By Woolley H.B. No. 2569
75R8408 CLG-D
A BILL TO BE ENTITLED
1-1 AN ACT
1-2 relating to the filing of a certain instrument and registration of
1-3 a trademark or service mark with the secretary of state; providing
1-4 a criminal penalty.
1-5 BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS:
1-6 SECTION 1. Section 16.10, Business & Commerce Code, is
1-7 amended to read as follows:
1-8 Sec. 16.10. APPLICATION FOR REGISTRATION. (a) Subject to
1-9 the limitations prescribed by this chapter, a [A] person may
1-10 [shall] file an [his] application to register a mark in the office
1-11 of the secretary of state on a form prescribed by the secretary of
1-12 state.
1-13 (b) The applicant shall include in the application:
1-14 (1) the name and business address of the applicant;
1-15 (2) if the applicant is a corporation, limited
1-16 partnership, limited liability company, or other business entity,
1-17 the state of incorporation or organization [of the applicant if the
1-18 applicant is a corporation];
1-19 (3) an appointment of the secretary of state as the
1-20 applicant's agent for service of process only in suits relating to
1-21 the registration which may be issued if the applicant:
1-22 (A) is or becomes a:
1-23 (i) nonresident individual, partnership,
1-24 or association; or
2-1 (ii) foreign corporation, limited
2-2 partnership, or limited liability company without a certificate of
2-3 authority to do business in this state; or
2-4 (B) cannot be found in this state;
2-5 (4) the names or a description of the goods or
2-6 services in connection with which the mark is being used;
2-7 (5) the manner in which the mark is being used in
2-8 connection with the goods or services;
2-9 (6) the class in which the applicant believes the
2-10 goods or services belong;
2-11 (7) the date on which the applicant first used the
2-12 mark anywhere in connection with the goods or services;
2-13 (8) the date on which the applicant first used the
2-14 mark in this state in connection with the goods or services;
2-15 (9) a statement that the applicant [believes he] is
2-16 the owner of the mark, and that, to the best of the applicant's
2-17 [his] knowledge, no other person is entitled to use the mark in
2-18 this state:
2-19 (A) in the identical form used by the applicant;
2-20 or
2-21 (B) in a form that is likely, when used in
2-22 connection with the goods or services, to cause confusion or
2-23 mistake, or to deceive, because of its resemblance to the mark used
2-24 by the applicant; [and]
2-25 (10) a narrative description of the mark; and
2-26 (11) such additional information or documents as the
2-27 secretary of state may reasonably require.
3-1 (c) The applicant shall:
3-2 (1) prepare and file the application and a copy of the
3-3 application with the secretary of state; and
3-4 (2) submit as part of the application to the secretary
3-5 of state:
3-6 (A) two identical specimens or facsimiles of the
3-7 mark as actually used, one specimen or facsimile with the original
3-8 application and one specimen or facsimile with the copy; [and,]
3-9 (B) a drawing of the mark that complies with any
3-10 requirement specified by the secretary of state; and
3-11 (C) an application [a filing] fee of $50 payable
3-12 to the secretary of state.
3-13 (d) The applicant or the applicant's [his] agent shall sign
3-14 [and verify] the application.
3-15 SECTION 2. Subchapter B, Chapter 16, Business & Commerce
3-16 Code, is amended by adding Sections 16.105-16.109 to read as
3-17 follows:
3-18 Sec. 16.105. EXAMINATION OF APPLICATION. (a) On the filing
3-19 of an application for registration and payment of the application
3-20 fee, the secretary of state shall examine the application for
3-21 compliance with this chapter.
3-22 (b) The applicant shall provide to the secretary of state
3-23 additional pertinent information requested by the secretary of
3-24 state.
3-25 (c) The secretary of state shall examine applications in the
3-26 order in which the applications are filed, including applications
3-27 concurrently processed for registration of the same or confusingly
4-1 similar marks used in connection with the same or similar goods or
4-2 services.
4-3 Sec. 16.106. AMENDMENT TO APPLICATION. (a) The applicant
4-4 may make an amendment to the application as reasonably requested by
4-5 the secretary of state or in response to a rejection or objection
4-6 to the registration by the secretary of state.
4-7 (b) An amendment to the application, other than an amendment
4-8 to the date on which the applicant first uses the mark, may be made
4-9 by the applicant's agent. The secretary of state may require the
4-10 applicant to execute and submit a new application instead of making
4-11 an amendment.
4-12 (c) An amendment to the application made to the date on
4-13 which the applicant first used the mark may not specify a date of
4-14 use that is after the date on which the application was filed.
4-15 Sec. 16.107. DISCLAIMER OF UNREGISTRABLE COMPONENT. The
4-16 secretary of state may require the applicant to disclaim or the
4-17 applicant may voluntarily disclaim an unregistrable component of a
4-18 mark that is otherwise registrable. A disclaimer may not prejudice
4-19 or affect the:
4-20 (1) rights of the applicant or registrant in the
4-21 disclaimed matter; or
4-22 (2) rights of the applicant or registrant to make an
4-23 application to register a mark if the disclaimed matter is
4-24 distinctive of the goods or services of the applicant or
4-25 registrant.
4-26 Sec. 16.108. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
4-27 MARK. (a) When concurrently processing applications for the same
5-1 or confusingly similar marks used in connection with the same or
5-2 similar goods or services, the secretary of state shall give
5-3 priority to the application that was filed first. If the
5-4 previously filed application is registered, the secretary of state
5-5 shall reject the other application.
5-6 (b) The applicant may bring an action for cancellation of
5-7 the previously issued registration on the ground that the applicant
5-8 has a prior or superior right to the mark under this chapter.
5-9 Sec. 16.109. DENIAL OF REGISTRATION. (a) If the secretary
5-10 of state finds that the applicant is not entitled to register the
5-11 mark, the secretary of state shall:
5-12 (1) notify the applicant of the reason for the denial
5-13 of the application; and
5-14 (2) give the applicant a reasonable amount of time as
5-15 prescribed by the secretary of state in which to:
5-16 (A) issue a response to the denial; or
5-17 (B) amend the application.
5-18 (b) The applicant may repeat the examination procedures
5-19 described by Subsection (a) until the earlier of:
5-20 (1) the expiration of the period prescribed by the
5-21 secretary of state under Subsection (a)(2); or
5-22 (2) the date on which the secretary of state finally
5-23 refuses registration of the application.
5-24 (c) If the secretary of state finally refuses registration
5-25 of the mark, the applicant may seek a review of the decision of the
5-26 secretary of state in accordance with the procedures prescribed by
5-27 this chapter.
6-1 SECTION 3. Section 16.11, Business & Commerce Code, is
6-2 amended to read as follows:
6-3 Sec. 16.11. REGISTRATION BY SECRETARY OF STATE. If the
6-4 application satisfies the requirements of this chapter, and the
6-5 application [filing] fee has been [is] paid, the secretary of state
6-6 shall:
6-7 (1) endorse on the original and the copy of the
6-8 application:
6-9 (A) the word "filed"; and
6-10 (B) the date on which the application was filed;
6-11 (2) file the original in his office;
6-12 (3) issue a certificate of registration evidencing
6-13 registration on the date on which the application was filed;
6-14 (4) attach the copy to the certificate of
6-15 registration; and
6-16 (5) deliver the certificate of registration with the
6-17 attached copy of the application to the applicant.
6-18 SECTION 4. Section 16.14, Business & Commerce Code, is
6-19 amended by amending Subsection (a) and adding Subsection (d) to
6-20 read as follows:
6-21 (a) The registration of a mark under this chapter may be
6-22 renewed for an additional 10-year term by filing a renewal
6-23 application within six months before the day the registration
6-24 expires [on a form prescribed by the secretary of state]. The
6-25 registrant shall submit [as part of his renewal application] to the
6-26 secretary of state:
6-27 (1) a renewal application [an affidavit] stating that:
7-1 (A) the mark is still in use in this state; or
7-2 (B) nonuse of the mark in this state:
7-3 (i) is due to special circumstances which
7-4 excuse the nonuse; and
7-5 (ii) is not due to an intention to abandon
7-6 the mark in this state; and
7-7 (2) a renewal application fee of $25 payable to the
7-8 secretary of state.
7-9 (d) The renewal application must be signed by the registrant
7-10 or the registrant's agent.
7-11 SECTION 5. Section 16.15(a), Business & Commerce Code, is
7-12 amended to read as follows:
7-13 (a) The secretary of state shall keep for public examination
7-14 a record of all:
7-15 (1) marks registered, reregistered, or renewed under
7-16 this chapter; [and]
7-17 (2) assignments recorded under Section 16.18 of this
7-18 code; and
7-19 (3) other instruments recorded under Section 16.19 of
7-20 this code.
7-21 SECTION 6. Subchapter B, Chapter 16, Business & Commerce
7-22 Code, is amended by adding Sections 16.19, 16.20, and 16.21 to read
7-23 as follows:
7-24 Sec. 16.19. RECORDATION OF OTHER INSTRUMENTS. (a) An
7-25 instrument that is related to the ownership of a mark registered
7-26 under this subchapter, including articles of merger or conversion
7-27 or a document effecting a name change, may be recorded with the
8-1 secretary of state by:
8-2 (1) filing a certified copy of the instrument; and
8-3 (2) paying a filing fee in the amount established for
8-4 the filing of an assignment under Section 16.18.
8-5 (b) This section does not apply to the recording of a
8-6 mortgage or a security interest or other instrument that is
8-7 recordable under the Uniform Commercial Code.
8-8 (c) A license agreement related to a mark registered under
8-9 this chapter may not be recorded under this section.
8-10 Sec. 16.20. TRANSFER OF MARK; CHANGE OF REGISTRANT'S NAME.
8-11 (a) If ownership of a registered mark is transferred or a
8-12 registrant's name is changed during the unexpired term of a
8-13 registration, a new certificate of registration may be issued for
8-14 the remainder of the unexpired term of the mark's registration in
8-15 the name of the transferee or in the new name of the registrant at
8-16 the request of the registrant or transferee.
8-17 (b) A request for a new certificate must be signed by the
8-18 registrant or transferee and accompanied by a fee in the amount set
8-19 by Section 405.031(a), Government Code, for an official
8-20 certificate.
8-21 Sec. 16.21. POWERS OF SECRETARY OF STATE. (a) The
8-22 secretary of state may adopt rules relating to the filing of
8-23 documents under this subchapter.
8-24 (b) The secretary of state may prescribe forms for use in
8-25 filing documents under this subchapter.
8-26 SECTION 7. Subchapter C, Chapter 16, Business & Commerce
8-27 Code, is amended by adding Section 16.31 to read as follows:
9-1 Sec. 16.31. CRIMINAL PENALTY. (a) A person commits an
9-2 offense if the person knowingly or intentionally signs and presents
9-3 or causes to be presented for filing a document that may be or is
9-4 required to be filed under this chapter and that:
9-5 (1) indicates that the person signing the document has
9-6 the authority to act on behalf of an applicant or registrant when
9-7 the person is not authorized to act on behalf of the applicant or
9-8 registrant;
9-9 (2) contains a material false statement; or
9-10 (3) is forged.
9-11 (b) An offense under this section is a Class A misdemeanor
9-12 unless the actor's intent is to defraud or harm another, in which
9-13 event the offense is a state jail felony.
9-14 SECTION 8. Sections 16.12(b) and 16.14(c), Business &
9-15 Commerce Code, are repealed.
9-16 SECTION 9. This Act takes effect September 1, 1997.
9-17 SECTION 10. The importance of this legislation and the
9-18 crowded condition of the calendars in both houses create an
9-19 emergency and an imperative public necessity that the
9-20 constitutional rule requiring bills to be read on three several
9-21 days in each house be suspended, and this rule is hereby suspended.