HB 7107

CS

CHAMBER ACTION

1	The Transportation & Economic Development Appropriations
2	Committee recommends the following:
3
4	Council/Committee Substitute
5	Remove the entire bill and insert:
6	A bill to be entitled
7	An act relating to trademarks; creating s. 495.001, F.S.;
8	providing a short title; amending s. 495.011, F.S.;
9	providing definitions; amending s. 495.021, F.S.;
10	precluding registration of certain marks; repealing s.
11	495.027, F.S., relating to reservation of a mark; amending
12	s. 495.031, F.S.; providing requirements for information
13	to be contained in an application for registration of a
14	mark; authorizing the Department of State to require
15	certain information in an application; requiring that the
16	application be signed and verified by any of certain
17	persons; requiring that the application be accompanied by
18	three specimens or facsimiles showing the mark; requiring
19	that the application be accompanied by a fee; creating s.
20	495.035, F.S.; providing filing guidelines for
21	applications; providing for disclaimers of unregistrable
22	components; providing for amendment and judicial review;
23	providing for priority of registrations; amending s.
24	495.041, F.S.; providing that first use shall inure to the
25	benefit of the registrant or applicant under certain
26	circumstances; amending s. 495.061, F.S.; providing for
27	the issuance of a certificate of registration by the
28	department; removing a provision relating to reservation
29	of a mark; amending s. 495.071, F.S.; providing guidelines
30	for the renewal of marks; revising duration of
31	effectiveness of a registration; amending s. 495.081,
32	F.S.; providing for the assignability of marks;
33	authorizing a photocopy of an assignment to be acceptable
34	for recording; providing for change of name certificates
35	for registrants; authorizing recordation of certain
36	instruments; providing acknowledgment of recording as
37	prima facie evidence of the execution of an assignment or
38	other instrument; specifying requirements for creation and
39	perfection of security interests in marks; amending s.
40	495.091, F.S.; requiring the department to record all
41	marks registered with the state; amending s. 495.101,
42	F.S.; requiring the department to cancel certain marks;
43	amending s. 495.111, F.S., which establishes a
44	classification of goods and services; providing that a
45	single application for registration of a mark may include
46	any or all goods upon which, or services with which, the
47	mark is actually being used comprised in one or more of
48	the classes listed; amending s. 495.131, F.S.; revising
49	infringement provisions to include an element of lack of
50	consent by the registrant; conforming language; amending
51	s. 495.141, F.S.; providing additional remedies for the
52	unauthorized use of a mark; creating s. 495.145, F.S.;
53	providing a forum for actions regarding registration;
54	providing for service of process on nonresident
55	registrants; amending s. 495.151, F.S.; providing for an
56	injunction in cases of dilution of a famous mark;
57	providing factors to be considered in determining that a
58	mark is famous; providing damages in certain circumstances
59	of dilution; amending s. 495.161, F.S.; deleting language
60	relating to the diminishing of certain common law rights;
61	amending s. 495.171, F.S.; providing effective date of
62	changes to ch. 495, F.S., as amended by the act; providing
63	for repeal of conflicting acts; providing application to
64	pending actions; amending s. 495.181, F.S.; providing
65	construction and legislative intent; creating s. 495.191,
66	F.S.; providing certain fees; repealing s. 506.06, F.S.,
67	relating to unlawful to counterfeit trademark, to conform;
68	repealing s. 506.07, F.S., relating to filing of trademark
69	or other form of advertisement for record with Department
70	of State, to conform; repealing s. 506.08, F.S., relating
71	to fee for filing, to conform; repealing s. 506.09, F.S.,
72	relating to civil remedies, to conform; repealing s.
73	506.11, F.S., relating to unlawful use of trademark, to
74	conform; repealing s. 506.12, F.S., relating to procuring
75	the filing of trademark or other form of advertisement by
76	fraudulent representations, to conform; repealing s.
77	506.13, F.S., relating to using the name or seal of
78	another, to conform; providing an effective date.
79
80	Be It Enacted by the Legislature of the State of Florida:
81
82	Section 1.  Section 495.001, Florida Statutes, is created
83	to read:
84	495.001  Short title.--This chapter may be cited as the
85	"Registration and Protection of Trademarks Act."
86	Section 2.  Section 495.011, Florida Statutes, is amended
87	to read:
88	(Substantial rewording of section. See
89	s. 495.011, F.S., for present text.)
90	495.011  Definitions.--As used in this chapter:
91	(1)  "Abandoned" applies to a mark when either of the
92	following occurs:
93	(a)  When its use has been discontinued with intent not to
94	resume such use. Intent not to resume use may be inferred from
95	circumstances. Nonuse for 3 consecutive years shall constitute
96	prima facie evidence of abandonment.
97	(b)  When any course of conduct of the owner, including
98	acts of omission or commission, causes the mark to lose its
99	significance as a mark.
100	(2)  "Applicant" means the person filing an application for
101	registration of a mark under this chapter and the legal
102	representatives, successors, or assigns of such person.
103	(3)  "Certification mark" means any word, name, symbol, or
104	device, or any combination thereof, used by a person other than
105	the owner of the mark to certify regional or other origin,
106	material, mode of manufacture, quality, accuracy, or other
107	characteristics of such person's goods or services or that the
108	work or labor on the goods or services was performed by members
109	of a union or other organization.
110	(4)  "Collective mark" means a trademark or service mark
111	used by the members of a cooperative, an association, or other
112	collective group or organization, and includes marks used to
113	indicate membership in a union, an association, or other
114	organization.
115	(5)  "Department" means the Florida Department of State or
116	its designee charged with the administration of this chapter.
117	(6)  "Dilution" means the lessening of the capacity of a
118	mark to identify and distinguish goods or services, regardless
119	of the presence or absence of:
120	(a)  Competition between the owner of the mark and other
121	parties.
122	(b)  Likelihood of confusion, mistake, or deception.
123	(7)  "Mark" includes any trademark, service mark,
124	certification mark, or collective mark entitled to registration
125	under this chapter, whether or not registered.
126	(8)  "Person," and any other word or term used to designate
127	the applicant or other party entitled to a benefit or privilege
128	or rendered liable under the provisions of this chapter, means a
129	juristic person as well as a natural person. "Juristic person"
130	includes a firm, partnership, corporation, union, association,
131	or other organization capable of suing and being sued in a court
132	of law.
133	(9)  "Registrant" means the person to whom the registration
134	of a mark under this chapter is issued and the legal
135	representatives, successors, or assigns of such person.
136	(10)  "Related company" means any person whose use of a
137	mark is controlled by the owner of the mark with respect to the
138	nature and quality of the goods or services on or in connection
139	with which the mark is used.
140	(11)  "Service mark" means any word, name, symbol, or
141	device, or any combination thereof, used by a person to identify
142	and distinguish the services of such person, including a unique
143	service, from the services of others, and to indicate the source
144	of the services, even if that source is unknown. Titles,
145	character names, and other distinctive features of radio or
146	television programs may be registered as service marks
147	notwithstanding that the person or the programs may advertise
148	the goods of the sponsor.
149	(12)  "Trade name" means any name used by a person to
150	identify a business or vocation of such person.
151	(13)  "Trademark" means any word, name, symbol, or device,
152	or any combination thereof, used by a person to identify and
153	distinguish the goods of such person, including a unique
154	product, from those manufactured or sold by others, and to
155	indicate the source of the goods, even if the source is unknown.
156	(14)  "Use" means the bona fide use of a mark in the
157	ordinary course of trade and not used merely for the purpose of
158	reserving a right in a mark. For purposes of this chapter, a
159	mark is deemed to be in use:
160	(a)  On goods when:
161	1.  The mark is placed in any manner on the goods, their
162	containers or the displays associated therewith, or on the tags
163	or labels affixed thereto, or, if the nature of the goods makes
164	such placement impracticable, on documents associated with the
165	goods or their sale; and
166	2.  The goods are sold or transported in this state.
167	(b)  On services when the mark is used or displayed in the
168	sale or advertising of services and the services are rendered in
169	this state.
170	Section 3.  Subsection (1) of section 495.021, Florida
171	Statutes, is amended to read:
172	495.021  Registrability.--
173	(1)  A mark by which the goods or services of any applicant
174	for registration may be distinguished from the goods or services
175	of others shall not be registered if it:
176	(a)  Consists of or, comprises or includes immoral,
177	deceptive, or scandalous matter; or
178	(b)  Consists of or, comprises or includes matter which may
179	disparage or falsely suggest a connection with persons, living
180	or dead, institutions, beliefs, or national symbols, or bring
181	them into contempt, or disrepute; or
182	(c)  Consists of or , comprises or includes the flag or
183	coat of arms or other insignia of the United States, or of any
184	state or municipality, or of any foreign nation, or any
185	simulation thereof; or
186	(d)  Consists of or , comprises a or includes the name,
187	signature, or portrait identifying a particular of any living
188	individual, except by with her or his written consent, or the
189	name, signature, or portrait of a deceased President of the
190	United States during the lifetime of his widow or her widower,
191	if any, except by the written consent of the widow or widower;
192	or
193	(e)  Consists of a mark which:
194	1.  When used on or in connection with applied to the goods
195	or services of the applicant, is merely descriptive or
196	deceptively misdescriptive of them;,
197	2.  When used on or in connection with applied to the goods
198	or services of the applicant, is primarily geographically
199	descriptive or deceptively misdescriptive of them; or their
200	source or origin, or
201	3.  When used on or in connection with the goods or
202	services of the applicant, is primarily geographically
203	deceptively misdescriptive of them;
204	4.3.  Is primarily merely a surname; or,
205	5.  Comprises any matter that, as a whole, is functional.
206
207	Except as expressly excluded in subparagraphs 3. and 5.,
208	provided, however, that nothing in this paragraph shall prevent
209	the registration of a mark used in this state by the applicant
210	which has become distinctive of the applicant's goods or
211	services in this state or elsewhere. The department of State may
212	accept as prima facie evidence that the mark has become
213	distinctive, as used on or in connection with applied to the
214	applicant's goods or services, proof of substantially exclusive
215	and continuous use thereof as a mark by the applicant in this
216	state or elsewhere for the 5 years before next preceding the
217	date on which the claim of distinctiveness is made; or
218	(f)  Consists of or comprises a mark which so resembles a
219	mark registered in this state or a mark or trade name previously
220	used in this state by another and not abandoned, as to be
221	likely, when applied to the goods or services of the applicant,
222	to cause confusion or mistake or to deceive. Registration shall
223	not be denied solely on the basis of reservation or registration
224	by another of a corporate name or fictitious name that is the
225	same or similar to the mark for which registration is sought.
226	Section 4.  Section 495.027, Florida Statutes, is repealed.
227	Section 5.  Section 495.031, Florida Statutes, is amended
228	to read:
229	495.031  Application for registration.--
230	(1)  Subject to the limitations set forth in this chapter,
231	any person who adopts and uses a trademark or service mark in
232	this state may file with the department of State, in a manner
233	and on a form complying with the requirements of to be furnished
234	by the department, an application for registration of that
235	trademark or service mark setting forth, but not limited to, the
236	following information:
237	(a)  The name and business address of the person applying
238	for such registration, and, if a business entity, the place
239	corporation, the state of incorporation or organization;
240	(b)  The goods or services on or in connection with which
241	the mark is used and the mode or manner in which the mark is
242	used in connection with such goods or services and the class or
243	classes in which such goods or services fall;
244	(c)  The date when the mark was first used anywhere and the
245	date when it was first used in this state by the applicant, the
246	applicant's or her or his predecessor in interest, business or a
247	related company of the applicant or the applicant's predecessor;
248	and
249	(d)  A statement that the applicant is the owner of the
250	mark, that the mark is in use, and that, to the best of the
251	applicant's knowledge, no other person except a related company
252	has registered such mark in this state, or has the right to use
253	such mark in this state, either in the identical form thereof or
254	in such near resemblance thereto as to be likely, when applied
255	to the goods or services of such other person, to cause
256	confusion, to cause mistake, or to deceive or confuse or to be
257	mistaken therefor.
258	(2)  Every applicant for registration of a certification
259	mark in this state shall file with the department of State, in a
260	manner and on a form complying with the requirements of to be
261	furnished by the department, an application setting forth, but
262	not limited to, the following information:
263	(a)  The information required by paragraph (1)(a);
264	(b)  The date when the certification mark was first used
265	anywhere and the date when it was first used in this state under
266	the authority of the applicant;
267	(c)  The manner in which and the conditions under which the
268	certification mark is used in this state; and
269	(d)  A statement that the applicant is exercising control
270	over the use of the mark, that the applicant is not herself or
271	himself engaged in the production or marketing of the goods or
272	services to which the mark is applied, and that no person except
273	the applicant or persons authorized by the applicant, or related
274	companies thereof, has the right to use such mark in this state,
275	either in the identical form thereof or in such near resemblance
276	thereto as to be likely, when applied to the goods or services
277	of such other person, to cause confusion, to cause mistake, or
278	to deceive or confuse or to be mistaken therefor.
279	(3)  Every applicant for registration of a collective mark
280	in this state shall file with the department of State, in a
281	manner and on a form complying with the requirements of to be
282	furnished by the department, an application setting forth, but
283	not limited to, the following information:
284	(a)  The information required by paragraphs (1)(a) and (b);
285	(b)  The date when the collective mark was first used
286	anywhere and the date when it was first used in this state by
287	any member of the applicant or a related company of such member;
288	(c)  The class of persons entitled to use the mark,
289	indicating their relationship to the applicant, and the nature
290	of the applicant's control over the use of the mark; and
291	(d)  A statement that no person except the applicant or
292	members of the applicant, or related companies thereof, has the
293	right to use such mark in this state, either in the identical
294	form thereof or in such near resemblance thereto as to be
295	likely, when applied to the goods or services of such other
296	person, to cause confusion, to cause mistake, or to deceive or
297	confuse or to be mistaken therefor.
298	(4)  The department may also require that a drawing of the
299	mark, complying with the requirements of the department,
300	accompany the application.
301	(5)(4)  Every application under this section shall be
302	signed and verified by the applicant or by a member of the firm
303	or an officer or other authorized representative of the business
304	entity of the corporation, association, union or other
305	organization applying.
306	(6)(5)  Every application under this section shall be
307	accompanied by three specimens or facsimiles showing the mark as
308	actually used a specimen or facsimile of such mark in
309	triplicate.
310	(7)(6)  Every application under this section shall be
311	accompanied by a filing fee of $87.50, payable to the department
312	in accordance with s. 495.191 of State, for each class of goods
313	or services as specified in s. 495.111, in connection with which
314	the mark is used.
315	Section 6.  Section 495.035, Florida Statutes, is created
316	to read:
317	495.035  Filing of applications.--
318	(1)  Upon the receipt of an application for registration
319	and payment of the application fee, the department may cause the
320	application to be examined for conformity with this chapter.
321	(2)  The applicant shall provide any additional pertinent
322	information requested by the department, including a description
323	of a design mark, and may make, or authorize the department to
324	make, such amendments to the application as may be reasonably
325	requested by the department or deemed by applicant to be
326	advisable to respond to any rejection or objection.
327	(3)  The department may require the applicant to disclaim
328	an unregistrable component of a mark otherwise registrable, and
329	an applicant may voluntarily disclaim a component of a mark
330	sought to be registered. No disclaimer shall prejudice or affect
331	the applicant's or registrant's rights then existing or
332	thereafter arising in the disclaimed matter, or the applicant's
333	or registrant's rights of registration on another application,
334	if the disclaimed matter is or has become distinctive of the
335	applicant's or registrant's goods or services.
336	(4)  Amendments may be made by the department upon the
337	application submitted by the applicant upon the applicant's
338	agreement, or a new application may be required to be submitted.
339	Amendments to an otherwise properly filed application shall not
340	affect the application filing date for purposes of determining
341	the applicant's or registrant's filing priority rights.
342	(5)  If the applicant is found not to be entitled to
343	registration, the department shall advise the applicant of the
344	rejection and of the reasons for rejection. The applicant shall
345	have 3 months in which to reply or amend the application, in
346	which event the application shall be reexamined. This procedure
347	may be repeated until:
348	(a)  The department makes final its refusal to register the
349	mark; or
350	(b)  The applicant fails to reply or amend the application
351	within the specified period, whereupon the application shall be
352	abandoned.
353
354	For good cause shown, such as the pendency of litigation
355	involving the mark, the department may extend the period of time
356	in which to respond to the rejection or suspend examination of
357	the application.
358	(6)  If the department makes final its refusal to register
359	the mark, the applicant may seek review of such decision in
360	accordance with ss. 120.569 and 120.57.
361	(7)  In the event of multiple applications concurrently
362	being processed by the department which seek registration of the
363	same or confusingly similar marks for the same or related goods
364	or services, the department shall grant priority to the
365	applications in order of receipt. If a prior-received
366	application is granted a registration, the other application or
367	applications shall then be rejected. The applicant of a rejected
368	application may bring an action for cancellation of the
369	registration upon grounds of prior or superior rights to the
370	mark, in accordance with the provisions of s. 495.101(3).
371	Section 7.  Section 495.041, Florida Statutes, is amended
372	to read:
373	495.041  Use by related companies.--Where a mark registered
374	or unregistered is or may be used legitimately by related
375	companies, such use shall inure to the benefit of the owner of
376	the mark, and such use shall not affect the validity of such
377	mark or of its registration, provided such mark is not used in
378	such manner as to deceive the public. If first use of a mark by
379	a person is controlled by the registrant or applicant for
380	registration of a mark with respect to the nature and quality of
381	the goods or services, such first use shall inure to the benefit
382	of that registrant or applicant, as the case may be.
383	Section 8.  Section 495.061, Florida Statutes, is amended
384	to read:
385	495.061  Certificate of registration.--
386	(1)  Upon compliance by the applicant with the requirements
387	of this chapter, the department of State shall cause a
388	certificate of registration to be issued and delivered to the
389	applicant. The certificate of registration shall be issued under
390	the signature of the Secretary of State and the seal of the
391	state, and it shall show the name and business address and, if a
392	business entity corporation, the place state of incorporation or
393	organization, of the person claiming ownership of the mark in
394	this state, the date claimed for the first use of the mark
395	anywhere and the date claimed for the first use of the mark in
396	this state, the class or classes of goods or services and a
397	description of the goods or services on or in connection with on
398	which the mark is used, a reproduction of the mark, the
399	registration date and the term of the registration.
400	(2)  Any certificate of registration issued by the
401	department of State under the provisions hereof or a copy
402	thereof duly certified by the department of State shall be
403	admissible in evidence as competent and sufficient proof of the
404	registration of such mark in any action or judicial proceedings
405	in any court of this state, and shall be prima facie evidence of
406	the validity of the registration, registrant's ownership of the
407	mark, and of registrant's exclusive right to use the mark in
408	this state on or in connection with the goods or services
409	specified in the certificate, subject to any conditions and
410	limitations stated therein.
411	(3)  Contingent on the registration of a mark under this
412	chapter, the reservation of such mark based on intent to use, as
413	provided in this chapter, shall be prima facie evidence of
414	priority of ownership of such mark within this state on or in
415	connection with the goods or services specified in the
416	reservation against any other person, except for a person whose
417	mark has not been abandoned and who, prior to such reservation,
418	has used the mark within this state on or in connection with
419	such goods or services.
420	Section 9.  Section 495.071, Florida Statutes, is amended
421	to read:
422	495.071  Duration and renewal.--
423	(1)  Registration of a mark hereunder shall be effective
424	for a term of 5 10 years from the date of registration and, upon
425	application filed within 6 months prior to the expiration of
426	such term, in a manner and form complying with the requirements
427	of on a form to be furnished by the department of State, the
428	registration may be renewed for a like term beginning at the end
429	of the expiring term. Every application under this section shall
430	be accompanied by a filing fee A renewal fee of $87.50 for each
431	class of goods or services with respect to which such renewal is
432	sought, payable to the department in accordance with s. 495.191
433	of State, shall accompany the application for renewal of the
434	registration.
435	(2)  A mark registration may be renewed for successive
436	periods of 5 10 years in like manner.
437	(3)  Any registration in effect on January 1, 2007, shall
438	continue in effect for the unexpired term thereof and may be
439	renewed by filing an application for renewal with the department
440	in a manner and form complying with the requirements of the
441	department and paying the renewal fee therefor within 6 months
442	prior to the expiration of the registration. The Department of
443	State shall notify registrants of marks hereunder of the
444	necessity of renewal within the year next preceding the
445	expiration of the 10 years from the date of registration by
446	writing to the last known address of the registrants. The
447	department shall prescribe the forms on which to make the
448	required notification and the renewal called for in subsection
449	(1) and may substitute the uniform business report, pursuant to
450	s. 606.06, as a means of satisfying the requirement of this
451	part.
452	(4)  All applications for renewal renewals under this
453	chapter, whether of registrations made under this act or of
454	registrations made under any prior acts, shall include a
455	verified statement that the mark is still in use in this state,
456	and shall include a specimen showing actual use of the mark on
457	or in connection with the goods or services subject to the
458	renewal application, or shall state that its nonuse is due to
459	special circumstances which excuse such nonuse and is not due to
460	any intention to abandon the mark.
461	Section 10.  Section 495.081, Florida Statutes, is amended
462	to read:
463	495.081  Assignments; changes of name; security interests
464	Assignment.--
465	(1)  A registered mark or a mark for which an application
466	for registration has been filed Any mark and its registration
467	hereunder shall be assignable with the goodwill good will of the
468	business in which the mark is used or with that part of the
469	goodwill good will of the business connected with the use of and
470	symbolized by the mark. Assignments Assignment shall be by an
471	instrument instruments in writing duly executed and may be
472	recorded with the department of State upon the payment of the
473	applicable a fee. A photocopy of an assignment shall be accepted
474	for recording if it is certified by any of the parties thereto,
475	or their successors, to be a true and correct copy of the
476	original. Upon recording of the assignment, of $50, payable to
477	the department of State which, upon recording of the assignment,
478	shall issue in the name of the assignee a new certificate for
479	the remainder of the term of the registration or of the last
480	renewal thereof.
481	(2)  An assignment of any registration under this chapter
482	shall be void as against any subsequent purchaser for valuable
483	consideration without notice, unless such assignment is recorded
484	with the department of State within 3 months after the date of
485	the assignment or prior to the subsequent purchase thereof or at
486	any time after the expiration of such 3-month period, unless an
487	assignment given in connection with any subsequent purchase is
488	recorded with the Department of State prior to or within 10 days
489	after such assignment is recorded.
490	(3)  A registrant or applicant for registration effecting a
491	change of the name may record a certificate of change of name of
492	the registrant or applicant with the department upon the payment
493	of the recording fee payable to the department in accordance
494	with s. 495.191. In the case of a pending application for a mark
495	that becomes approved for registration, the department shall
496	issue a certificate of registration in the registrant's new
497	name. In the case of a registered mark, the department shall
498	issue a new certificate of registration in the registrant's new
499	name for the remainder of the term of the registration or last
500	renewal thereof. A person's failure to record a name change in
501	accordance with this subsection shall not affect the person's
502	substantive rights in the mark or its registration.
503	(4)  Acknowledgment shall be prima facie evidence of the
504	execution of an assignment or other instrument and, when
505	recorded by the department, the record shall be prima facie
506	evidence of execution.
507	(5)  Security interests in marks shall be created and
508	perfected in accordance with chapter 679.
509	Section 11.  Section 495.091, Florida Statutes, is amended
510	to read:
511	495.091  Records.--The department of State shall keep for
512	public examination a record of all marks registered or renewed
513	under this chapter, including all documents recorded under s.
514	495.081.
515	Section 12.  Section 495.101, Florida Statutes, is amended
516	to read:
517	495.101  Cancellation.--The department of State shall
518	cancel from the register:
519	(1)  After 1 year from the effective date of this chapter,
520	all registrations under prior laws which are more than 10 years
521	old and not renewed in accordance with this chapter.
522	(1)(2)  Any registration for concerning which the
523	department of State has received shall receive a voluntary
524	request for cancellation by the registrant, which request shall
525	be in a manner and form complying with the requirements of the
526	department thereof from the registrant.
527	(2)(3)  All registrations granted under this chapter and
528	not renewed in accordance with the provisions hereof.
529	(3)(4)  Any registration for concerning which a court of
530	competent jurisdiction finds shall find that:
531	(a)  The registered mark has been abandoned. A mark shall
532	be deemed to be "abandoned" when either of the following occurs:
533	1.  When its use has been discontinued with intent not to
534	resume such use. Intent not to resume may be inferred from
535	circumstances. Nonuse for 2 consecutive years shall be prima
536	facie evidence of abandonment.
537	2.  When any course of conduct of the owner, including acts
538	of omission as well as commission, causes the mark to become the
539	generic name for the goods or services on or in connection with
540	which it is used, or otherwise to lose its significance as a
541	mark. Purchaser motivation shall not be a test for determining
542	abandonment under this paragraph.
543	(b)  The registrant of a trademark or service mark is not
544	the owner of the mark.
545	(c)  The registration was granted improperly.
546	(d)  The registration was obtained fraudulently.
547	(e)  The mark is or has become the generic name for the
548	goods or services, or a portion thereof, for which the mark has
549	been registered.
550	(f)(e)  The registered mark is so similar, as to be likely
551	to cause confusion or mistake or to deceive, to a mark
552	registered by another person in the United States Patent and
553	Trademark Office, prior to the date of the filing of the
554	application for registration by the registrant hereunder, and
555	not abandoned; provided, however, that should the registrant
556	prove that the registrant she or he is the owner of a concurrent
557	registration of a her or his mark in the United States Patent
558	and Trademark Office covering an area including this state, the
559	registration hereunder shall not be canceled.
560	(g)(f)  In the case of a certification mark, that the
561	registrant does not control or is not able to exercise control
562	over the use of such mark; or engages in the production or
563	marketing of any goods or services to which the certification
564	mark is applied; or the registrant permits the use of the
565	certification mark for purposes other than to certify; or the
566	registrant discriminately refuses refused to certify or to
567	continue to certify the goods or services of any person who
568	maintains the standards or conditions which such mark certifies.
569	Nothing in this paragraph shall be deemed to prohibit the
570	registrant from using its certification mark in advertising or
571	promoting recognition of the certification program or of the
572	goods or services meeting the certification standards of the
573	registrant.
574	(4)(5)  When a court of competent jurisdiction shall order
575	cancellation of a registration on any ground.
576	Section 13.  Section 495.111, Florida Statutes, is amended
577	to read:
578	(Substantial rewording of section. See s. 495.111, F.S.,
579	for present text.)
580	495.111  Classification.--
581	(1)  The following general classes of goods and services,
582	conforming to the classification adopted by the United States
583	Patent and Trademark Office, are established for convenience of
584	administration of this chapter:
585	(a)  Goods:
586	1.  Class 1  Chemicals used in industry, science, and
587	photography; agriculture, horticulture, and forestry;
588	unprocessed artificial resins and, unprocessed plastics;
589	manures; fire extinguishing compositions; tempering and
590	soldering preparations; chemical substances for preserving
591	foodstuffs; tanning substances; and adhesives used in industry.
592	2.  Class 2  Paints, varnishes, lacquers; preservatives
593	against rust and against deterioration of wood; colorants;
594	mordants; raw natural resins; and metals in foil and powder form
595	for painters, decorators, printers, and artists.
596	3.  Class 3  Bleaching preparations and other substances
597	for laundry use; cleaning, polishing, scouring, and abrasive
598	preparations; soaps; perfumery, essential oils, cosmetics, and
599	hair lotions; and dentifrices.
600	4.  Class 4  Industrial oils and greases; lubricants; dust
601	absorbing, wetting, and binding compositions; fuels (including
602	motor spirit) and illuminants; and candles and wicks for
603	lighting.
604	5.  Class 5  Pharmaceuticals and veterinary preparations;
605	sanitary preparations for medical purposes; dietetic substances
606	adapted for medical use and food for babies; plasters and
607	materials for dressings; material for stopping teeth and dental
608	wax; disinfectants; preparations for destroying vermin; and
609	fungicides and herbicides.
610	6.  Class 6  Common metals and their alloys; metal building
611	materials; transportable buildings of metal; materials of metal
612	for railway tracks; nonelectric cables and wires of common
613	metal; ironmongery and small items of metal hardware; pipes and
614	tubes of metal; safes; goods of common metal not included in
615	other classes; and ores.
616	7.  Class 7  Machines and machine tools; motors and engines
617	(except for land vehicles); machine coupling and transmission
618	components (except for land vehicles); agricultural implements
619	other than hand-operated; incubators for eggs.
620	8.  Class 8  Hand tools and hand-operated implements;
621	cutlery; side arms; and razors.
622	9.  Class 9  Scientific, nautical, surveying, photographic,
623	cinematographic, optical, weighing, measuring, signaling,
624	checking (supervision), and life-saving and teaching apparatus
625	and instruments; apparatus and instruments for conducting,
626	switching, transforming, accumulating, regulating, or
627	controlling electricity; apparatus for recording, transmission,
628	or reproduction of sound or images; magnetic data carriers and
629	recording discs; automatic vending machines and mechanisms for
630	coin-operated apparatus; cash registers, calculating machines,
631	and data processing equipment and computers; and fire-
632	extinguishing apparatus.
633	10.  Class 10  Surgical, medical, dental, and veterinary
634	apparatus and instruments, artificial limbs, eyes, and teeth;
635	orthopedic articles; and suture materials.
636	11.  Class 11  Apparatus for lighting, heating, steam
637	generating, cooking, refrigerating, drying, ventilating, water
638	supply, and sanitary purposes.
639	12.  Class 12  Vehicles; apparatus for locomotion by land,
640	air, or water.
641	13.  Class 13  Firearms; ammunition and projectiles;
642	explosives; and fireworks.
643	14.  Class 14  Precious metals and their alloys and goods
644	in precious metals or coated therewith (not included in other
645	classes); jewelry and precious stones; and horological and
646	chronometric instruments.
647	15.  Class 15  Musical instruments.
648	16.  Class 16  Paper, cardboard, and goods made from these
649	materials (not included in other classes); printed matter;
650	bookbinding material; photographs; stationery; adhesives for
651	stationery or household purposes; artists' materials; paint
652	brushes; typewriters and office requisites (except furniture);
653	instructional and teaching material (except apparatus); plastic
654	materials for packaging (not included in other classes);
655	printers' type; and printing blocks.
656	17.  Class 17  Rubber, gutta-percha, gum, asbestos, mica,
657	and goods made from these materials and not included in other
658	classes; plastics in extruded form for use in manufacture;
659	packing, stopping, and insulating materials; and flexible pipes
660	not of metal.
661	18.  Class 18  Leather and imitations of leather and goods
662	made of these materials and not included in other classes;
663	animal skins and hides; trunks and traveling bags; umbrellas,
664	parasols, and walking sticks; and whips, harness, and saddlery.
665	19.  Class 19  Building materials (nonmetallic);
666	nonmetallic rigid pipes for building; asphalt, pitch, and
667	bitumen; nonmetallic transportable buildings; monuments, not of
668	metal.
669	20.  Class 20  Furniture, mirrors, and picture frames;
670	goods (not included in other classes) of wood, cork, reed, cane,
671	wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-
672	pearl, and meerschaum and substitutes for all these materials,
673	or of plastics.
674	21.  Class 21  Household or kitchen utensils and containers
675	(not of precious metal or coated therewith); combs and sponges;
676	brushes (except paint brushes); brush-making materials; articles
677	for cleaning purposes; steel wool; unworked or semiworked glass
678	(except glass used in building); and glassware, porcelain, and
679	earthenware not included in other classes.
680	22.  Class 22  Ropes, string, nets, tents, awnings,
681	tarpaulins, sails, sacks, and bags (not included in other
682	classes); padding and stuffing materials (except of rubber or
683	plastics); and raw fibrous textile materials.
684	23.  Class 23  Yarns and threads for textile use.
685	24.  Class 24  Textiles and textile goods not included in
686	other classes and bed and table covers.
687	25.  Class 25  Clothing, footwear, and  headgear.
688	26.  Class 26  Lace and embroidery, ribbons, and braid;
689	buttons, hooks and eyes, pins, and needles; and artificial
690	flowers.
691	27.  Class 27  Carpets, rugs, mats and matting, linoleum,
692	and other materials for covering existing floors; and wall
693	hangings (nontextile).
694	28.  Class 28  Games and playthings; gymnastic and sporting
695	articles not included in other classes; and decorations for
696	Christmas trees.
697	29.  Class 29  Meat, fish, poultry, and game; meat
698	extracts; preserved, dried, and cooked fruits and vegetables;
699	jellies, jams, and compotes; eggs, milk, and milk products; and
700	edible oils and fats.
701	30.  Class 30  Coffee, tea, cocoa, sugar, rice, tapioca,
702	sago, and artificial coffee; flour and preparations made from
703	cereals, bread, pastry and confectionery, and ices; honey and
704	treacle; yeast, baking powder; salt, and mustard; vinegar and
705	sauces (condiments); spices; and ice.
706	31.  Class 31  Agricultural, horticultural, and forestry
707	products and grains not included in other classes; live animals;
708	fresh fruits and vegetables; seeds, natural plants, and flowers;
709	foodstuffs for animals and malt.
710	32.  Class 32  Beers; mineral and aerated waters and other
711	nonalcoholic drinks; fruit drinks and fruit juices; and syrups
712	and other preparations for making beverages.
713	33.  Class 33  Alcoholic beverages except beers.
714	34.  Class 34  Tobacco; smokers' articles; and matches.
715	(b)  Services:
716	1.  Class 35  Advertising; business management; business
717	administration; and office functions.
718	2.  Class 36  Insurance; financial affairs; monetary
719	affairs; and real estate affairs.
720	3.  Class 37  Building construction; repair; and
721	installation services.
722	4.  Class 38  Telecommunications.
723	5.  Class 39  Transport; packaging and storage of goods;
724	and travel arrangements.
725	6.  Class 40  Treatment of materials.
726	7.  Class 41  Education; providing of training;
727	entertainment; and sporting and cultural activities.
728	8.  Class 42  Scientific and technological services and
729	research and design relating thereto; industrial analysis and
730	research services; design and development of computer hardware
731	and software; and legal services.
732	9.  Class 43  Services for providing food and drink; and
733	temporary accommodation.
734	10.  Class 44  Medical services; veterinary services;
735	hygienic and beauty care for human beings or animals; and
736	agriculture, horticulture, and forestry services.
737	11.  Class 45  Personal and social services rendered by
738	others to meet the needs of individuals; and security services
739	for the protection of property and individuals.
740	(c)  Certification and collective membership marks:
741	1.  Class 200  Collective membership marks.
742	2.  Class A  Certification marks for goods.
743	3.  Class B  Certification marks for services.
744	(d)  The goods and services recited in collective trademark
745	and collective service mark applications are assigned to the
746	same classes that are appropriate for those goods and services
747	in general.
748	(2)  The establishment of the classes of goods and services
749	set forth in subsection (1) is not for the purpose of limiting
750	or extending the rights of the applicant or registrant. A single
751	application for registration of a mark may include any or all
752	goods upon which, or services with which, the mark is actually
753	being used comprised in one or more of the classes listed, but
754	in the event that a single application includes goods or
755	services in connection with which the mark is being used which
756	fall within different classes of goods or services, a fee
757	equaling the sum of the fees for registration in each class
758	shall be payable.
759	Section 14.  Section 495.131, Florida Statutes, is amended
760	to read:
761	495.131  Infringement.--Subject to the provisions of s.
762	495.161, any person who shall, without the consent of the
763	registrant:
764	(1)  Use, without the consent of the registrant, any
765	reproduction, counterfeit, copy, or colorable imitation of a
766	mark registered under this chapter on any goods or in connection
767	with the sale, offering for sale, distribution, or advertising
768	of any goods or services on or in connection with which such use
769	is likely to cause confusion, or to cause mistake, or to deceive
770	as to the source or origin of such goods or services; or
771	(2)  Reproduce, counterfeit, copy, or colorably imitate a
772	any such mark registered under this chapter and apply such
773	reproduction, counterfeit, copy, or colorable imitation to
774	labels, signs, prints, packages, wrappers, receptacles, or
775	advertisements intended to be used upon or in connection
776	conjunction with the sale, offering for sale, distribution, or
777	advertising in this state of goods or services on or in
778	connection with which such use is likely to cause confusion, to
779	cause mistake, or to deceive;
780
781	shall be liable in a civil action by the owner of such
782	registered mark for any or all of the remedies provided in s.
783	495.141, except that under subsection (2) hereof the registrant
784	shall not be entitled to recover profits or damages unless the
785	acts have been committed with knowledge that such mark is
786	intended to be used to cause confusion or mistake or to deceive.
787	Section 15.  Section 495.141, Florida Statutes, is amended
788	to read:
789	495.141  Remedies.--
790	(1)  Any owner of a mark registered under this chapter may
791	proceed by suit to enjoin the manufacture, use, display, or sale
792	of any counterfeits or imitations thereof and any court of
793	competent jurisdiction may grant injunctions to restrain such
794	manufacture, use, display or sale as may be by the said court
795	deemed just and reasonable, and may require the defendants to
796	pay to such owner all profits derived from and/or all damages
797	suffered by reason of such wrongful manufacture, use, display,
798	or sale and to pay the costs of the action; and such court may
799	also order that any such counterfeits or imitations in the
800	possession or under the control of any defendant in such case be
801	delivered to an officer of the court, or to the complainant, to
802	be destroyed. In assessing profits the plaintiff shall be
803	required to prove defendant's sales only; defendant must prove
804	all elements of cost or deduction claimed. In assessing damages
805	the court may enter judgment, according to the circumstances of
806	the case, for any sum above the amount found as actual damages,
807	not exceeding three 3 times such amount. If the court shall find
808	that the amount of the recovery based on profits is either
809	inadequate or excessive the court may in its discretion enter
810	judgment for such sum as the court shall find to be just,
811	according to the circumstances of the case. Such sum in either
812	of the above circumstances shall constitute compensation and not
813	a penalty. The court may also award reasonable attorney's fees
814	to the prevailing party according to the circumstances of the
815	case.
816	(2)  The enumeration of any right or remedy herein shall
817	not affect a registrant's right to prosecute under any penal law
818	of this state.
819	Section 16.  Section 495.145, Florida Statutes, is created
820	to read:
821	495.145  Forum for actions regarding registration.--An
822	action seeking cancellation of a registration of a mark
823	registered under this chapter may be brought in any court of
824	competent jurisdiction in this state. Service of process on a
825	nonresident registrant may be made in accordance with s. 48.181.
826	The department shall not be made a party to cancellation
827	proceedings.
828	Section 17.  Section 495.151, Florida Statutes, is amended
829	to read:
830	(Substantial rewording of section. See
831	s. 495.151, F.S., for present text.)
832	495.151  Dilution.--
833	(1)  The owner of a mark that is famous in this state shall
834	be entitled, subject to the principles of equity and upon such
835	terms as the court deems reasonable, to an injunction and to
836	obtain such other relief against another person's commercial use
837	of a mark or trade name if such use begins after the mark has
838	become famous and is likely to cause dilution of the distinctive
839	quality of the famous mark, as provided in this section. In
840	determining whether a mark is distinctive and famous, a court
841	may consider factors, including, but not limited to:
842	(a)  The degree of inherent or acquired distinctiveness of
843	the mark in this state.
844	(b)  The duration and extent of use of the mark in
845	connection with the goods and services with which the mark is
846	used.
847	(c)  The duration and extent of advertising and publicity
848	of the mark in this state.
849	(d)  The geographical extent of the trading area in which
850	the mark is used.
851	(e)  The channels of trade for the goods or services with
852	which the mark is used.
853	(f)  The degree of recognition of the mark in the trading
854	areas and channels of trade in this state used by the mark's
855	owner and the person against whom the injunction is sought.
856	(g)  The nature and extent of use of the same or similar
857	mark by third parties.
858	(h)  Whether the mark is the subject of a state
859	registration in this state or a federal registration under the
860	Federal Trademark Act of March 3, 1881, or the Federal Trademark
861	Act of February 20, 1905, or a principal register registration
862	under the Federal Trademark Act of July 5, 1946.
863	(2)  In an action brought under this section, the owner of
864	a famous mark shall be entitled only to injunctive relief in
865	this state unless the person against whom the injunctive relief
866	is sought willfully intended to trade on the owner's reputation
867	or to cause dilution of the famous mark. If such willful intent
868	is proven, and the mark is registered in this state, the owner
869	shall also be entitled to all remedies set forth in this
870	chapter, subject to the discretion of the court and the
871	principles of equity.
872	(3)  The following shall not be actionable under this
873	section:
874	(a)  Fair use of a famous mark by another person in
875	comparative commercial advertising or promotion to identify the
876	competing goods or services of the owner of the famous mark.
877	(b)  Noncommercial use of the mark.
878	(c)  All forms of news reporting and news commentary.
879	Section 18.  Section 495.161, Florida Statutes, is amended
880	to read:
881	495.161  Common-law rights.--Nothing herein shall adversely
882	affect or diminish the rights or the enforcement of rights in
883	marks acquired in good faith at any time at common law.
884	Section 19.  Section 495.171, Florida Statutes, is amended
885	to read:
886	495.171  Effective date; repeal of conflicting prior
887	acts.--
888	(1)  This chapter, as amended by this act, shall be in
889	force and take effect January October 1, 2007 1967, after its
890	enactment, but shall not affect any suit, proceeding, or appeal
891	then pending.
892	(2)  Sections 506.06-506.13 Former ss. 495.01-495.14 are
893	repealed on January 1, 2007 the effective date of this act,
894	provided that as to any suit, proceeding or appeal, and for that
895	purpose only, pending at the time this chapter, as amended by
896	this act, takes effect such repeal shall be deemed not to be
897	effective until final determination of said pending suit,
898	proceeding or appeal.
899	Section 20.  Section 495.181, Florida Statutes, is amended
900	to read:
901	(Substantial rewording of section. See
902	s. 495.181, F.S., for present text.)
903	495.181  Construction of chapter.--The intent of this
904	chapter is to provide a system of state trademark registration
905	and protection substantially consistent with the federal system
906	of trademark registration and protection under the Trademark Act
907	of 1946, as amended. To that end, the construction given the
908	federal act should be examined as persuasive authority for
909	interpreting and construing this chapter.
910	Section 21.  Section 495.191, Florida Statutes, is created
911	to read:
912	495.191  Fees.--Filing and other applicable fees payable to
913	the department under this chapter shall be as follows:
914	(1)  Application filing fee: $87.50 per class.
915	(2)  Renewal application fee: $87.50 per class.
916	(3)  Assignment filing fee: $50 per class.
917	(4)  Certificate of name change filing fee: $50.
918	(5)  Voluntary cancellation filing fee: $50.
919	(6)  Certificate of registration under seal: $8.75.
920	(7)  Certified copy of application file: $52.50.
921	Section 22.  Sections 506.06, 506.07, 506.08, 506.09,
922	506.11, 506.12, and 506.13, Florida Statutes, are repealed.
923	Section 23.  This act shall take effect January 1, 2007.

CODING: Words stricken are deletions; words underlined are additions.