Office of the Revisor of Statutes
Minnesota Session Laws - 1998, Regular Session
Key: (1) language to be deleted (2) new language
CHAPTER 315-H.F.No. 2315
An act relating to commerce; regulating trademarks and
service marks; defining terms; providing remedies;
amending Minnesota Statutes 1996, sections 333.18;
333.19, subdivision 1; 333.20, subdivisions 1 and 2;
333.21, subdivision 2; 333.23; 333.24; 333.25; 333.26;
and 333.29, subdivision 1; proposing coding for new
law in Minnesota Statutes, chapter 333; repealing
Minnesota Statutes 1996, section 325D.165.
BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MINNESOTA:
Section 1. Minnesota Statutes 1996, section 333.18, is
amended to read:
333.18 [TRADEMARKS AND SERVICE MARKS; DEFINITIONS.]
Subdivision 1. [TRADEMARKS AND SERVICE MARKS.] (1) (a) The
term "trademark" as used in sections 333.18 to 333.31 means any
word, name, symbol, or device or any combination thereof adopted
and used by a person to identify goods made or sold by that
person and to distinguish them from goods made or sold by
others. Trademark includes a mark used on or in connection with
the goods of one or more persons other than the owner of the
mark to certify regional or other origin, material, mode of
manufacture, quality, accuracy, or other characteristics of the
goods or that the work or labor on the goods was performed by
the members of a union or other organization. The term also
includes a mark by members of a cooperative, an association, or
other collective group or organization and includes marks used
to indicate membership in a union, an association, or other
organization.
(2) (b) The term "service mark" as used in sections 333.18
to 333.31 means a word, name, symbol, or device or any
combination thereof adopted and used by a person to identify
that person's services and to distinguish them from services of
others and includes without limitation the marks, names,
symbols, titles, designations, slogans, character names, and
distinctive features of radio or other advertising used in
commerce. Service mark includes a mark used in connection with
the services of one or more persons other than the owner of the
mark to certify regional or other origin, material, quality,
accuracy, or other characteristics of the service or that the
work or labor on the services was performed by members of a
union or other organization. The term also includes a mark used
by members of a cooperative, an association, or other collective
group or organization and includes marks used to indicate
membership in a union, an association, or other organization.
(3) (c) The term "certification mark" means a mark used
upon or in connection with the products or services of one or
more persons other than the owner of the mark to certify
regional or other origin, material, mode of manufacture,
quality, accuracy or other characteristics of such the goods or
services or that the work or labor on the goods or services was
performed by members of a union or other organization.
(4) (d) The term "collective mark" means a trademark or
service mark used by the members of a cooperative, an
association or other collective group or organization and
includes marks used to indicate membership in a union, an
association or other organization.
Subd. 2. [PERSON.] The term "person" as used herein in
sections 333.18 to 333.31 means any individual, firm,
partnership, limited partnership, limited liability partnership,
corporation, limited liability company, whether domestic or
foreign, association, union or other organization.
Subd. 3. [APPLICANT.] The term "applicant" as used herein
in sections 333.18 to 333.31 embraces the person filing an
application for registration of a mark under sections 333.18 to
333.31, the applicant's legal representatives, successors or
assigns.
Subd. 4. [REGISTRANT.] The term "registrant" as used
herein in sections 333.18 to 333.31 embraces the person to whom
the registration of a mark under sections 333.18 to 333.31 is
issued, a legal representative, successors or assigns.
Subd. 5. [USED; ADOPTED AND USED.] (1) For the purposes of
sections 333.18 to 333.31, a trademark shall be deemed to be is
"used" in this state when it is placed in any manner on the
goods or their containers or on the tags or labels affixed
thereto to them or on displays associated with the goods and
such the goods are sold or otherwise distributed in this state
for marketing or other legitimate business purposes.
(2) For the purpose of sections 333.18 to 333.31, a service
mark shall be deemed to be is "adopted and used" when it is
adopted and used in connection with the rendering, selling, or
advertising of services in this state to identify the services
of one person and distinguish them from the services of others,
and such the services are rendered for marketing or other
legitimate business purposes.
Subd. 6. [ABANDONED; ABANDONMENT.] For purposes of
sections 333.18 to 333.31, a trademark or service mark is
considered abandoned when either of the following occurs:
(1) when its use has been discontinued with intent not to
resume that use. Intent not to resume use may be inferred from
circumstances. Nonuse for two consecutive years constitutes
prima facie evidence of abandonment; or
(2) when a course of conduct of the owner, including acts
of omission as well as commission, causes the mark to lose its
significance as a mark.
Subd. 7. [DILUTION.] The term "dilution" means the
lessening of the capacity of a famous mark to identify and
distinguish goods and services, regardless of the presence or
absence of:
(1) competition between the owner of a famous mark and
other parties; or
(2) the likelihood of confusion, mistake, or deception.
Subd. 8. [GENERIC.] The term "generic" means that the
registered mark is no longer considered by the public to
identify exclusively the goods or services of the markholder as
described in the application for the mark.
Sec. 2. Minnesota Statutes 1996, section 333.19,
subdivision 1, is amended to read:
Subdivision 1. A trademark or service mark by which the
goods or services of any applicant for registration may be
distinguished from the goods or services of others shall must
not be registered if it:
(1) consists of or comprises immoral, deceptive or
scandalous matter; or
(2) consists of or comprises matter which 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
(3) 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 of this insignia; or
(4) consists of or comprises the name, signature or
portrait of any living individual, except with written consent;
or
(5) consists of a mark which, (a) (i) when applied to the
goods or used to identify the services of the applicant, is
merely descriptive or deceptively misdescriptive of them,
or (b) (ii) when applied to the goods or used to identify the
services of the applicant is primarily geographically
descriptive or deceptively misdescriptive of them, or (c) (iii)
is primarily merely a surname provided, however, that nothing in
this subsection clause (5) shall prevent the registration of a
mark used in this state by the applicant which has become
distinctive of the applicant's goods or services. The secretary
of state may accept as evidence that the mark has become
distinctive, as applied to the applicant's goods or used to
identify the services, proof of substantially exclusive and
continuous use thereof as a mark by the applicant in this state
for the five years next preceding the date of the filing of the
application for registration; or
(6) consists of or comprises a mark which so resembles a
mark registered in this state or a corporate, limited liability
company, limited liability partnership, cooperative, or limited
partnership name in use or reserved in this state by another, or
a mark or trade name previously used in this state by another
and not abandoned, as to be likely, when applied to the goods or
used to identify the services of the applicant, to cause
confusion or mistake or to deceive. The secretary of state may
require affidavits by both the applicant and by the holder of
the previously registered name or mark in making this
determination.
Sec. 3. Minnesota Statutes 1996, section 333.20,
subdivision 1, is amended to read:
Subdivision 1. Subject to the limitations set forth in
sections 333.18 to 333.31, any person who adopts and uses a
trademark or a service mark in this state may file in the office
of the secretary of state, on a form to be furnished by the
secretary of state, 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 such registration; and, if a corporation business entity,
the state of incorporation, registration;
(2) the goods or services in connection with which the mark
is used and the mode or manner in which the mark is used in
connection with such the goods or services and the class in
which such the goods or services fall,;
(3) a description of the mark;
(4) the date when the mark was first used in this state by
the applicant or a predecessor in business, interest; and
(4) (5) the applicant's statement of belief that the
applicant is the owner of the mark and that no other person has
the right to use such mark in this state either in the identical
form thereof or in such near resemblance thereto as might be
calculated to deceive or to be mistaken therefor and the mark is
in use.
Sec. 4. Minnesota Statutes 1996, section 333.20,
subdivision 2, is amended to read:
Subd. 2. The application shall be signed as provided in
section 645.44, subdivision 14, and verified by the individual
applicant or by a member of the firm or an officer of the
corporation, or association or by a manager of a domestic or
foreign limited liability company, or association applying, for
business entity applicants, by a person with authority to sign
on behalf of the business entity.
Sec. 5. Minnesota Statutes 1996, section 333.21,
subdivision 2, is amended to read:
Subd. 2. Any certificate of registration issued by the
secretary of state under the provisions hereof or a copy thereof
duly certified by the secretary of state shall be admissible in
evidence as competent and sufficient proof of the registration
of such the mark, in any action or judicial proceedings in any
court of this state and shall be prima facie evidence of
registrant's ownership and exclusive right to use the mark on or
in connection with the goods or services described in the
certificate.
Sec. 6. Minnesota Statutes 1996, section 333.23, is
amended to read:
333.23 [CONVEYANCES OF MARKS; RECORDATION, FEE, NECESSITY.]
The secretary of state shall record written conveyances of
any mark along with that part of the goodwill of the business in
connection with which the mark is used, and of the corresponding
application or registration which is presented for recording
along with a payment of a fee of $15 and 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 sections 333.18 to 333.31
shall be void as against any subsequent purchaser for valuable
consideration without notice unless it is recorded filed with
the secretary of state within three months after the date
thereof of the assignment or prior to such before the subsequent
purchase.
Sec. 7. Minnesota Statutes 1996, section 333.24, is
amended to read:
333.24 [SECRETARY OF STATE'S RECORD OF MARKS.]
The secretary of state shall keep for public examination a
record of all marks registered filed or renewed under sections
333.18 to 333.31 in accordance with according to the
classification hereinafter set forth in sections 333.18 to
333.31. Such The record of registration shall be is
constructive notice of registrant's claim of ownership of the
mark registered.
Sec. 8. Minnesota Statutes 1996, section 333.25, is
amended to read:
333.25 [CANCELLATION OF MARKS.]
Subdivision 1. The secretary of state shall cancel from
the register:
(1) after two years from the effective date of Laws 1959,
chapter 600, all registrations under prior acts which are not
renewed in accordance with according to sections 333.18 to
333.31;
(2) any registration concerning which the secretary of
state shall receive a voluntary request for cancellation thereof
from the registrant;
(3) all registrations granted filed under sections 333.18
to 333.31 and not renewed in accordance with the according to
its provisions thereof;
(4) in compliance with an order of a district court, any
registration concerning which the court shall find that:
a. that (i) the registered mark has been abandoned,;
b. that (ii) the registrant is not the owner of the mark,;
c. that (iii) the registration was granted filed
improperly,;
d. that (iv) the registration was obtained fraudulently,;
(v) the mark is or has become the generic name for the
goods or services, or a portion of the goods or services, for
which it has been registered; or
e. that (vi) the registered mark is so similar, as to be
likely to cause confusion or mistake or to deceive, to a mark
registered by another person previously in this state or in the
United States Patent and Trademark Office, prior to before the
date of the filing of the application for registration by the
registrant hereunder under sections 333.18 to 333.31, and not
abandoned; provided, however, that should the registrant prove
that the registrant is the prior user of the mark or the owner
of a concurrent registration of the mark in the United States
Patent and Trademark Office covering an area including this
state, the registration hereunder shall not be canceled.; or
(5) a registration when a district court shall order
cancellation of a the registration on any ground.
Subd. 2. No registration shall be canceled after the mark
has had substantially exclusive and continuous use by the
registrant for five years following the registration of said the
mark except for the reasons set forth in subdivision 1,
subsections clauses (1), (2), and (3) and subsections
clause (4)a, b and d thereof, items (i), (ii), and (iv), or
unless a mark has been registered in this state prior to before
use of registrant's mark or a mark has been registered in the
United States Patent and Trademark Office with the publication
date thereof prior to of it before the date of use of
registrant's mark, which marks when used on or in connection
with the goods or services of the respective registrants would
be likely to cause confusion, mistake, or deception, or unless
the mark is the common descriptive name of any article,
substance, or service.
Sec. 9. Minnesota Statutes 1996, section 333.26, is
amended to read:
333.26 [CLASSIFICATION SYSTEM.]
For convenience of administration of sections 333.18 to
333.31, but not to limit or extend the applicant's or
registrant's rights, the secretary of state shall adopt the
classification system in effect in the United States Patent and
Trademark Office on the effective date of Laws 1959, Chapter
600, and shall revise this classification system to conform with
said the United States Patent and Trademark Office system as and
if changes are made therein in that system. A single
application for registration of a mark may include any or all
goods or services with which the mark is actually being used
comprised in a single class, but in no event shall a single
application include goods or service with which the mark is
being used which fall within different classes.
Sec. 10. [333.285] [INJURY TO BUSINESS REPUTATION;
DILUTION.]
(a) The owner of a mark that is famous in this state may,
subject to the principles of equity and upon terms the court
considers reasonable: seek an injunction against another
person's commercial use of a mark or trade name, if the use
begins after the mark has become famous and causes dilution of
the distinctive quality of the mark; and obtain other relief as
provided in this section.
In determining whether a mark is distinctive and famous, a
court may consider factors such as, but not limited to:
(1) the degree of inherent or acquired distinctiveness of
the mark in this state;
(2) the duration and extent of use of the mark in
connection with the goods and services with which the mark is
used;
(3) the duration and extent of advertising and publicity of
the mark in this state;
(4) the geographical extent of the trading area in which
the mark is used;
(5) the channels of trade for the goods or services with
which the mark is used;
(6) the degree of recognition of the mark in the trading
areas and channels of trade in this state used by the mark's
owner and the person against whom the injunction is sought;
(7) the nature and extent of use of the same or similar
mark by third parties; and
(8) whether the mark is the subject of a state registration
in this state, or a federal registration under the Act of March
3, 1881, or under the Act of February 20, 1905, or on the
principal register.
(b) In an action brought under this section, the owner of a
famous mark is entitled only to injunctive relief in this state,
unless the person against whom the injunctive relief is sought
willfully intended to trade on the owner's reputation or to
cause dilution of the famous mark. If willful intent is proven,
the owner is entitled to the remedies in this chapter, subject
to the discretion of the court and the principles of equity.
(c) The following are not actionable under this section:
(1) fair use of a famous mark by another person in
comparative commercial advertising or promotion to identify the
competing goods or services of the owner of the famous mark;
(2) noncommercial use of the mark; and
(3) all forms of news reporting and news commentary.
Sec. 11. Minnesota Statutes 1996, section 333.29,
subdivision 1, is amended to read:
Subdivision 1. Any district court may grant injunctions to
restrain infringement of registrant's rights and may require the
defendants to pay the registrant all benefits derived from
and/or damages suffered by reason of such infringement. The
prevailing party may, in the discretion of the court, be awarded
a reasonable attorney's fee to be taxed by the court as a part
of the costs and merged into the judgment. An owner of a mark
registered under sections 333.18 to 333.31 may bring an action
to enjoin the manufacture, use, display, or sale of any
counterfeits or imitations of the mark, and a court of competent
jurisdiction may grant injunctions to restrain the manufacture,
use, display, or sale as the court considers just and
reasonable. The court may require the defendants to pay to the
owner either or both of the following: (1) all profits derived
from the wrongful manufacture, use, display, or sale; or (2) all
damages suffered by reason of the wrongful manufacture, use,
display, or sale. The court may also order that counterfeits or
imitations in the possession or under the control of a defendant
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 three times the profits and
damages and reasonable attorneys' fees of the prevailing party
if 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.
Sec. 12. [333.305] [FORUM FOR ACTIONS REGARDING
REGISTRATION; SERVICE ON OUT-OF-STATE REGISTRANTS.]
(a) Actions to require cancellation of a mark registered
according to sections 333.18 to 333.31 or in mandamus to compel
registration of a mark according to sections 333.18 to 333.31
shall be brought in the district court. In an action in
mandamus, the proceeding shall be based solely upon the record
before the secretary of state. In an action for cancellation,
the secretary of state 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) In an action brought against a nonresident registrant,
service may be effected upon the secretary of state as agent for
service of the registrant according to the procedures
established for service upon nonresident corporations and
business entities under section 5.25.
Sec. 13. [REPEALER.]
Minnesota Statutes 1996, section 325D.165, is repealed.
Presented to the governor March 19, 1998
Signed by the governor March 23, 1998, 10:36 a.m.
Official Publication of the State of Minnesota
Revisor of Statutes