0001| AN ACT | 0002| RELATING TO TRADEMARKS; ENACTING THE TRADEMARK ACT; REPEALING AND | 0003| ENACTING CERTAIN SECTIONS OF THE NMSA 1978. | 0004| | 0005| BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF NEW MEXICO: | 0006| Section 1. SHORT TITLE.--This act may be cited as the "Trademark | 0007| Act". | 0008| Section 2. PURPOSE AND INTENT OF ACT.--The purpose of the | 0009| Trademark Act is to provide a system of state trademark registration | 0010| and protection substantially consistent with the federal system of | 0011| trademark registration and protection under the Trademark Act of 1946, | 0012| as amended. It is the intent that the construction given the federal | 0013| act should be examined as persuasive authority for interpreting and | 0014| construing the Trademark Act. | 0015| Section 3. DEFINITIONS.--As used in the Trademark Act: | 0016| A. "applicant" includes the person filing an application | 0017| for registration of a mark under the Trademark Act as well as the | 0018| legal representatives, successors or assigns of the person; | 0019| B. "dilution" means the lessening of the capacity of the | 0020| registrant's mark to identify and distinguish goods or services | 0021| regardless of the presence or absence of: | 0022| (1) competition between the parties; or | 0023| (2) the likelihood of confusion, mistake or | 0024| deception; | 0025| C. "mark" includes any trademark or service mark entitled | 0001| to registration under the Trademark Act whether registered or not; | 0002| D. "person" and any other word or term used to designate | 0003| the applicant or other party entitled to a benefit or privilege or | 0004| rendered liable under the provisions of the Trademark Act, includes a | 0005| juristic person as well as a natural person; "juristic person" | 0006| includes a firm, partnership, corporation, union, association or other | 0007| organization capable of suing and being sued in a court of law; | 0008| E. "registrant" includes the person to whom the | 0009| registration of a mark under the Trademark Act is issued as well as | 0010| the legal representative, successors or assigns of the person; | 0011| F. "secretary" means the secretary of state or the | 0012| secretary's designee charged with the administration of the Trademark | 0013| Act; | 0014| G. "service mark" means any word, name, symbol, device or | 0015| any combination of these used by a person to identify and distinguish | 0016| the services of one person, including a unique service, from the | 0017| services of other persons and to indicate the source of the services, | 0018| even if that source is unknown; provided, titles and character names | 0019| used by a person and other distinctive features of radio or television | 0020| programs may be registered as service marks notwithstanding that they | 0021| or the programs may advertise the goods of the sponsor; | 0022| H. "trademark" means any word, name, symbol, device or any | 0023| combination of these used by a person to identify and distinguish the | 0024| goods of the person, including a unique product, from those | 0025| manufactured or sold by others, and to indicate the source of the | 0001| goods, even if that source is unknown; | 0002| I. "trade name" means any name used by a person to identify | 0003| a business or vocation of the person; and | 0004| J. "use" means the bona fide use of a mark in the ordinary | 0005| course of trade and not made merely to reserve a right in the mark. | 0006| For the purposes of the Trademark Act, a mark is deemed to be in use: | 0007| (1) on goods when it is placed in any manner on the | 0008| goods or on the containers or the displays associated with it or on | 0009| the tags or labels affixed to them, or if the nature of the goods | 0010| makes the placement impracticable, then on documents associated with | 0011| the goods or their sale, and the goods are sold or transported in | 0012| commerce in this state; and | 0013| (2) on services when it is used or displayed in the | 0014| sale or advertising of services and the services are rendered in this | 0015| state. | 0016| Section 4. REGISTRABILITY.-- | 0017| A. A mark by which the goods or services of any applicant | 0018| for registration may be distinguished from the goods or services of | 0019| others shall not be registered if it: | 0020| (1) consists of or comprises immoral, deceptive or | 0021| scandalous matter; | 0022| (2) consists of or comprises matter that may | 0023| disparage or falsely suggest a connection with persons living or dead, | 0024| institutions, beliefs or national symbols or that may bring them into | 0025| contempt or disrepute; | 0001| (3) consists of or comprises the flag, coat of arms | 0002| or other insignia of the United States or of any state, municipality, | 0003| foreign nation or any simulation of these; | 0004| (4) consists of or comprises the name, signature or | 0005| portrait identifying a particular living individual, except by the | 0006| individual's written consent; | 0007| (5) consists of a mark that: | 0008| (a) when used on or in connection with the goods | 0009| or services of the applicant, is merely descriptive or deceptively | 0010| misdescriptive of them; | 0011| (b) when used on or in connection with the goods | 0012| or services of the applicant, is primarily geographically descriptive | 0013| or deceptively misdescriptive of them; | 0014| (c) is primarily merely a surname; provided, | 0015| however, nothing in this subsection shall prevent the registration of | 0016| a mark used by the applicant that has become distinctive of the | 0017| applicant's goods or services. The secretary may accept as evidence | 0018| that the mark has become distinctive as used on or in connection with | 0019| the applicant's goods or services, proof of continuous use of it as a | 0020| mark by the applicant in this state for the five years before the date | 0021| on which the claim of distinctiveness is made; or | 0022| (d) consists of or comprises a mark that so | 0023| resembles a mark registered in this state or a mark or trade name | 0024| previously used by another and not abandoned, as to be likely, when | 0025| used on or in connection with the goods or services of the applicant, | 0001| to cause confusion or mistake or to deceive. | 0002| B. A mark is deemed to be abandoned when either of the | 0003| following occurs: | 0004| (1) when its use has been discontinued with intent | 0005| not to resume that use. Intent not to resume may be inferred from | 0006| circumstances; nonuse for two consecutive years shall constitute prima | 0007| facie evidence of abandonment; or | 0008| (2) when any course of conduct of the owner, | 0009| including acts of omission as well as commission, causes the mark to | 0010| lose its significance as a mark. | 0011| Section 5. APPLICATION OF REGISTRATION.-- | 0012| A. Subject to the limitations set forth in the | 0013| Trademark Act, any person who uses a mark may file in the office of | 0014| the secretary on a form prescribed by the secretary an application for | 0015| registration of that mark setting forth, but not limited to, the | 0016| following information: | 0017| (1) the name and business address of the person | 0018| applying for the registration; and if a corporation, the state of | 0019| incorporation; if a partnership, the state in which the partnership is | 0020| organized and the names of the general partners, as specified by the | 0021| secretary; | 0022| (2) the goods or services on or in connection with | 0023| which the mark is used and the mode or manner in which the mark is | 0024| used on or in connection with the goods or services and the class in | 0025| which the goods or services fall; | 0001| (3) the date when the mark was first used anywhere | 0002| and the date when it was first used in this state by the applicant or | 0003| a predecessor in interest; | 0004| (4) a written description of the mark; and | 0005| (5) a statement that the applicant is the owner of | 0006| the mark, that the mark is in use and that, to the knowledge of the | 0007| person verifying the application, no other person has registered, | 0008| either federally or in this state, or has the right to use the mark | 0009| either in the identical form of it or in the near resemblance thereto | 0010| as to be likely, when applied to the goods or services of the other | 0011| person, to cause confusion, mistake or to deceive. | 0012| B. The secretary may also require a statement as to whether | 0013| an application to register the mark or portions of it or a composite | 0014| of it, has been filed by the applicant or a predecessor in interest in | 0015| the United States patent and trademark office; and, if so, the | 0016| applicant shall provide full particulars with respect to it including | 0017| the filing date, serial number of each application, its status and, if | 0018| any application was finally refused registration or has otherwise not | 0019| resulted in a registration, the reason for the refusal or for not | 0020| being registered. | 0021| C. The secretary may also require that a drawing of the | 0022| mark or three specimens showing the mark as it is actually used | 0023| accompany the application and that it complies with the requirements | 0024| specified by the secretary. | 0025| D. The application shall be signed and verified by oath, | 0001| affirmation or declaration subject to perjury laws by the applicant or | 0002| by a member of the firm or an officer of the corporation or | 0003| association applying for registration. | 0004| E. The application shall be accompanied by a fee of twenty- | 0005| five dollars ($25.00) for each application. | 0006| Section 6. FILING OF APPLICATION.-- | 0007| A. Upon the filing of an application for registration and | 0008| payment of the application fee, the secretary may cause the | 0009| application to be examined for conformity with the Trademark Act. | 0010| B. The applicant shall provide any additional pertinent | 0011| information requested by the secretary, including a description of a | 0012| design mark and may make, or authorize the secretary in writing to | 0013| make, any reasonable amendments to the application as may be requested | 0014| by the secretary or deemed by the applicant to be advisable to respond | 0015| to any objection or rejection of the application. | 0016| C. The secretary may require the applicant to disclaim an | 0017| unregistrable component of a mark that would otherwise be registrable, | 0018| and an applicant may voluntarily disclaim a component of a mark sought | 0019| to be registered. No disclaimer shall prejudice or affect the | 0020| applicant's or registrant's rights then existing or thereafter arising | 0021| in the disclaimed matter or the applicant's or registrant's rights of | 0022| registration on another application if the disclaimed matter is or | 0023| becomes distinctive of the applicant's or registrant's goods or | 0024| services. | 0025| D. The secretary may amend the application upon the | 0001| applicant's written agreement, or the secretary may require a new | 0002| application to be submitted. | 0003| E. If the applicant is found not to be entitled to | 0004| registration, the secretary shall advise the applicant of the reasons | 0005| for non-registration. The applicant shall have thirty days from the | 0006| date of notification of non-registration from the secretary in which | 0007| to reply or to amend the application for reexamination. This | 0008| procedure may be repeated until the secretary makes a final refusal of | 0009| registration of the mark or the applicant fails to reply or amend the | 0010| application within the period specified by the secretary, in which | 0011| case the application shall be deemed to have been abandoned. | 0012| F. The secretary shall grant priority to the applications | 0013| in order of filing. In the case of any application rejected because | 0014| of a prior-filed application of the same or confusingly similar mark | 0015| for the same or related goods or services, the applicant may bring an | 0016| action for cancellation of the registration on grounds of prior or | 0017| superior rights to the mark as provided in Section 11 of the Trademark | 0018| Act. | 0019| Section 7. CERTIFICATE OF REGISTRATION.-- | 0020| A. Upon compliance by the applicant with the requirements | 0021| of the Trademark Act, the secretary shall issue and deliver a | 0022| certificate of registration to the applicant. The certificate of | 0023| registration shall be issued under the signature of the secretary and | 0024| the seal of the state, and it shall show: | 0025| (1) the name and business address; | 0001| (2) if a corporation, limited liability company or | 0002| partnership, the state of incorporation, or if a partnership, the | 0003| state in which the partnership is organized; | 0004| (3) the date claimed for the first use of the mark | 0005| anywhere; | 0006| (4) the date claimed for the first use of the mark in | 0007| New Mexico; | 0008| (5) the class and description of goods or services on | 0009| or in connection with which the mark is used; and | 0010| (6) the registration date and the term of | 0011| registration. | 0012| B. A certificate of registration issued by the secretary or | 0013| a copy of the certificate of registration duly certified by the | 0014| secretary shall be admissible in evidence as competent and sufficient | 0015| proof of the registration of the mark in any actions or judicial | 0016| proceedings in this state. | 0017| Section 8. DURATION AND RENEWAL.-- | 0018| A. A registration of a mark is effective for ten years from | 0019| the date of registration. An application for renewal shall be filed | 0020| within six months prior to its expiration in the manner required by | 0021| the secretary. The renewed registration shall be effective for ten | 0022| years from the date of expiration of the original registration. The | 0023| application for renewal shall be accompanied by the renewal fee. A | 0024| registration of a mark may be renewed for successive periods of ten | 0025| years as provided in this section. | 0001| B. All applications for renewal, whether of registrations | 0002| made under the Trademark Act or of registrations made under any act | 0003| prior to the effective date of that act, shall include a verified | 0004| statement that the mark has been and is still in use and include a | 0005| specimen showing actual use of the mark on or in connection with the | 0006| goods or services. | 0007| Section 9. ASSIGNMENTS--CHANGES OF NAME AND OTHER INSTRUMENTS.-- | 0008| A. A mark and its representation shall be assignable with | 0009| the good will of the business in which the mark is used, or with that | 0010| part of the good will of the business connected with the use of and | 0011| symbolized by the mark. The assignment shall be by instruments in | 0012| writing duly executed and may be recorded with the secretary upon | 0013| payment of a twenty-five dollar ($25.00) recording fee. The | 0014| secretary, upon recording the assignment, shall issue in the name of | 0015| the assignee a new certificate for the remainder of the term of the | 0016| registration or the last renewal of the registration. An assignment | 0017| of a registration shall be void as against any subsequent purchaser | 0018| for valuable consideration without notice unless it is recorded with | 0019| the secretary within three months after its date or unless it is | 0020| recorded prior to the subsequent purchase. | 0021| B. A registrant or applicant effecting a change of the name | 0022| of the person to whom the mark was issued or for whom an application | 0023| was filed may record a certificate of change of name of the registrant | 0024| or applicant with the secretary upon payment of the recording fee | 0025| specified in Subsection A of this section. The secretary may issue to | 0001| the owner a certificate of amendment of registration for the remainder | 0002| of the term of registration or the last renewal of that registration. | 0003| C. Other instruments that relate to a mark registered or a | 0004| pending application include licenses, security interests or mortgages, | 0005| and they may be recorded in the discretion of the secretary provided | 0006| the instrument is in writing and has been duly executed. | 0007| D. Acknowledgment shall be prima facie evidence of the | 0008| execution of an assignment or other instrument and, when recorded by | 0009| the secretary, the record shall be prima facie evidence of execution. | 0010| A photocopy of an instrument specified in this section shall be | 0011| accepted for recording if it is certified by any of the parties | 0012| thereto or their successors. | 0013| Section 10. RECORDS.--The secretary shall keep for public | 0014| examination a record of all marks registered or renewed under the | 0015| Trademark Act and a record of all documents recorded pursuant to | 0016| Section 9 of the Trademark Act. | 0017| Section 11. CANCELLATION.--The secretary shall cancel from the | 0018| register, in whole or in part: | 0019| A. a registration where the secretary shall receive a | 0020| voluntary request for cancellation from the registrant or the assignee | 0021| of record; | 0022| B. a registration granted under the Trademark Act and not | 0023| renewed in accordance with its provisions; | 0024| C. a registration of which a court of competent | 0025| jurisdiction finds that: | 0001| (1) the registered mark has been abandoned; | 0002| (2) the registrant is not the owner of the mark; | 0003| (3) the registration was granted improperly; | 0004| (4) the registration was obtained fraudulently; | 0005| (5) the mark is or has become the generic name for | 0006| the goods or services or a portion of them, for which it has been | 0007| registered; or | 0008| (6) the registered mark is so similar as to likely | 0009| cause confusion or mistake or to deceive, to a mark registered by | 0010| another person in the United States patent and trademark office prior | 0011| to the date of the filing of the application for registration by the | 0012| registrant and not abandoned; or | 0013| D. when a court of competent jurisdiction orders the | 0014| cancellation of a registration on any ground. | 0015| Section 12. CLASSIFICATION.--The secretary shall by regulation | 0016| establish a classification of goods and services for convenience of | 0017| administration of the Trademark Act but not to limit or extend the | 0018| applicant's or registrant's rights. A single application for | 0019| registration of a mark may include any or all goods upon which, or | 0020| services with which, the mark is actually being used indicating the | 0021| appropriate class or classes of goods or services. When a single | 0022| application includes goods or services that fall within multiple | 0023| classes, the secretary shall require payment of twenty-five dollars | 0024| ($25.00) for each class. As far as practical the classification of | 0025| goods and services should conform to the classification adopted by the | 0001| United States patent and trademark office. | 0002| Section 13. FRAUDULENT REGISTRATION.--A person who, for himself | 0003| on or behalf of any other person, procures the filing or registration | 0004| of any mark in the office of the secretary by knowingly making any | 0005| false or fraudulent representation or declaration, orally or in | 0006| writing or by any other fraudulent means, shall be liable to pay all | 0007| damages sustained as a consequence of that filing or registration | 0008| recoverable by or on behalf of the injured party in any court of | 0009| competent jurisdiction. | 0010| Section 14. INFRINGEMENT.--Any person shall be liable in a civil | 0011| action by the registrant for any and all of the remedies provided in | 0012| Section 16 of the Trademark Act, who shall: | 0013| A. use, without the consent of the registrant, any | 0014| reproduction, counterfeit, copy or colorable imitation of a mark | 0015| registered under the Trademark Act in connection with the sale, | 0016| distribution, offering for sale or advertising of any goods or | 0017| services on or in connection with which the use is likely to cause | 0018| confusion or mistake or to deceive as to the source of origin of the | 0019| goods or services; or | 0020| B. reproduce, counterfeit, copy or colorably imitate any | 0021| such mark and apply the reproduction, counterfeit, copy or colorable | 0022| imitation to labels, signs, prints, packages, wrappers, receptacles, | 0023| or advertisements intended to be used upon or in connection with the | 0024| sale or other distribution in this state of these goods or services; | 0025| The registrant shall not be entitled to recover profits or | 0001| damages under Subsection B of this section unless the acts have been | 0002| committed with the intent to cause confusion or mistake or to deceive. | 0003| Section 15. INJURY TO BUSINESS REPUTATION--DILUTION. | 0004| A. The owner of a mark that is famous in this state shall | 0005| be entitled, subject to the principles of equity, to an injunction | 0006| against another's use of a mark, commencing after the owner's mark | 0007| becomes famous, that causes dilution of the distinctive quality of the | 0008| owner's mark and to obtain other relief as is provided in this | 0009| section. In determining whether a mark is famous a court may consider | 0010| factors such as, but not limited to: | 0011| (1) the degree of inherent or acquired | 0012| distinctiveness of the mark in this state; | 0013| (2) the duration and extent of use of the mark in | 0014| connection with the goods and services; | 0015| (3) the duration and extent of advertising and | 0016| publicity of the mark in this state; | 0017| (4) the geographical extent of the trading area in | 0018| which the mark is used; | 0019| (5) the channels of trade for the goods or services | 0020| with which the owner's mark is used; | 0021| (6) the degree of recognition of the owner's mark in | 0022| its trading area and in the other's trading area, and in the channels | 0023| of trade in this state; and | 0024| (7) the nature and extent of use of the same or | 0025| similar mark by third parties. | 0001| B. The owner shall be entitled only to injunctive relief in | 0002| this state in an action brought under this section, unless the | 0003| subsequent user willfully intended to trade on the owner's reputation | 0004| or to cause dilution of the owner's mark. If willful intent is | 0005| proven, the owner shall also be entitled to the remedies set forth in | 0006| the Trademark Act, subject to the discretion of the court and the | 0007| principles of equity. | 0008| Section 16. REMEDIES.--Any owner of a mark registered under the | 0009| Trademark Act may proceed by suit to enjoin the manufacture, use, | 0010| display or sale of any counterfeits or imitations of that mark and any | 0011| court of competent jurisdiction may grant injunctions to restrain the | 0012| manufacture, use, display or sale as may be deemed just and reasonable | 0013| by the court. The court may require the defendants to pay to the | 0014| owner all profits derived from or all damages suffered by reason of | 0015| the wrongful manufacture, use, display or sale, or by both payment of | 0016| all profits derived and damages suffered. The court may also order | 0017| that any counterfeits or imitations in the possession or under the | 0018| control of any defendant in the case be delivered to an officer of the | 0019| court or to the complainant and that the counterfeits or imitations be | 0020| destroyed. The court, in its discretion, may enter judgment for an | 0021| amount not to exceed three times the profits and damages and for | 0022| reasonable attorney fees of the prevailing party in those cases where | 0023| the court finds the other party committed the wrongful acts with | 0024| knowledge or in bad faith or as otherwise the circumstances of the | 0025| case may warrant. The enumeration of any right or remedy in this | 0001| section shall not affect a registrant's right to prosecute under any | 0002| criminal law of this state. | 0003| Section 17. REPEAL.--Sections 57-3-1, 57-3-2 and 57-3-4 through | 0004| 57-3-12 NMSA 1978 (being Laws 1969, Chapter 142, Section 1, Laws 1959, | 0005| Chapter 345, Sections 1 and 2, Laws 1969, Chapter 142, Section 2, Laws | 0006| 1959, Chapter 345, Sections 3 and 4, Laws 1969, Chapter 142, Sections | 0007| 4 through 7 and Laws 1959, Chapter 345, Section 6, as amended) are | 0008| repealed. | 0009| Section 18. SEVERABILITY.--If any part or application of the | 0010| Trademark Act is held invalid, the remainder or its application to | 0011| other situations or persons shall not be affected. | 0012| Section 19. APPLICABILITY.--Any registration of a mark in force | 0013| upon the effective date of the Trademark Act shall continue in effect | 0014| for the remainder of its unexpired term and may be renewed under the | 0015| provisions of that act within six months prior to the expiration | 0016| specified in its registration. The provisions of the Trademark Act | 0017| shall not affect any application, suit, proceeding or appeal pending | 0018| on the effective date of the Trademark Act. | 0019| Section 20. EFFECTIVE DATE.--The effective date of the | 0020| provisions of this act is July 1, 1997. |