Public Act 90-0231 of the 90th General Assembly
Public Act 90-0231
SB953 Enrolled LRB9001251WHmgB
AN ACT to provide for the registration and protection of
trademarks, servicemarks, and tradenames.
Be it enacted by the People of the State of Illinois,
represented in the General Assembly:
Section 1. Short title. This Act may be cited as the
Trademark Registration and Protection Act.
Section 5. Definitions. In this Act:
(a) 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 that use. Intent not to resume may be
inferred from circumstances. Nonuse for 2 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.
(b) "Applicant" means the person filing an application
for registration of a mark under this Act, and the legal
representatives, successors, or assigns of that person.
(c) "Dilution" means the lessening of the capacity of a
famous mark to identify and distinguish goods or services,
regardless of the presence or absence of (1) competition
between the owner of the famous mark and other parties, or
(2) likelihood of confusion, mistake, or deception.
(d) "Mark" includes any trademark or servicemark
entitled to registration under this Act whether registered or
not.
(e) "Person" and any other word or term used to
designate the applicant or other party entitled to benefit or
privilege or rendered liable under the provisions of this Act
means a natural person as well as a firm, partnership,
corporation, union, association, or other organization
capable of suing and being sued in a court of law.
(f) "Registrant" means the person to whom the
registration of a mark is issued under this Act, and the
legal representatives, successors, or assigns of that person.
(g) "Secretary" means the Secretary of State of Illinois
or the designee of the Secretary charged with the
administration of this Act.
(h) "Servicemark" means any word, name, symbol, or
device or any combination thereof used by a person, to
identify and distinguish the services of one person,
including a unique service, from the services of others, and
to indicate the source of the services, even if that source
is unknown. Titles, character names used by a person, and
other distinctive features of radio or television programs
may be registered as servicemarks notwithstanding that they,
or the programs, may advertise the goods of the sponsor.
(i) "Trademark" means any word, name, symbol, or device
or any combination thereof used by a person to identify and
distinguish the goods of the person, including a unique
product, from those manufactured and sold by others, and to
indicate the source of the goods, even if that source is
unknown.
(j) "Tradename" means any name used by a person to
identify a business or vocation of the person.
(k) "Use" means the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a
right in a mark. For the purposes of this Act, a mark shall
be deemed to be in use (1) 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
impracticable, then on documents associated with the goods or
their sale, and the goods are sold or transported in commerce
in this State, and (2) on services when it is used or
displayed in the sale or advertising of services and the
services are rendered in this State.
Section 10. Registrability. A mark by which the goods or
services of an applicant for registration may be
distinguished from the goods or services of others shall not
be registered if it:
(a) consists of or comprises immoral, deceptive, or
scandalous matter; or
(b) consists of or comprises matter that may disparage
or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute; or
(c) consists of or comprises the flag or coat of arms or
other insignia of the United States, or of any state or
municipality, or of any foreign nation, or any simulation
thereof; or
(d) consists of or comprises the name, signature or
portrait identifying a particular living individual, except
by the individual's written consent; or
(e) consists of a mark which: (1) when used on or in
connection with the goods or services of the applicant, is
merely descriptive or deceptively misdescriptive of them, or
(2) when used on or in connection with the goods or services
of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, or (3) is primarily
merely a surname; however, nothing in this subsection (e)
shall prevent the registration of a mark used by the
applicant which has become distinctive of the applicant's
goods or services. The Secretary may accept as evidence that
the mark has become distinctive, as used on or in connection
with the applicant's goods or services, proof of continuous
use thereof as a mark by the applicant in this State for the
5 years before the date on which the claim of distinctiveness
is made; or
(f) consists of or comprises a mark which so resembles a
mark registered in this State of a mark of tradename
previously used by another and not abandoned, as to be
likely, when used on or in connection with the goods or
services of the applicant, to cause confusion or mistake or
to deceive.
Section 15. Application for registration. Subject to the
limitations set forth in this Act, any person who uses a mark
may file in the office of the Secretary, on a form to be
furnished by the Secretary, an application for registration
of that mark setting forth, but not limited to the following
information:
(a) the name and business address of the person applying
for the registration; and, if a corporation, the state of
incorporation, or if a partnership, the state in which the
partnership is organized and name of one of the general
partners, or if a limited liability company, the state in
which the company is organized;
(b) an appointment of the Secretary of State as agent
for service of process in any action relating only to the
registration which may be issued, if the applicant be, or
shall become a non-resident individual, or foreign
partnership, limited liability company, association, or
corporation not licensed to do business in this State, or
cannot be found in this State;
(c) the goods or services on or in connection with which
the mark is used and the mode or manner in which the mark is
used on or in connection with such goods or services and
class in which such goods or services fall;
(d) the date when the mark was first used anywhere and
the date when it was first used in this State by the
applicant or a predecessor in interest; and
(e) a statement that the applicant is the owner of the
mark, that the mark is in use, and that to the knowledge of
the person verifying the application, no other person has
registered the mark, either federally or in this State, or
has the right to use the mark either in the identical form
thereof or in such near resemblance thereto as to be likely,
when applied to the goods or services of such other person,
to cause confusion, or to cause mistake, or to deceive.
The Secretary may also require a statement as to whether
an application to register the mark, or portions or a
composite thereof, has been filed by the applicant or a
predecessor in interest in the United States Patent and
Trademark Office; and, if so, the applicant shall provide
full particulars with respect thereto including the filing
date and serial number of each application, the status
thereof and, if any application was finally refused
registration or has otherwise not resulted in a registration,
the reasons therefor.
The Secretary may also require that a drawing of the
mark, complying with such requirements as the Secretary may
specify, accompany the application.
The application shall be signed and verified (by oath,
affirmation, or declaration subject to perjury laws) by the
applicant or by a member of the firm or an officer of the
corporation or association applying.
The application shall be accompanied by 3 specimens
showing the mark as actually used.
The application shall be accompanied by the application
fee of $10 payable to the Secretary of State.
Section 20. Filing of application.
(a) Upon the filing of an application for registration
and payment of the application fee, the Secretary may cause
the application to be examined for conformity with this Act.
(b) The applicant shall provide any additional pertinent
information requested by the Secretary including a
description of a design mark and may make, or authorize the
Secretary to make, such amendments to the application as may
be reasonably requested by the Secretary or deemed by
applicant to be advisable to respond to any rejection or
objection.
(c) The Secretary may require the applicant to disclaim
an unregisterable component of a mark otherwise registerable,
and an applicant may voluntarily disclaim a component of a
mark sought to be registered. No disclaimer shall prejudice
or affect the applicant's or registrant's rights then
existing or thereafter arising in the disclaimed matter, or
the applicant's or registrant's rights of registration on
another application if the disclaimed matter be or shall have
become distinctive of the applicant's or registrant's goods
or services.
(d) Amendments may be made by the Secretary upon the
application submitted by the applicant upon applicant's
agreement; or a fresh application may be required to be
submitted.
(e) If the applicant is found not to be entitled to
registration, the Secretary shall advise the applicant
thereof and of the reasons therefor. The applicant shall
have a reasonable period of time specified by the Secretary
in which to reply or to amend the application, in which event
the application shall then be reexamined. This procedure may
be repeated until (1) the Secretary finally refuses
registration of the mark or (2) the applicant fails to reply
or amend within the specified period, whereupon the
application shall be deemed to have been abandoned.
(f) All final decisions of the Secretary of State under
this Act shall be deemed to be administrative decisions and
subject to judicial review under the provisions of the
Administrative Review Law and the rules adopted pursuant
thereto.
(g) In the instance of applications concurrently being
processed by the Secretary seeking registration of the same
or confusingly similar marks for the same or related goods or
services, the Secretary shall grant priority to the
applications in order of filing. If a prior-filed
application is granted a registration, the other application
or applications shall then be rejected. Any rejected
applicant may bring an action for cancellation of the
registration upon grounds of prior or superior rights to the
mark, in accordance with the provisions of Section 45 of this
Act.
Section 25. Certificate of registration. Upon compliance
by the applicant with the requirements of this Act, the
Secretary shall cause a certificate of registration to be
issued and delivered to the applicant. The certificate of
registration shall be issued under the signature of the
Secretary and the Seal of the State, and it shall show the
name and business address and, if a corporation, the state of
incorporation, or if a partnership, the state in which the
partnership is organized and the name of one of the general
partners, or if a limited liability company, the state in
which the company is organized, 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 or in connection with
which the mark is used, a reproduction of the mark, the
registration date and the term of the registration.
Any certificate of registration issued by the Secretary
under this Act or a copy thereof duly certified by the
Secretary shall be admissible in evidence as competent and
sufficient proof of the registration of a mark in any actions
or judicial proceedings in any court of this State.
Section 30. Duration and renewal. A registration of a
mark under this Act shall be effective for a term of 5 years
from the date of registration and, upon application filed
within 60 days before the expiration of the term, on a form
furnished by the Secretary, the registration may be renewed
for a like term from the end of the expiring term. A renewal
fee of $5, payable to the Secretary, shall accompany the
application for renewal of the registration.
A registration may be renewed for successive periods of 5
years in like manner.
Any registration in force on the effective date of this
Act shall continue in full force and effect for the unexpired
term of the registration and may be renewed by filing an
application for renewal with the Secretary complying with the
requirements of the Secretary and paying the renewal fee
within 60 days before the expiration of the registration.
All applications for renewal under this Act, whether of
registrations made under this Act or of registrations
effected under any prior Act, shall include a verified
statement that the mark has been and is still in use and
include 3 specimens showing actual use of the mark on or in
connection with the goods or services.
Section 35. Assignments, changes of name or address and
other instruments.
(a) Any mark and its registration under this Act 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 on a form furnished by the
Secretary and may be recorded with the Secretary upon the
payment of a recording fee of $5 payable to the Secretary
who, upon recording of the assignment, shall issue in the
name of the assignee a new certificate for the remainder of
the term of the registration or of the last renewal thereof.
An assignment of any registration under this Act shall be
void as against any subsequent purchaser for valuable
consideration without notice, unless it is recorded with the
Secretary within 3 months after the date thereof or prior to
such subsequent purchase.
(b) Any registrant or applicant effecting a change of
the name or address of the person to whom the mark was issued
or for whom an application was filed may record, on a form
furnished by the Secretary, a certificate of change of name
or address of the registrant or applicant with the Secretary
upon the payment of a recording fee of $5. The Secretary
may issue in the name of the assignee a certificate of
registration of an assigned application. The Secretary may
issue in the name of the assignee, a new certificate of
registration for the remainder of the term of the
registration or last renewal thereof.
(c) Other instruments which relate to a mark registered
or application pending pursuant to this Act, such as, by way
of example, licenses, security interests, or mortgages, may
be recorded in the discretion of the Secretary, provided that
instrument is in writing and duly executed.
(d) Acknowledgement shall be prima facie evidence of the
execution of an assignment or other instrument and when
recorded by the Secretary, the record shall be prima facie
evidence of execution.
Section 40. Records. The Secretary shall keep for public
examination a record of all marks registered or renewed under
this Act, as well as a record of all documents recorded
pursuant to Section 35.
The Secretary will provide a certified copy of any single
registration, or portion thereof, upon receiving a request in
writing for the copy and payment of a $5 fee, payable to the
Secretary.
Section 45. Cancellation. The Secretary shall cancel
from the register, in whole or in part:
(a) any registration concerning which the Secretary
shall receive a voluntary request for cancellation thereof
from the registrant or the assignee of record;
(b) all registrations granted under this Act and not
renewed in accordance with this Act;
(c) any registration concerning which the circuit court
shall find:
(1) that the registered mark has been abandoned,
(2) that the registrant is not the owner of the
mark,
(3) that the registration was granted improperly,
(4) that the registration was obtained
fraudulently,
(5) that the mark is or has become the generic name
for the goods or services, or a portion thereof, for
which it has been registered,
(6) that the registered mark is so similar, as to
be likely to cause confusion or mistake or to deceive, to
a mark registered by another person in the United States
Patent and Trademark Office prior to the date of the
filing of the application for registration by the
registrant hereunder, and not abandoned; however, should
the registrant prove that the registrant is the owner of
a concurrent registration of a mark in the United States
Patent and Trademark Office covering an area including
this State, the registration hereunder shall not be
cancelled for such area of the State; or
(d) when the circuit court shall order cancellation of a
registration on any ground.
The clerk of the court ordering the cancellation or
making any of the findings specified in subdivision (c) (3)
shall, when such judgment becomes final, transmit a certified
copy of the judgment to the Secretary of State.
Section 50. Classification. The Secretary shall by rule
establish a classification of goods and services for
convenience of administration of this Act, but not to limit
or extend the applicant's or registrant's rights, and a
single application for registration of a mark may include any
or all goods upon which, or services with which, the mark is
actually being used and which are comprised in a single
class. In no event shall a single application include goods
or services upon which the mark is being used and which fall
within different classes. To the extent practical, the
classification of goods and services should conform to the
classification adopted by the United States Patent and
Trademark Office.
Classification of Goods
Class Title
1 Chemicals
2 Paints
3 Cosmetics and cleaning preparations
4 Lubricants and fuels
5 Pharmaceuticals
6 Metal goods
7 Machinery
8 Hand tools
9 Electrical and scientific apparatus
10 Medical apparatus
11 Environmental control apparatus
12 Vehicles
13 Firearms
14 Jewelry
15 Musical Instruments
16 Paper goods and printed matter
17 Rubber goods
18 Leather goods
19 Non-metallic building materials
20 Furniture and articles not otherwise classified
21 Housewares and glass
22 Cordage and fibers
23 Yarns and threads
24 Fabrics
25 Clothing
26 Fancy goods
27 Floor coverings
28 Toys and sporting goods
29 Meats and processed foods
30 Staple foods
31 Natural agricultural products
32 Light beverages
33 Wine and spirits
34 Smoker's articles
35 Advertising and business
36 Insurance and financial
37 Building construction and repair
38 Telecommunications
39 Transportation and storage
40 Treatment of materials
41 Education and entertainment
42 Miscellaneous
Section 55. Fraudulent registration. Any person who
shall for himself or herself, or on behalf of any other
person, procure the filing or registration of any mark in the
office of the Secretary under this Act, by knowingly making
any false or fraudulent representation or declaration, orally
or in writing, or by any other fraudulent means, shall be
liable to pay all damages sustained in consequence of the
filing or registration, to be recovered by or on behalf of
the party injured thereby in any court of competent
jurisdiction.
Section 60. Infringement. Subject to the provisions of
Section 80 of this Act, a person shall be liable in a civil
action by the registrant for any and all of the remedies
provided in Section 70 of this Act if the person:
(a) uses, without the consent of the registrant, any
reproduction, counterfeit, copy, or colorable imitation of a
mark registered under this Act in connection with the sale,
distribution, offering for sale, or advertising of any goods
or services on or in connection with which such use is likely
to cause confusion or mistake or to deceive as to the source
of origin of such goods or services; or
(b) reproduces, counterfeits, copies, or colorably
imitates any such mark and applies such reproduction,
counterfeit, copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles, or advertisements
intended to be used upon or in connection with the sale or
other distribution in this State of such goods or services.
The registrant shall not be entitled to recover profits or
damages under this subdivision (b) unless the acts have been
committed with knowledge that such imitation is intended to
be used to cause confusion, or to cause mistake, or to
deceive.
Section 65. Injury to business reputation; dilution.
(a) The owner of a mark which is famous in this State
shall be entitled, subject to the principles of equity and
upon such terms as the court deems reasonable, to an
injunction against another person's commercial use of a mark
or tradename, if the use begins after the mark has become
famous and causes dilution of the distinctive quality of the
mark, and to obtain such other relief as is provided in this
Section. In determining whether a mark is distinctive and
famous, a court may consider factors such as, but not limited
to:
(1) the degree of inherent or acquired
distinctiveness of the mark in this State;
(2) the duration and extent of use of the mark in
connection with the goods and services with which the
mark is used;
(3) the duration and extent of advertising and
publicity of the mark in this State;
(4) the geographical extent of the trading area in
which the mark is used;
(5) the channels of trade for the goods or services
with which the mark is used;
(6) the degree of recognition of the mark in the
trading areas and channels of trade in this State used by
the mark's owner and the person against whom the
injunction is sought;
(7) the nature and extent of use of the same or
similar mark by third parties; and
(8) whether the mark is the subject of a State
registration in this State, or a federal registration
under the Act of March 3, 1881, or under the Act of
February 20, 1905, or on the principal register.
In an action brought under this Section, the owner of a
famous mark shall be entitled only to injunctive relief in
this State, unless the person against whom injunctive relief
is sought willfully intended to trade on the owner's
reputation or to cause dilution of the famous mark. If such
willful intent is proven, the owner shall also be entitled to
the remedies set forth in this Act, subject to the discretion
of the court and the principles of equity.
(b) The following are not actionable under this Section:
(1) Fair use of a famous mark by another person in
comparative commercial advertising or promotion to
identify the competing goods or services of the owner of
the famous mark.
(2) Noncommercial use of a mark.
(3) All forms of news reporting and news
commentary.
Section 70. Remedies. Any owner of a mark registered
under this Act may proceed by suit to enjoin the manufacture,
use, display or sale of any counterfeits or imitations
thereof and any court of competent jurisdiction may grant
injunctions to restrain such manufacture, use, display, or
sale as may be by the court deemed just and reasonable, and
may require the defendants to pay to such owner all profits
derived from or all damages suffered by reason of such
wrongful manufacture, use, display, or sale or both; and the
court may also order that any such counterfeits or imitations
in the possession or under the control of any defendant in
the case be delivered to an officer of the court, or to the
complainant, to be destroyed. The court in its discretion,
may enter judgment for an amount not to exceed 3 times the
profits and damages or reasonable attorneys' fees of the
prevailing party, or both, in those cases in which the court
finds the other party committed the wrongful acts with
knowledge or in bad faith or otherwise as according to the
circumstances of the case.
The enumeration of any right or remedy in this Act shall
not affect a registrant's right to prosecute under any penal
law of this State.
Section 75. Forum for actions regarding registration;
service on out of state registrants.
(a) Actions to require cancellation of a mark registered
under this Act shall be brought in the circuit court. In an
action for cancellation, the Secretary shall not be made a
party to the proceeding but shall be notified of the filing
of the complaint by the clerk of the court in which it is
filed and shall be given the right to intervene in the
action.
(b) Any action under this Section may be brought by any
person who believes he is or will be damaged by the
registration complained of. Such action shall be brought in
the circuit court for the county in which the registrant
resides or has a regular and established place of business,
or has appointed an agent to receive service, or if the
registrant is a non-resident individual, or foreign
partnership, limited liability company, association or a
corporation not licensed to do business in this State, or
cannot be found in this State, in the Circuit Court that sits
in the City of Springfield and the County of Sangamon.
(1) When the agent appointed to receive process is
the Secretary of State, the Secretary of State shall
forward notice of such action by registered mail to the
registrant at his last address of record.
(2) Notice of any such action shall be transmitted
by the clerk of the court in which the action is brought
to the Secretary of State who shall place such notice in
the file of such registration with proper notations and
endorsements.
Section 80. Common law rights. Nothing in this Act shall
adversely affect the rights or the enforcement of rights in
marks acquired in good faith at any time at common law.
Section 85. Severability. The provisions of the Act are
severable under Section 1.31 of the Statute on Statutes.
Section 90. Time of taking effect; conflicts with prior
Acts; intent of Act. This Act shall not affect any
application, suit, proceeding, or appeal then pending on its
effective date. Except in the case of an application, suit,
proceeding, or appeal pending on its effective date, this Act
shall control in any conflict between the provisions of this
Act and the provisions of any other Act relating to marks or
any other Act that conflicts with this Act. Any application,
suit, proceeding, or appeal pending at the time this Act
takes effect shall continue under the law under which that
application, suit, or appeal was initiated until final
determination.
The intent of this Act 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, as amended.
To that end, the construction given the federal Act shall be
examined as persuasive authority for interpreting and
construing this Act.
(765 ILCS 1035/Act rep.)
Section 905. Repeal. The Trademark Registration Act is
repealed.
Section 910. The Registered Container Trade Mark Act is
amended by changing Section 2.03 as follows:
(765 ILCS 1050/2.03) (from Ch. 140, par. 122.3)
Sec. 2.03. "Trade mark" means any word, name, symbol,
picture, design or device registered with the Office of the
Secretary of State in accordance with the Trademark
Registration and Protection Act "An Act to provide for the
registration and protection of trade-marks, service marks and
trade names, approved July 11, 1955," which is filed as
provided in Section 3 of this Act and adopted and used by a
person to identify containers made, sold, produced or
distributed by him or with his authorization and which
distinguishes them from containers made, sold, produced or
distributed by others.
(Source: P.A. 80-1449.)
Section 999. Effective date. This Act takes effect
January 1, 1998.