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S.B. 150 Enrolled
This act modifies the Trademarks and Trade Names title to recodify provisions relating to
the registration and protection of trademarks and service marks and to make technical
changes. The act addresses the statute's relationship to federal law and common law. The
act establishes the authority and responsibilities of the Division of Corporations and
Commercial Code. The act states the requirements for registration of marks. The act
provides for the assignment of, changes to, renewal of, and cancellation of marks. The act
provides for recording of other instruments that relate to marks. The act addresses
classification of goods and services. The act establishes liability for fraudulent registration,
infringement, and injury to business reputation. The act establishes remedies. The act
designates the forums for cancellation actions regarding registration and the requirements
for service on out-of-state registrants. The act addresses its application to pending litigation.
This act enacts uncodified material.
This act affects sections of Utah Code Annotated 1953 as follows:
AMENDS:
42-2-9, as last amended by Chapter 267, Laws of Utah 1999
ENACTS:
70-3a-101, Utah Code Annotated 1953
70-3a-102, Utah Code Annotated 1953
70-3a-103, Utah Code Annotated 1953
70-3a-104, Utah Code Annotated 1953
70-3a-201, Utah Code Annotated 1953
70-3a-202, Utah Code Annotated 1953
70-3a-203, Utah Code Annotated 1953
70-3a-301, Utah Code Annotated 1953
70-3a-302, Utah Code Annotated 1953
70-3a-303, Utah Code Annotated 1953
70-3a-304, Utah Code Annotated 1953
70-3a-305, Utah Code Annotated 1953
70-3a-306, Utah Code Annotated 1953
70-3a-307, Utah Code Annotated 1953
70-3a-308, Utah Code Annotated 1953
70-3a-401, Utah Code Annotated 1953
70-3a-402, Utah Code Annotated 1953
70-3a-403, Utah Code Annotated 1953
70-3a-404, Utah Code Annotated 1953
70-3a-405, Utah Code Annotated 1953
REPEALS:
70-3-1, as last amended by Chapter 141, Laws of Utah 1993
70-3-2, as last amended by Chapter 241, Laws of Utah 1990
70-3-3, as last amended by Chapter 313, Laws of Utah 1994
70-3-4, as last amended by Chapter 66, Laws of Utah 1984
70-3-5, as last amended by Chapter 66, Laws of Utah 1984
70-3-6, as last amended by Chapter 313, Laws of Utah 1994
70-3-7, as last amended by Chapter 313, Laws of Utah 1994
70-3-8, as last amended by Chapter 156, Laws of Utah 1957
70-3-9, as last amended by Chapter 66, Laws of Utah 1984
70-3-10, as last amended by Chapter 66, Laws of Utah 1984
70-3-11, as last amended by Chapter 66, Laws of Utah 1984
70-3-12, as last amended by Chapter 66, Laws of Utah 1984
70-3-13, as last amended by Chapter 156, Laws of Utah 1957
70-3-14, as last amended by Chapter 156, Laws of Utah 1957
70-3-15, as last amended by Chapter 156, Laws of Utah 1957
70-3-16, as last amended by Chapter 66, Laws of Utah 1984
70-3-17, as last amended by Chapter 156, Laws of Utah 1957
Be it enacted by the Legislature of the state of Utah:
Section 1. Section 42-2-9 is amended to read:
42-2-9. Corporate names, limited liability company names, and trademark, service
mark, and trade name rights not affected.
(1) This chapter does not affect or apply to any corporation organized under the laws of any
state if it does business under its true corporate name.
(2) (a) This chapter does not affect the statutory or common law trademark, service mark,
or trade name rights granted by state or federal statute. [
(b) An act listed in Subsection (2)(c) of itself does not authorize the use in this state of an
assumed name in violation of the rights of another as established under:
(i) this chapter[
(ii) Title 70, Chapter [
Act;
(iii) the state law relating to names of corporations, partnerships, and other legal business
entities[
(iv) the federal [
U.S.C. Section 1051 et seq.[
(v) the common law, including rights in a trade name.
(c) Subsection (2)(b) applies to:
(i) a filing under this chapter;
(ii) an approval by the Division of Corporations and Commercial Code pursuant to this
chapter; or
(iii) the use of an assumed name.
(3) This chapter does not affect or apply to any limited liability company doing business in
this state under its true name.
Section 2. Section 70-3a-101 is enacted to read:
70-3a-101. Title.
This chapter is known as the "Registration and Protection of Trademarks and Service Marks
Act."
Section 3. Section 70-3a-102 is enacted to read:
70-3a-102. Relation to federal law.
(1) This chapter shall be interpreted to provide for the registration and protection of
trademarks and service marks in a manner substantially consistent with the federal system of
trademark registration and protection under the Trademark Act of 1946, 15 U.S.C. Sec. 1051, et seq.
(2) In interpreting this chapter, a construction given the Trademark Act of 1946, 15 U.S.C.
Sec. 1051, et seq., should be used as persuasive authority.
Section 4. Section 70-3a-103 is enacted to read:
70-3a-103. Definitions -- Use -- Service marks.
(1) As used in this chapter:
(a) "Abandoned mark" means a mark whose:
(i) use has been discontinued with no intent to resume use; or
(ii) significance as a mark has been lost due to any course of conduct of the owner, including
acts of omission or commission.
(b) "Applicant" means:
(i) the person filing an application for registration of a mark under this chapter; and
(ii) a legal representative, successor, or assign of a person described in Subsection (1)(b)(i).
(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:
(i) competition between the owner of the famous mark and another person; or
(ii) the likelihood of:
(A) confusion;
(B) mistake; or
(C) deception.
(d) "Division" means the Division of Corporations and Commercial Code within the
Department of Commerce.
(e) "Mark" means any trademark or service mark entitled to registration under this chapter
whether or not the trademark or service mark is registered.
(f) "Registrant" means:
(i) the person to whom the registration of a mark under this chapter is issued; and
(ii) a legal representative, successor, or assign of a person described in Subsection (1)(f)(i).
(g) (i) If the conditions of Subsection (1)(g)(ii) are met, "service mark" means:
(A) a word, term, name, symbol, design, or device; or
(B) any combination of words, terms, names, symbols, designs, or devices.
(ii) The mark described in Subsection (1)(g)(i) is a service mark only if it is used by a
person:
(A) to identify and distinguish the services of one person from the services of others,
including a unique service; and
(B) to indicate the source of the services, even if that source is unknown.
(h) (i) If the conditions of Subsection (1)(h)(ii) are met, "trademark" means:
(A) a word, term, name, symbol, design, or device; or
(B) any combination of words, terms, names, symbols, designs, or devices.
(ii) The mark described in Subsection (1)(h)(i) is a trademark only if it is used by a person:
(A) to identify and distinguish the goods of that person from those manufactured or sold by
others, including a unique product; and
(B) to indicate the source of the goods, even if that source is unknown.
(i) "Trade name" means any name used by a person to identify a business or vocation of that
person.
(j) "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.
(2) For the purposes of this chapter, a mark is considered to be in use:
(a) on goods:
(i) when the mark is placed:
(A) in any manner on the goods or other containers;
(B) in any manner on displays associated with the goods or other containers;
(C) on the tags or labels affixed to the goods or other containers; or
(D) if the nature of the goods makes the placements referred to in Subsections (2)(a)(i)(A)
through (C) impracticable, on documents associated with the goods or the sale of the goods; and
(ii) the goods are sold or transported in commerce in this state; and
(b) on services:
(i) when it is used or displayed in the sale or advertising of services; and
(ii) when the services are rendered in this state.
(3) For purposes of Subsection (1)(a):
(a) intent not to resume may be inferred from circumstances; and
(b) nonuse for two consecutive years is prima facie evidence of abandonment.
(4) Notwithstanding Subsection (1)(g), the following may be registered as service marks
notwithstanding that they may advertise the goods of the sponsor:
(a) titles;
(b) character names used by a person; and
(c) other distinctive features of:
(i) a radio program;
(ii) a television program; or
(iii) a program similar to a program described in Subsection (4)(c)(i) or (ii).
Section 5. Section 70-3a-104 is enacted to read:
70-3a-104. Common law rights.
This chapter does not adversely affect the rights or the enforcement of rights in marks
acquired in good faith at any time at common law.
Section 6. Section 70-3a-201 is enacted to read:
70-3a-201. Rulemaking authority of division.
In accordance with Title 63, Chapter 46a, Utah Administrative Rulemaking Act, the division
may by rule:
(1) pursuant to Subsection 70-3a-302 (1), establish the filing requirements for an application
for a registration of a mark;
(2) pursuant to Subsection 70-3a-303 (2), establish what information in addition to the
information contained in the application shall be submitted by an applicant for registration under
Section 70-3a-302 ;
(3) pursuant to Subsection 70-3a-303 (3), establish the requirements for an applicant or
registrant to disclaim an unregistrable component of a mark that is otherwise registrable;
(4) pursuant to Section 70-3a-305 , establish the filing requirements for an application to
renew a registration of a mark; and
(5) establish the filing requirements for a filing under Section 70-3a-306 .
Section 7. Section 70-3a-202 is enacted to read:
70-3a-202. Records.
The division shall keep for public examination a record of:
(1) all marks registered or renewed under this chapter; and
(2) all documents recorded under Section 70-3a-306 .
Section 8. Section 70-3a-203 is enacted to read:
70-3a-203. Fees.
(1) A regulatory fee, as defined in Section 63-38-3.2 , shall be determined by the division in
accordance with Section 63-38-3.2 .
(2) (a) For a fee authorized by this chapter that is not a regulatory fee, the division may adopt
a schedule of fees provided that each fee in the schedule of fees is:
(i) reasonable and fair; and
(ii) submitted to the Legislature as part of the Department of Commerce's annual
appropriations request.
(b) When a fee schedule described in Subsection (2)(a) is submitted as part of the annual
appropriations request, the Legislature, in a manner substantially similar to Section 63-38-3.2 , may
for any fee in the fee schedule:
(i) approve the fee;
(ii) (A) increase or decrease the fee; and
(B) approve the fee as changed by the Legislature; or
(iii) reject the fee.
(c) A fee approved by the Legislature pursuant to this section shall be deposited in a
restricted account within the General Fund known as the Commerce Service Fund.
Section 9. Section 70-3a-301 is enacted to read:
70-3a-301. Registrability.
(1) A mark by which the goods or services of an applicant for registration may be
distinguished from the goods or services of others may not be registered if it:
(a) consists of or comprises immoral, deceptive, or scandalous matter;
(b) consists of or comprises matter that may:
(i) disparage or falsely suggest a connection with:
(A) a person, living or dead;
(B) an institution;
(C) a belief; or
(D) a national symbol; or
(ii) bring an item listed in Subsection (1)(b)(i) into contempt or disrepute;
(c) consists of or comprises the flag or coat of arms or other insignia of:
(i) the United States;
(ii) any state;
(iii) any municipality;
(iv) any foreign nation; or
(v) any simulation of an item listed in Subsections (1)(c)(i) through (iv);
(d) consists of or comprises the name, signature, or portrait identifying a particular living
individual, except by the individual's written consent;
(e) subject to Subsection (3), consists of a mark that:
(i) when used on or in connection with the goods or services of the applicant, is:
(A) merely descriptive of the goods or services;
(B) deceptively misdescriptive of the goods or services;
(C) primarily geographically descriptive of the goods or services; or
(D) primarily geographically deceptively misdescriptive of the goods or services; or
(ii) is primarily merely a surname;
(f) consists of or comprises a mark that:
(i) resembles:
(A) a mark registered in this state; or
(B) a mark or trade name previously used by another and not abandoned; and
(ii) is likely, when used on or in connection with the goods or services of the applicant, to
cause confusion, mistake, or to deceive; or
(g) without the written consent of the United States Olympic Committee, contains or consists
of:
(i) the symbol of the International Olympic Committee, consisting of five interlocking rings;
(ii) the emblem of the United States Olympic Committee, consisting of an escutcheon having
a blue chief and vertically extending red and white bars on the base with five interlocking rings
displayed on the chief;
(iii) any trademark, trade name, sign, symbol, or insignia falsely representing association
with, or authorization by, the International Olympic Committee or the United States Olympic
Committee;
(iv) the words "Olympic," "Olympiad," "Citius Altius Fortius"; or
(v) any combination or simulation of any item referenced in Subsections (1)(g)(i) through
(iv) that:
(A) causes confusion or mistake;
(B) deceives; or
(C) falsely suggests a connection with:
(I) the International Olympic Committee;
(II) the United States Olympic Committee; or
(III) any Olympic activity.
(2) (a) Any actual use of an item under Subsection (1)(g)(ii) or the words or any combination
of the words under Subsection (1)(g)(iv), for any lawful purpose prior to September 21, 1950, is not
prohibited by this section and may be continued for the same purpose and for the same goods or
services.
(b) Any actual use of any other trademark, trade name, sign, symbol, or insignia under
Subsections (1)(g)(iii) and (iv) for any lawful purpose prior to September 21, 1950, is not prohibited
by this section and may be continued for the same purpose and for the same goods or services.
(3) (a) Subsections (1)(e)(i)(A) through (1)(e)(i)(C) do not prevent the registration of a mark
used by the applicant that has become distinctive of the applicant's goods or services.
(b) For purposes of Subsection (3)(a), the division 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 of the mark as a mark by the applicant in this state for the five years before the date
when the claim of distinctiveness is made.
Section 10. Section 70-3a-302 is enacted to read:
70-3a-302. Application for registration.
(1) (a) Subject to the limitations in this chapter, any person who uses a mark may file with
the division an application for registration of that mark.
(b) The registration described in Subsection (1)(a) shall be filed in accordance with rules:
(i) made by the division in accordance with Section 70-3a-201 ; and
(ii) that are consistent with this section.
(c) The application shall:
(i) state:
(A) the name and business address of the person applying for registration;
(B) if a corporation, the state of incorporation; and
(C) if a partnership:
(I) the state where the partnership is organized; and
(II) the names of the general partners, as specified by the division;
(ii) specify:
(A) the goods or services on or in connection with which the mark is used;
(B) the mode or manner in which the mark is used on or in connection with those goods or
services; and
(C) the class defined pursuant to Section 70-3a-308 in which those goods or services fall;
(iii) state:
(A) the date when the mark was first used anywhere;
(B) the date when the mark was first used in this state by the applicant or a predecessor in
interest;
(C) that the applicant is the owner of the mark;
(D) that the mark is in use; and
(E) 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 that mark:
(I) in the mark's identical form; or
(II) in such near resemblance to the mark as to be likely, when applied to the goods or
services of the other person, to cause confusion, mistake, or to deceive;
(iv) be signed under penalty of perjury by:
(A) the applicant; or
(B) if the applicant is not an individual:
(I) an officer of the applicant; or
(II) a partner of a partnership;
(v) be filed with the division;
(vi) be accompanied by two specimens showing the mark as actually used; and
(vii) be accompanied by a regulatory fee as determined by the division in accordance with
Section 70-3a-203 .
(d) In addition to the information required by Subsection (1)(c), the division may require the
applicant to provide:
(i) a statement as to whether an application to register the mark, or portions or a composite
of the mark, has been filed by the applicant or a predecessor in interest in the United States Patent
and Trademark Office; or
(ii) a drawing of the mark, complying with the requirements the division may specify.
(2) If the division requires the statement under Subsection (1)(d)(i), the applicant shall
provide full information with respect to any application filed with the United States Patent and
Trademark Office including:
(a) the filing date and serial number of the application;
(b) the status of the application; and
(c) if any application was finally refused registration or has otherwise not resulted in a
registration, the reasons for the refusal or lack of registration.
Section 11. Section 70-3a-303 is enacted to read:
70-3a-303. Filing of applications.
(1) The division may examine an application to determine whether the application conforms
with this chapter if:
(a) the application for registration is filed under Section 70-3a-302 ; and
(b) the regulatory fee required by Section 70-3a-203 is paid.
(2) If reasonably requested by the division or considered by the applicant to be advisable to
respond to any rejection or objection, the applicant:
(a) shall provide any additional information requested by rule by the division, including a
description of a design mark; and
(b) may make, or authorize the division to make, amendments to the application.
(3) (a) The division may require the applicant to disclaim an unregistrable component of a
mark otherwise registrable.
(b) An applicant may voluntarily disclaim a component of a mark for which the applicant
has filed a registration application.
(c) A disclaimer under this Subsection (3) may not prejudice or affect the applicant's or
registrant's rights:
(i) in the disclaimed matter:
(A) existing at the time of the disclaimer; or
(B) arising after the disclaimer; or
(ii) of registration on another application if the disclaimed matter is or has become
distinctive of the applicant's or registrant's goods or services.
(d) The division may make rules consistent with this Subsection (3) to establish the
requirements for an applicant to disclaim an unregistrable component of a mark that is otherwise
registrable.
(4) The division may:
(a) amend an application filed by the applicant if the applicant agrees in writing to the
amendment; or
(b) require the applicant to file a new application.
(5) (a) If the division determines that the applicant is not qualified to register a mark, the
division shall notify the applicant of:
(i) the refusal; and
(ii) the reasons for the refusal.
(b) The applicant shall have a reasonable period of time specified by the division, but not
more than 60 days from the date of the notice under this Subsection (5) to:
(i) reply to the refusal; or
(ii) amend the application for reexamination.
(c) The procedure described in Subsections (5)(a) and (b) may be repeated until:
(i) the division finally refuses registration of the mark; or
(ii) the applicant fails to reply or amend within the time period specified under Subsection
(5)(b).
(d) If the applicant fails to reply or to amend within the time period specified under
Subsection (5)(b), the application is considered abandoned.
(6) If the division finally refuses registration of the mark, the refusal shall:
(a) be in writing; and
(b) notify the applicant of the applicant's right to a review of the agency action in accordance
with Title 63, Chapter 46b, Administrative Procedures Act.
(7) (a) An applicant may file an action to compel registration by obtaining judicial review
of the final agency action in accordance with Title 63, Chapter 46b, Administrative Procedures Act.
(b) The division is not liable for damages in an action to compel registration.
(c) An action to compel registration shall only be granted on proof that:
(i) all the statements in the application for registration are true; and
(ii) the mark is otherwise entitled to registration.
(8) (a) If more than one application is concurrently being processed by the division seeking
registration of the same or confusingly similar marks for the same or related goods or services, the
division shall grant priority to the applications in order of filing.
(b) If a prior-filed application is granted a registration, the division shall refuse an
application filed after the prior-filed application.
(c) An applicant refused under this Subsection (8) may bring an action for cancellation of
the registration upon grounds of prior or superior rights to the mark.
Section 12. Section 70-3a-304 is enacted to read:
70-3a-304. Certification of registration.
(1) If an applicant fully complies with this chapter, the division shall:
(a) certify the registration; and
(b) provide to the applicant documentation that the registration is certified.
(2) The documentation described in Subsection (1) shall:
(a) be affixed to the application of the applicant; or
(b) include the information that is required to be in an application under Subsections
70-3a-302 (1)(c)(i) through (iii).
(3) The following are admissible in evidence as competent and sufficient proof of the
registration of the particular mark in any action or judicial proceeding in any court of this state:
(a) the documentation described in Subsection (1)(b) that is provided by the division; or
(b) a copy of the documentation described in Subsection (1)(b) if the copy is certified by the
division.
Section 13. Section 70-3a-305 is enacted to read:
70-3a-305. Duration and renewal.
(1) The registration of a mark under this chapter expires five years after the date the division
certifies the registration under Section 70-3a-304 .
(2) A registration may be renewed for an additional five years from the date a registration
expires if the registrant:
(a) files an application with the division:
(i) at least six months before the expiration of the registration; and
(ii) in accordance with the requirements made by rule by the division:
(A) pursuant to Section 70-3a-201 ; and
(B) consistent with this section; and
(b) pays a renewal regulatory fee determined by the division in accordance with Section
70-3a-203 .
(3) If a registrant complies with this section, the registrant may renew a mark at the
expiration of each five-year term.
(4) (a) A registration in effect before May 6, 2002:
(i) shall continue in full force and effect for the registration's unexpired term; and
(ii) may be renewed by:
(A) filing an application for renewal with the division:
(I) within six months before the expiration of the registration; and
(II) in accordance with rules made by the division pursuant to Section 70-3a-201 ; and
(B) paying the required renewal regulatory fee determined by the division in accordance with
Section 70-3a-203 .
(b) If a registration in effect before May 6, 2002, is renewed in accordance with this
Subsection (4), the registration shall be renewed for a term of five years.
(5) Any application for renewal under this chapter, whether a registration made under this
chapter or a registration made under a prior Utah statute, shall include:
(a) a verified statement that the mark has been and is still in use; and
(b) (i) a specimen showing actual use of the mark on or in connection with the goods or
services; or
(ii) a verified statement that the mark has not changed.
Section 14. Section 70-3a-306 is enacted to read:
70-3a-306. Assignments -- Changes of name -- Other instruments -- Security interests
-- Acknowledgments.
(1) (a) A mark and the mark's registration under this chapter is assignable with:
(i) the good will of the business in which the mark is used; or
(ii) that part of the good will of the business connected with the use of and symbolized by
the mark.
(b) An assignment under this section:
(i) shall be:
(A) in writing; and
(B) properly executed; and
(ii) may be filed with the division by:
(A) filing a form provided by the division; and
(B) paying of a fee determined by the division in accordance with Section 70-3a-203 .
(c) Upon the filing of an assignment, the division shall certify that the assignment has been
filed.
(d) An assignment of any registration under this chapter is void as against any subsequent
purchaser for valuable consideration without notice, unless the assignment is filed with the division
within:
(i) three months after the date of the assignment; or
(ii) prior to the subsequent purchase.
(2) Any registrant or applicant may change the name of the person or business to whom the
mark is issued or for whom an application is filed by:
(a) filing two copies of a certificate of change of name of the registrant or applicant with the
division; and
(b) paying of a fee determined by the division in accordance with Section 70-3a-203 .
(3) (a) A person may file another instrument that relates to a mark registered or application
pending under this chapter:
(i) in the discretion of the division; and
(ii) if the instrument is:
(A) in writing; and
(B) properly executed.
(b) An instrument that may be filed under this Subsection (3) includes:
(i) a license;
(ii) a security interest; or
(iii) a mortgage.
(4) An acknowledgment by the assignor or person whose interest in a mark is adversely
effected by the instrument:
(a) is prima facie evidence of the execution of an assignment or other instrument; and
(b) when filed by the division, the filed acknowledgment is prima facie evidence of
execution of the assignment or other instrument.
Section 15. Section 70-3a-307 is enacted to read:
70-3a-307. Cancellation.
(1) The division shall cancel, in whole or in part:
(a) a registration of mark for which the division receives a voluntary request for the
registration's cancellation from:
(i) the registrant; or
(ii) the assignee of record;
(b) a registration of a mark:
(i) granted under this chapter; and
(ii) not renewed in accordance with the chapter;
(c) a registration of a mark for which a court of competent jurisdiction finds that:
(i) the registered mark has been abandoned;
(ii) the registrant is not the owner of the mark;
(iii) the registration was granted improperly;
(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 the mark has been registered; or
(vi) subject to Subsection (2), the mark is so similar, as to be likely to cause confusion,
mistake, or to deceive, to a mark:
(A) registered by another person in the United States Patent and Trademark Office prior to
the date of the filing of the application for registration by the registrant; and
(B) not abandoned; or
(d) when a court of competent jurisdiction orders cancellation of a registration on any
ground.
(2) Notwithstanding Subsection (1)(c)(vi), if the registrant proves the registrant is the owner
of a concurrent registration of a mark in the United States Patent and Trademark Office covering an
area including this state, the registration under this chapter may not be cancelled for that particular
area of the state.
Section 16. Section 70-3a-308 is enacted to read:
70-3a-308. Classification.
(1) (a) Except as provided in Subsection (1)(b), in administering this chapter, the division
shall for the purposes of classifying:
(i) goods, use the general classes of goods designated in 37 C.F.R. 6.1; and
(ii) services, use the general classes of services designated in 37 C.F.R. 6.1.
(b) If the United States Patent and Trademark Office does not use the classifications
described in Subsection (1)(a), to the extent practical, the classification of goods and services under
this section should conform to the classification adopted by the United States Patent and Trademark
Office.
(2) 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 if it indicates the appropriate one or more
classes of goods or services.
(3) When a single application includes goods or services that fall within multiple classes,
the division may require payment of a fee for each class.
Section 17. Section 70-3a-401 is enacted to read:
70-3a-401. Fraudulent registration.
(1) A person is civilly liable to pay all damages resulting from a filing or registration under
this chapter if:
(a) that person procures the filing or registration of any mark:
(i) for the person who procures the filing or registration; or
(ii) on behalf of another person; and
(b) the person who procures the filing or registration procures it by:
(i) knowingly making a false or fraudulent representation or declaration, orally or in writing;
or
(ii) any other fraudulent means.
(2) Damages sustained as a result of a filing or registration described in Subsection (1) may
be recovered:
(a) by or on behalf of the person injured by the filing or registration; and
(b) in any court of competent jurisdiction.
Section 18. Section 70-3a-402 is enacted to read:
70-3a-402. Infringement.
(1) Subject to Section 70-3a-104 and Subsection (2), any person is liable in a civil action
brought by the registrant for any and all of the remedies provided in Section 70-3a-404 , if that
person:
(a) uses a reproduction, counterfeit, copy, or colorable imitation of a mark registered under
this chapter:
(i) without the consent of the registrant; and
(ii) in connection with the sale, distribution, offering for sale, or advertising of any goods
or services on or in connection with which that use is likely to cause confusion, mistake, or to
deceive as to the source of origin, nature, or quality of those goods or services; or
(b) reproduces, counterfeits, copies, or colorably imitates any mark and applies 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 this state of goods or services.
(2) Under Subsection (1)(b), the registrant is not entitled to recover profits or damages unless
the act described in Subsection (1)(b) has been committed with the intent:
(a) to cause confusion or mistake; or
(b) to deceive.
Section 19. Section 70-3a-403 is enacted to read:
70-3a-403. Injury to business reputation -- Dilution.
(1) Subject to the principles of equity and upon the terms the court considers reasonable, the
owner of a mark that is famous in this state is entitled to:
(a) an injunction against another person's commercial use of a mark, if the use:
(i) begins after the mark has become famous; and
(ii) causes dilution of the distinctive quality of the mark; and
(b) obtain other relief as is provided in this section.
(2) To determine if a mark is famous, a court may consider factors including:
(a) the degree of inherent or acquired distinctiveness of the mark in this state;
(b) the duration and extent of use of the mark in connection with the goods and services with
which the mark is used;
(c) the duration and extent of advertising and publicity of the mark in this state;
(d) the geographical extent of the trading area in which the mark is used;
(e) the channels of trade for the goods or services with which the mark is used;
(f) the degree of recognition of the mark in the trading areas and channels of trade in this
state that are used by:
(i) the mark's owner; and
(ii) the person against whom the injunction is sought;
(g) the nature and extent of use of the same or similar mark by third parties; and
(h) whether the mark is the subject of:
(i) a state registration in this state; or
(ii) a federal registration:
(A) under the Act of March 3, 1881, c. 138, 21 Stat. 502;
(B) under the Act of February 20, 1905, c. 592, 33 Stat. 724; or
(C) on the principal register.
(3) 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:
(a) trade on the owner's reputation; or
(b) cause dilution of the famous mark.
(4) If willful intent is proven under Subsection (3)(a) or (b), in addition to injunctive relief,
the owner is entitled to the remedies set forth in Section 70-3a-404 , subject to:
(a) the discretion of the court; and
(b) the principles of equity.
(5) The following are not actionable under this section:
(a) 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;
(b) noncommercial use of the mark; and
(c) all forms of news reporting and news commentary.
Section 20. Section 70-3a-404 is enacted to read:
70-3a-404. Remedies.
(1) (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 of the mark.
(b) A court of competent jurisdiction may grant injunctions to restrain the manufacture, use,
display, or sale as may be considered by the court just and reasonable.
(2) A court may:
(a) require the defendants to pay the owner:
(i) all profits derived from the wrongful manufacture, use, display, or sale of a registered
mark; or
(ii) all damages suffered because of the wrongful manufacture, use, display, or sale of a
registered mark;
(b) order that any counterfeits or imitations of a registered mark in the possession or under
the control of any defendant in an action be delivered to the following to be destroyed:
(i) an officer of the court; or
(ii) the complainant; or
(c) take a combination of the actions described in Subsections (2)(a) and (b).
(3) A court may enter judgment for the prevailing party:
(a) in an action where the court finds:
(i) the other party committed the wrongful act:
(A) with knowledge;
(B) in bad faith; or
(ii) as according to the circumstances of the case; and
(b) in an amount not to exceed:
(i) three times the profits and damages of the prevailing party; and
(ii) the reasonable attorneys fees of the prevailing party.
(4) The enumeration of any right or remedy in this section does not affect a registrant's right
to prosecute under any penal law of this state.
Section 21. Section 70-3a-405 is enacted to read:
70-3a-405. Forum for actions regarding registration -- Service on out-of-state
registrants.
(1) (a) An action to require the cancellation of a mark registered under this chapter shall be
brought in a district court of this state.
(b) The division may not be made a party to an action filed under Subsection (1)(a), except
that the division may intervene in an action filed under Subsection (1)(a).
(2) In any action brought against a nonresident registrant, service may be effected upon the
nonresident registrant in accordance with the procedures established for service upon nonresident
corporations and business entities under Section 16-10a-1511 .
Section 22. Repealer.
This act repeals:
Section 70-3-1, Definitions.
Section 70-3-2, When trademark or service mark not to be registered.
Section 70-3-3, Application for registration of trademark or service mark -- Contents
-- Fee.
Section 70-3-4, Certification of registration -- Issuance -- Contents.
Section 70-3-5, Certificate of registration or copy -- Admissibility as evidence.
Section 70-3-6, Term of registration -- Renewal -- Renewal fee -- Notification of
necessity of renewal.
Section 70-3-7, Assignment -- Recording -- Fee -- Effect of recording.
Section 70-3-8, Accepting or requiring security for return of container bearing
trademark or service mark.
Section 70-3-9, Public record.
Section 70-3-10, Cancellation of registration.
Section 70-3-11, Classes of goods.
Section 70-3-12, False or fraudulent representation or declaration in registration --
Liability for damages.
Section 70-3-13, Damages for unlawful use or copying.
Section 70-3-14, Injunctive relief.
Section 70-3-15, Common-law trademarks or service marks.
Section 70-3-16, Effect on trademarks or service marks now on file.
Section 70-3-17, Act not to affect pending actions.
Section 23. Application to pending litigation.
This act does not affect any action that was filed before May 6, 2002 for which a court of
competent jurisdiction has not issued a final unappealable judgment or order by May 6, 2002.
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