided in this section. 9.21 In determining whether a mark is distinctive and famous, a 9.22 court may consider factors such as, but not limited to: 9.23 (1) the degree of inherent or acquired distinctiveness of 9.24 the mark in this state; 9.25 (2) the duration and extent of use of the mark in 9.26 connection with the goods and services with which the mark is 9.27 used; 9.28 (3) the duration and extent of advertising and publicity of 9.29 the mark in this state; 9.30 (4) the geographical extent of the trading area in which 9.31 the mark is used; 9.32 (5) the channels of trade for the goods or services with 9.33 which the mark is used; 9.34 (6) the degree of recognition of the mark in the trading 9.35 areas and channels of trade in this state used by the mark's 9.36 owner and the person against whom the injunction is sought; 10.1 (7) the nature and extent of use of the same or similar 10.2 mark by third parties; and 10.3 (8) whether the mark is the subject of a state registration 10.4 in this state, or a federal registration under the Act of March 10.5 3, 1881, or under the Act of February 20, 1905, or on the 10.6 principal register. 10.7 (b) In an action brought under this section, the owner of a 10.8 famous mark is entitled only to injunctive relief in this state, 10.9 unless the person against whom the injunctive relief is sought 10.10 willfully intended to trade on the owner's reputation or to 10.11 cause dilution of the famous mark. If willful intent is proven, 10.12 the owner is entitled to the remedies in this chapter, subject 10.13 to the discretion of the court and the principles of equity. 10.14 (c) The following are not actionable under this section: 10.15 (1) fair use of a famous mark by another person in 10.16 comparative commercial advertising or promotion to identify the 10.17 competing goods or services of the owner of the famous mark; 10.18 (2) noncommercial use of the mark; and 10.19 (3) all forms of news reporting and news commentary. 10.20 Sec. 11. Minnesota Statutes 1996, section 333.29, 10.21 subdivision 1, is amended to read: 10.22 Subdivision 1. Any district court may grant injunctions to10.23 restrain infringement of registrant's rights and may require the10.24 defendants to pay the registrant all benefits derived from10.25 and/or damages suffered by reason of such infringement. The10.26 prevailing party may, in the discretion of the court, be awarded10.27 a reasonable attorney's fee to be taxed by the court as a part10.28 of the costs and merged into the judgment.An owner of a mark 10.29 registered under sections 333.18 to 333.31 may bring an action 10.30 to enjoin the manufacture, use, display, or sale of any 10.31 counterfeits or imitations of the mark, and a court of competent 10.32 jurisdiction may grant injunctions to restrain the manufacture, 10.33 use, display, or sale as the court considers just and 10.34 reasonable. The court may require the defendants to pay to the 10.35 owner either or both of the following: (1) all profits derived 10.36 from the wrongful manufacture, use, display, or sale; or (2) all 11.1 damages suffered by reason of the wrongful manufacture, use, 11.2 display, or sale. The court may also order that counterfeits or 11.3 imitations in the possession or under the control of a defendant 11.4 be delivered to an officer of the court, or to the complainant, 11.5 to be destroyed. The court, in its discretion, may enter 11.6 judgment for an amount not to exceed three times the profits and 11.7 damages and reasonable attorneys' fees of the prevailing party 11.8 if the court finds the other party committed the wrongful acts 11.9 with knowledge or in bad faith or otherwise as according to the 11.10 circumstances of the case. 11.11 Sec. 12. [333.305] [FORUM FOR ACTIONS REGARDING 11.12 REGISTRATION; SERVICE ON OUT-OF-STATE REGISTRANTS.] 11.13 (a) Actions to require cancellation of a mark registered 11.14 according to sections 333.18 to 333.31 or in mandamus to compel 11.15 registration of a mark according to sections 333.18 to 333.31 11.16 shall be brought in the district court. In an action in 11.17 mandamus, the proceeding shall be based solely upon the record 11.18 before the secretary of state. In an action for cancellation, 11.19 the secretary of state shall not be made a party to the 11.20 proceeding but shall be notified of the filing of the complaint 11.21 by the clerk of the court in which it is filed and shall be 11.22 given the right to intervene in the action. 11.23 (b) In an action brought against a nonresident registrant, 11.24 service may be effected upon the secretary of state as agent for 11.25 service of the registrant according to the procedures 11.26 established for service upon nonresident corporations and 11.27 business entities under section 5.25. 11.28 Sec. 13. [REPEALER.] 11.29 Minnesota Statutes 1996, section 325D.165, is repealed.