GENERAL ASSEMBLY OF NORTH CAROLINA
1997 SESSION
SESSION LAW 1997-476
SENATE BILL 864
AN ACT TO CONFORM THE NORTH CAROLINA TRADEMARK REGISTRATION ACT TO THE 1992 MODEL STATE TRADEMARK BILL BY MAKING VARIOUS AMENDMENTS TO THE ACT, INCLUDING REPEALING THE REQUIREMENT THAT APPLICANTS FOR A REGISTRATION INCLUDE PROOF OF USE OF THE TRADEMARK IN NORTH CAROLINA.
The General Assembly of North Carolina enacts:
Section 1. G.S. 80-1 reads as rewritten:
"§ 80-1. Definitions.
(a)
The term 'applicant' as used herein means the person filing an application for
registration of a trademark under this Article, his the person's legal
representatives, successors or assigns.
(b) The term 'mark' as used herein includes any trademark or service mark entitled to registration under this Article whether registered or not.
(c) The term 'person' as used herein means any individual, firm, partnership, corporation, association, union or other organization.
(d)
The term 'registrant' as used herein means the person to whom the registration
of a trademark under this Article is issued, his the person's legal
representatives, successors or assigns.
(d1) The term 'Secretary' as used herein means the Secretary of State or the designee of the Secretary charged with the administration of this Article.
(e) The term 'service mark' as used herein means a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.
(f) The term 'trademark' as used herein means any word, name, symbol, or device or any combination thereof adopted and used by a person to identify goods made, sold, or distributed by him and to distinguish them from goods made, sold, or distributed by others.
(g)
The term 'use' means the bona fide use of a mark in the State of North Carolina
in the ordinary course of trade, and not merely the reservation of a right to a
mark. For the purposes of this Article, a mark shall be deemed to be
'used' in this State (i) on goods when it is placed in any manner on the goods
or their containers or the displays associated therewith or on the tags or
labels affixed thereto, or if the nature of the goods makes such placement
impractical, then on documents associated with the goods, and such the
goods are currently sold or otherwise distributed in the State, and (ii) on
services when it is used or displayed in the sale or advertising of services
and the services are currently being rendered in this State, or are being
offered and are available to be rendered in this State.
(h) A mark shall be deemed to be 'abandoned' when either of the following occurs:
(1) When its use has been discontinued with intent not to resume its use. Intent not to resume may be inferred from circumstances. Nonuse for three consecutive years shall constitute prima facie evidence of abandonment.
(2) 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."
Section 2. Article 1 of Chapter 80 of the General Statutes is amended by adding a new section to read:
"§ 80-1.1. Purpose.
The purpose of this Article is to provide a system of State trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946, 15 U.S.C. § 1051, et seq., as amended. The construction given the federal act should be examined as persuasive authority for interpreting and construing this Article."
Section 3. G.S. 80-2(5) reads as rewritten:
"(5) Consists of a mark
which (i) when applied to the goods or services of the applicant, is merely
descriptive of them or merely describes one or more of the characteristics, or
is deceptively misdescriptive of them, or falsely describes the nature,
function, capacity, or characteristics of them, or (ii) when applied to 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 subdivision (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 services, proof of continuous use thereof as a mark by the
applicant in this State or elsewhere for the five years preceding the
date of the filing of the application for registration; on which the
claim of distinctiveness is made; or"
Section 4. G.S. 80-3 reads as rewritten:
"§ 80-3. Application for registration.
(a) Subject to the
limitations set forth in this Article, any person who uses a mark, or any
person who controls the nature and quality of the goods or services in
connection with which a mark is used by another, in this State may file in the
office of the Secretary of State in a format to be prescribed by the Secretary
of State, 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 such registration; and, if a
corporation, the state of incorporation. If the application for
registration relates to a mark used in connection with goods, the applicant
shall list either the address of the applicant's principal place of business in
North Carolina or a place of distribution and usage of such the goods
in this State. If the application for registration relates to a mark used
in connection with services, the applicant shall list a physical location at
which the services are being rendered or offered in this State;
(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) The date when the mark
was first used anywhere and the date when it was first used in this State by
the applicant, his the applicant's predecessor in business or by
another under such the control of the applicant; and
(4) A statement that the
applicant is the owner of the mark mark, that the mark is in use,
and that to the best of his the knowledge of the person
verifying the application, no other person has registered in this State,
orexcept as identified by applicant has the right to use such the
mark in this State either in the identical form thereof or in such near
resemblance thereto as to be likely likely, when applied to the goods
or services of the other person, to cause confusion, or to cause mistake,
or to deceive.
(b) The application shall be signed and verified by the applicant, by a partner, by a member of the firm, or an officer of the corporation or association applying for registration. In states in which a notary is not required by law to obtain a notary's stamp or seal, an original certificate of authority of the notary issued by the appropriate State agency shall be submitted with the application. If the application is signed by a person acting pursuant to a power of attorney from the applicant, an original power of attorney or a certified copy of the power of attorney shall accompany the application.
The application shall be accompanied by three specimens of
the mark as currently used, and proof of use or distribution in this State.
The application for registration shall be accompanied used
and by a filing fee of fifty dollars ($50.00), payable to the Secretary
of State. Secretary.
(c) The Secretary may require a statement as to whether an application to register the mark, or portions or a component of the mark, 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 any relevant information required by the Secretary, including the filing date and serial number of the application and the status of the application. If any application was finally refused registration or has otherwise not resulted in a registration, the Secretary may require the applicant to provide in the statement the reason the application was not registered. The Secretary may also require that a drawing of the mark accompany the application in a form specified by the Secretary."
Section 5. Article 1 of Chapter 80 of the General Statutes is amended by adding a new section to read:
"§ 80-3.1. Examination of application.
(a) Upon filing an application for registration and payment of the application fee, the Secretary may cause the application to be examined for conformity with this Article.
(b) The applicant shall provide any additional relevant information requested by the Secretary, including a description of a design mark, and may make, or authorize the Secretary to make, any amendments to the application reasonably requested by the Secretary or deemed by the applicant to be advisable to respond to a rejection or objection.
(c) The Secretary may require the applicant to disclaim an unregisterable component of a mark otherwise registrable, and an applicant may voluntarily disclaim a component of a mark requested 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 is distinctive of the applicant's or registrant's goods or services.
(d) The Secretary may (i) amend the application submitted by the applicant, if the applicant consents, or (ii) require a new application be submitted.
(e) If the Secretary finds that the applicant is not entitled to registration, the Secretary shall advise the applicant of the reasons the applicant is not entitled to registration. The applicant shall have a reasonable period of time, specified by the Secretary, in which to reply or to amend the application. If the applicant replies and amends the application, the Secretary shall reexamine the application. This procedure may be repeated until (i) the Secretary finally refuses registration of the mark, or (ii) the applicant fails to reply or to amend the application within the specified period. If the applicant fails to reply or to amend the application, the application shall be deemed to have been abandoned.
(f) If the Secretary finally refuses registration of the mark, the applicant may seek a writ of mandamus to compel registration. The writ may be granted, without costs to the Secretary, on proof that all the statements in the application are true and that the mark is entitled to registration.
(g) When the Secretary receives more than one application seeking registration of the same or confusingly similar marks for the same or related goods or services and processes those applications concurrently, the Secretary shall grant priority to the applications in order of filing. If a previously filed application is granted a registration, any other application shall then be rejected. A rejected applicant may bring an action for cancellation of the registration on grounds of prior or superior rights to the mark, in accordance with the provisions of this Article."
Section 6. G.S. 80-4 reads as rewritten:
"§ 80-4. Certificate of registration.
Upon compliance by the applicant with the requirements of
this Article, the Secretary of State 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 of State and the
seal of the State, and it shall show the name and business address and, if a
corporation, the state of incorporation, 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 this State, the class of goods or
services and a description of the goods or services on which the mark is used,
a reproduction of the mark, the registration date, the registration number and
the term of the registration.
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."
Section 7. G.S. 80-5 reads as rewritten:
"§ 80-5. Duration and renewal.
Registration of a mark hereunder shall be effective for a
term of 10 years from the date of registration and shall be renewable for
successive terms of 10 years upon application filed within six months prior to the
expiration of any term. A renewal fee of thirty-five dollars ($35.00), payable
to the Secretary of State, Secretary, shall accompany the
application for renewal of the registration. Within six months following
the expiration of a term of five years from the date of registration, or the
last renewal of registration of the mark, the applicant shall submit a specimen
showing evidence of current use of the mark and a signed statement verifying
the use of such mark on a form to be furnished by the Secretary of State.
Use of the form furnished by the Secretary of State is mandatory. Failure
to submit this verification and specimen showing evidence of current use shall
be grounds for cancellation of the registration of the mark by the Secretary of
State.
The Secretary of State shall notify registrants of marks hereunder of the necessity of renewal within the year next preceding the expiration of the 10 years from the date of registration, by writing to the last known address of the registrants.
The Secretary of State shall notify registrants of marks hereunder of the necessity of submitting evidence of current use of the mark after five years from the date of registration or of the last renewal of registration of the mark, by writing to the last known address of the registrants within the year preceding the due date for such submission.
Registration of marks obtained applied for under
previous acts shall be continued in force for the full 10-year term which is
in effect October 1, 1991, without the necessity of submitting evidence of
current use of the mark during such the term.
All applications for renewals under this Article, whether of
registrations made under this Article or of registrations affected effected
under any prior act, shall be filed with the Secretary of State in a
format prescribed by the Secretary of State specifying the information
called for by G.S. 80-3 and shall include a statement that the mark is still in
use in this State, setting forth those goods or services recited in the
registration in connection with which the mark is still in use. The
registration shall be renewed only as to such the goods and
services."
Section 8. G.S. 80-6 reads as rewritten:
"§ 80-6. Assignment.
(a)
Any mark and its registration hereunder shall be assignable with the goodwill
of the business in which the mark is used, or with that part of the goodwill 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 of State upon the payment of a fee of twenty-five dollars
($25.00), payable to the Secretary of State 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 Article shall be void as against any
subsequent purchaser for valuable consideration without notice, unless it is
recorded with the Secretary of State within three months after the date
thereof or prior to such subsequent purchase.
(b) Any 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 payment of the recording fee required under G.S. 80-7. The Secretary may issue a certificate of registration of an assigned application in the name of the assignee. The Secretary may issue in the name of the assignee a new certificate for the remainder of the term of the registration or for the last renewal of the registration.
(c) Other instruments that relate to a mark registered or application pending pursuant to this Article, including licenses, security interests, and mortgages, may be recorded in the discretion of the Secretary, upon payment of the recording fee required under G.S. 80-7. Instruments authorized under this subsection shall be in writing and duly executed.
(d) Acknowledgment 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 referenced in subsection (a), (b), or (c) of this section shall be accepted for recording if it is certified by any party to the instrument, or the party's successor, to be a true and correct copy of the original."
Section 9. G.S. 80-7 reads as rewritten:
"§ 80-7. Records.
The Secretary of State shall keep for public
examination all assignments recorded under G.S. 80-6 and a record of all marks
registered or renewed under this Article. The Secretary of State shall
collect the following fees for copying, comparing, and certifying a copy of any
filed document relating to a trademark or service mark:
(1) Five dollars ($5.00) for the certificate, and
(2) One dollar ($1.00) per page for copying or comparing a copy to the original.
The Secretary of State shall collect a recording fee
of ten dollars ($10.00) for recording name changes of corporate registrants and
for recording transfers of the registration of any mark by merger or
consolidation if the articles of merger or consolidation are records not on
file in the Corporate Division of the Department of the Secretary of
State."
Section 10. G.S. 80-8 reads as rewritten:
"§ 80-8. Cancellation.
The Secretary of State shall cancel from the register:
register, in whole or in part:
(1) Repealed by Session Laws 1991, c. 626, s. 8.
(2) Any registration
concerning which the Secretary of State shall receive a voluntary
request for cancellation thereof from the registrant or the assignee of record;
record.
(3) All registrations
granted under this Article and not renewed in accordance with the provisions hereof;
hereof.
(4) Any registration
concerning which a court of competent jurisdiction shall find find:
a. That the registered mark has been abandoned or has become incapable of serving as a mark;
b. That the registrant is not the owner of the mark;
c. That the registration was granted improperly;
d. That the registration was obtained fraudulently;
e. That the registration is for a mark that is or has become the generic name for the goods or services for which it has been registered or for a portion of the goods or services for which it has been registered;
f. That the registration was obtained by means of materially false statements in the application for registration; or
g. That the registration is so similar to another mark used in the State as to be likely to cause confusion or mistake or to deceive if (i) the other mark was registered by another person in the United States Patent and Trademark Office prior to the date of the applicant's first use of the mark that is the subject of the application for registration, and (ii) the other mark has not been abandoned. However, if the registrant proves 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 entire State, the registration shall not be cancelled.
(5) Any registration when
a court of competent jurisdiction shall order cancellation thereof; thereof.
(6) Any
registration for which compliance with the five-year evidence of use
requirement of G.S. 80-5 has not been effected; or
(7) Any
registration which was obtained by means of false statements in the application
for registration."
Section 11. G.S. 80-9 reads as rewritten:
"§ 80-9. Classification.
The following general classes of goods and services are
established The Secretary shall establish a classification of goods and
services for convenience of administration of this Article, 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 for which, the mark is actually being used comprised in a single
class, but in no event shall a single application include goods or services
upon or for which the mark is being used which fall within different classes of
goods or services.indicating the appropriate class or classes of goods
or services. When a single application includes goods or services that
fall within multiple classes, the Secretary may require payment of a fee for
each class. The Secretary of State shall have the right to may
amend the classes herein established to conform the same them to
the classification established for the United States Patent and Trademark Office
as from time to time amended.
The said classes are as follows:
(a) Goods. --
1. Raw
or partly prepared materials.
2. Receptacles.
3. Baggage,
animal equipments, portfolios, and pocketbooks.
4. Abrasives
and polishing materials.
5. Adhesives.
6. Chemicals
and chemical compositions.
7. Cordage.
8. Smokers'
articles, not including tobacco products.
9. Explosives,
firearms, equipments, and projectiles.
10. Fertilizers.
11. Inks and
inking materials.
12. Construction
materials.
13. Hardware and
plumbing and steam-fitting supplies.
14. Metals and
metal castings and forgings.
15. Oils and
greases.
16. Protective
and decorative coatings.
17. Tobacco
products.
18. Medicines
and pharmaceutical preparations.
19. Vehicles.
20. Linoleum and
oiled cloth.
21. Electrical
apparatus, machines, computer hardware, video tapes, and supplies.
22. Games, toys,
and sporting goods.
23. Cutlery,
machinery, and tools, and parts thereof.
24. Laundry
appliances and machines.
25. Locks and
safes.
26. Measuring
and scientific appliances and computer software.
27. Horological
instruments.
28. Jewelry and
precious-metal ware.
29. Brooms,
brushes, and dusters.
30. Crockery,
earthenware, and porcelain.
31. Filters and
refrigerators.
32. Furniture
and upholstery.
33. Glassware.
34. Heating,
lighting, and ventilating apparatus.
35. Belting,
hose, machinery packing, and nonmetallic tires.
36. Musical
instruments and supplies.
37. Paper and
stationery.
38. Prints and
publications.
39. Clothing.
40. Fancy goods,
furnishings, and notions.
41. Canes,
parasols, and umbrellas.
42. Knitted,
netted and textile fabrics, and substitutes therefor.
43. Thread and
yarn.
44. Dental,
medical, and surgical appliances.
45. Soft drinks
and carbonated waters.
46. Foods and
ingredients of foods.
47. Wines.
48. Malt
beverages and liquors.
49. Distilled
alcoholic liquors.
50. Merchandise
not otherwise classified.
51. Cosmetics
and toilet preparations.
52. Detergents
and soaps.
(b) Services. --
100. Miscellaneous.
101. Advertising and business.
102. Insurance and financial.
103. Construction and repair.
104. Communications.
105. Transportation and storage.
106. Material treatment.
107. Education and entertainment."
Section 12. G.S. 80-10 reads as rewritten:
"§ 80-10. Fraudulent registration.
Any 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 of State under the provisions hereof, by knowingly making any
false or fraudulent representation or declaration, verbally or in writing, or
by any other fraudulent means, shall be liable to pay all damages sustained in
consequence of such filing or registration, to be recovered by or on
behalf of the party injured thereby in any court of competent
jurisdiction."
Section 13. This act takes precedence over all statutes that are inconsistent with this act or that contradict this act, effective October 1, 1997. The Secretary of State shall advise the General Statutes Commission of any statutes that should be amended or repealed to conform to this act.
Section 14. This act becomes effective October 1, 1997, and applies to acts occurring on or after that date. This act shall not affect any suit, proceeding, or appeal pending on October 1, 1997.
In the General Assembly read three times and ratified this the 26th day of August, 1997.
s/ Dennis A. Wicker
President of the Senate
s/ Harold J. Brubaker
Speaker of the House of Representatives
s/ James B. Hunt, Jr.
Governor
Approved 2:17 p.m. this 4th day of September, 1997