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Session Law

2006

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Chapter 195 AN ACT ESTABLISHING STATE TRADEMARKS.

Be it enacted by the Senate and House of Representatives in General Court assembled, and by the authority of the same, as follows:

SECTION 1. Chapter 110B of the General Laws is hereby repealed.

SECTION 2. The General Laws are hereby amended by inserting after chapter 110G the following chapter:-

Chapter 110H.
Registration and Protection of Trademarks

Section 1. As used in this chapter, the following words shall, unless the context requires otherwise, have the following meanings:-

"Applicant", a person filing an application for registration of a mark under this chapter, and the legal representatives, successors, or assigns of that person.

"Mark", a trademark or service mark, entitled to registration under this chapter whether registered or not.
A mark shall be considered "abandoned" when either of the following occurs:-

(a) When its use has been discontinued with intent not to resume the use. Intent not to resume may be inferred from circumstances. Nonuse for 2 con-
secutive years shall constitute prima facie evidence of abandonment.

(b) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to lose its significance as a mark.

"Person", or other word or term used to designate the applicant or other party entitled to a benefit or privilege or rendered liable under this chapter includes a juristic person as well as a natural person. The words "juristic person" includes a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.

"Registrant", a person to whom the registration of a mark under this chapter is issued, and the legal representatives, successors, or assigns of that person.

"Secretary", the state secretary or his designee charged with the administration of this chapter.

"Service mark", a 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 service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

"Trademark", a word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the goods of that person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown.

"Trade name", any name used by a person to identify a business or vocation of that person.

"Use", 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 chapter, a mark shall be considered to be in use:-

(a) on goods when it is placed in any manner on the goods or other containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes the placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce in the commonwealth, and
(b) on services when it is used or displayed in the sale or advertising of services and the services are rendered in the commonwealth.

Section 2. 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:

(1) consists of or comprises immoral, deceptive or scandalous matter;
(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;
(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;
(4) consists of or comprises the name, signature or portrait identifying a particular living individual, except by the individual's written consent; or
(5) consists of a mark which:-

(i) when used on or in connection with the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them,
(ii) when used on or in connection with the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, or
(iii) is primarily merely a surname, provided, however, that nothing in this clause 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 the commonwealth for the 5 years before the date on which the claim of distinctiveness is made; or

(6) consists of or comprises a mark which so resembles a mark registered in the commonwealth or a mark or trade name 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.

Section 3. (a) Subject to the limitations set forth in this chapter, a person who uses a mark may file in the office of the secretary, in a manner complying with the requirements of 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, or 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 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 the commonwealth by the applicant or a predecessor in interest, and
(4) 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 the commonwealth, or has the right to use the mark either in the identical form thereof or in near resemblance thereto as to be likely, when applied to the goods or services of the other person, to cause confusion, or to cause mistake, or to deceive.

(b) 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 therefore.

(c) The secretary may also require that a drawing of the mark accompany the application complying with requirements as the secretary may specify.

(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.

(e) The application shall be accompanied by 3 specimens showing the mark as actually used.

(f) The application shall be accompanied by the application fee payable to the secretary.

Section 4. (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 chapter.

(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, amendments to the application as may be reasonably requested by the secretary or considered 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:-

(i) the secretary finally refuses registration of the mark, or
(ii) the applicant fails to reply or amend within the specified period, whereupon the application shall be considered to have been abandoned.

(f) If the secretary finally refuses registration of the mark, the applicant may seek a writ of mandamus to compel the registration. The writ may be granted, but without costs to the secretary, on proof that all the statements in the application are true and that the mark is otherwise entitled to registration.
(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. A 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 9.

Section 5. (a) Upon compliance by the applicant with the requirements of this chapter, 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 commonwealth, and it shall show the name and business address and, if a corporation, the state of incorporation, or if a partnership, the commonwealth in which the partnership is organized and the names of the general partners, as specified by the secretary, 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 the commonwealth, 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.

(b) A certificate of registration issued by the secretary under this chapter or a copy thereof duly certified by the secretary shall be admissible in evidence as competent and sufficient proof of the registration of the mark in any actions or judicial proceedings in any court of the commonwealth. Registration of or renewal of a mark provided by this chapter shall be constructive notice of the registrant's claim of ownership thereof and shall, when introduced in any action, be prima facie evidence of the registrant's exclusive right to use the registered mark in this commonwealth on goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude an opposing party from proving any legal or equitable defense or defect which might have been asserted if the mark had not been registered.

Section 6. (a) A registration of mark hereunder shall be effective for a term of 5 years from the date of registration and, upon application filed within 6 months before the expiration of the term, in a manner complying with the requirements of the secretary, the registration may be renewed for a like term from the end of the expiring term. A renewal fee, payable to the secretary, shall accompany the application for renewal of the registration.

(b) A registration may be renewed for successive periods of 5 years in like manner.

(c) A registration in force on the date on which this chapter shall become effective shall continue in full force and effect for the unexpired term thereof 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 therefor within 6 months before the expiration of the registration.

(d) All applications for renewal under this chapter, whether of registrations made under this chapter 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 a specimen showing actual use of the mark on or in connection with the goods or services.

Section 7. (a) A mark and its registration hereunder shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignment shall be by instruments in writing duly executed and may be recorded with the secretary upon the payment of the recording fee 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 chapter 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 before the subsequent purchase.

(b) A registrant or applicant effecting a change of the name of the person to whom the mark was issued or for whom an application was filed may record a certificate of change of name of the registrant or applicant with the secretary upon the payment of the recording fee. 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 or 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 chapter, such as, by way of example, licenses, security interests or mortgages, may be recorded in the discretion of the secretary, provided that the 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.

(e) A photocopy of any instrument referred to in subsection (a), (b) or (c), shall be accepted for recording if it is certified by any of the parties thereto, or their successors, to be a true and correct copy of the original.

Section 8. The secretary shall keep for public examination a record of all marks registered or renewed under this chapter, as well as a record of all documents recorded pursuant to section 7.

Section 9. (a) The secretary shall cancel from the register, in whole or in part:-

(1) a registration concerning which the secretary shall receive a voluntary request for cancellation thereof from the registrant or the assignee of record;
(2) registrations granted under this chapter and not renewed in accordance with the provisions hereof;
(3) a registration concerning which the superior court shall find:-

(i) that the registered mark has been abandoned,
(ii) that the registrant is not the owner of the mark,
(iii) that the registration was granted improperly,
(iv) that the registration was obtained fraudulently,
(v) that the mark is or has become the generic name for the goods or services, or a portion thereof, for which it has been registered,
(vi) that 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 in the United States Patent Trademark Office prior to the date of the filing of the application for registration by the registrant hereunder, and not abandoned; but, should the registrant prove that the registrant is the owner of a concurrent registration of a mark in the United States Patent and Trademark Office covering an area including the commonwealth, the registration hereunder shall not be cancelled for the area of the state, or

(4) when the superior court shall order cancellation of a registration on any ground.

Section 10. The secretary shall by regulation establish a classification of goods and services for convenience of administration of this chapter, 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 indicating the appropriate class or classes of goods or services. When a single application includes goods or services which fall within multiple classes, the secretary may require payment of a fee for each class. To the extent practical, the classification of goods and services should conform to the classification adopted by the United States Patent and Trademark Office.

Section 11. A person who shall for himself, or on behalf of any other person, procure the filing or registration of any mark in the office of the secretary under this chapter, 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 a court of competent jurisdiction.

Section 12. Subject to section 16, a person who shall:-

(i) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter in connection with the sale, distribution, offering for sale, or advertising of any goods or services on or in connection with which the use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or
(ii) reproduce, counterfeit, copy or colorably imitate the mark and apply the 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 the commonwealth of such goods or services; shall be liable in a civil action by the registrant for the remedies provided in section 14, except that under clause (ii) of this section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion or mistake or to deceive.

Section 13. Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark registered under this chapter, or a mark valid at common law, or a trade name valid at common law, shall be a ground for injunctive relief notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.

Section 14. (a) An owner of a mark registered under this chapter may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations thereof and the superior court may grant injunctions to restrain the manufacture, use, display or sale as may be considered by the court as just and reasonable, and may require the defendants to pay to the owner all profits derived from and all damages suffered by reason of the wrongful manufacture, use, display or sale; and the court may also order that the 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 and reasonable attorneys' fees of the prevailing party in the cases where the court finds the other party committed wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case.

(b) The enumeration of any right or remedy herein shall not affect a registrant's right to prosecute under any penal law of the commonwealth.

Section 15. (a) Actions to require cancellation of a mark registered pursuant to this chapter or in mandamus to compel registration of a mark pursuant to this chapter shall be brought in the superior court. In an action in mandamus, the proceeding shall be based solely upon the record before the secretary. 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 have the right to intervene in the action.

(b) In any action brought against a nonresident registrant, service may be effected upon the secretary as agent for service of the registrant in accordance with the procedures established for service upon nonresident corporations and business entities under section 15 of chapter 181, regardless of whether the nonresident is a natural person or other juristic person.

Section 16. Nothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.

Section 17. The secretary shall by regulation prescribe the fees payable for the various applications and recording fees and for related services. Unless specified by the secretary, the fees payable herein are not refundable.

SECTION 3. Paragraph (b) of section 4.01 of chapter 156D of the General Laws, as appearing in the 2004 Official Edition, is hereby amended by striking out clause (6) and inserting in place thereof the following clause:-
(6) a trademark of service mark registered with the secretary of state under chapter 110B or 110G.

SECTION 4. Subsection (b) of section 15.06 of said chapter 156D, as so appearing, is hereby amended by striking out clause (6) and inserting in place thereof the following clause:-
(6) a trademark of service mark registered with the secretary of state under chapter 110B or 110G.

SECTION 5. An application, suit, proceeding or appeal pending under chapter 110B of the General Laws at the time this act takes effect shall not be affected by this act.

Approved August 1, 2006.


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