1-1 By: Woolley (Senate Sponsor - Ratliff) H.B. No. 2569
1-2 (In the Senate - Received from the House April 21, 1997;
1-3 April 23, 1997, read first time and referred to Committee on
1-4 International Relations, Trade, and Technology; May 1, 1997,
1-5 reported favorably by the following vote: Yeas 6, Nays 0;
1-6 May 1, 1997, sent to printer.)
1-7 A BILL TO BE ENTITLED
1-8 AN ACT
1-9 relating to the filing of a certain instrument and registration of
1-10 a trademark or service mark with the secretary of state; providing
1-11 a criminal penalty.
1-12 BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS:
1-13 SECTION 1. Section 16.10, Business & Commerce Code, is
1-14 amended to read as follows:
1-15 Sec. 16.10. APPLICATION FOR REGISTRATION. (a) Subject to
1-16 the limitations prescribed by this chapter, a [A] person may
1-17 [shall] file an [his] application to register a mark in the office
1-18 of the secretary of state on a form prescribed by the secretary of
1-19 state.
1-20 (b) The applicant shall include in the application:
1-21 (1) the name and business address of the applicant;
1-22 (2) if the applicant is a corporation, limited
1-23 partnership, limited liability company, or other business entity,
1-24 the state of incorporation or organization [of the applicant if the
1-25 applicant is a corporation];
1-26 (3) an appointment of the secretary of state as the
1-27 applicant's agent for service of process only in suits relating to
1-28 the registration which may be issued if the applicant:
1-29 (A) is or becomes a:
1-30 (i) nonresident individual, partnership,
1-31 or association; or
1-32 (ii) foreign corporation, limited
1-33 partnership, or limited liability company without a certificate of
1-34 authority to do business in this state; or
1-35 (B) cannot be found in this state;
1-36 (4) the names or a description of the goods or
1-37 services in connection with which the mark is being used;
1-38 (5) the manner in which the mark is being used in
1-39 connection with the goods or services;
1-40 (6) the class in which the applicant believes the
1-41 goods or services belong;
1-42 (7) the date on which the applicant first used the
1-43 mark anywhere in connection with the goods or services;
1-44 (8) the date on which the applicant first used the
1-45 mark in this state in connection with the goods or services;
1-46 (9) a statement that the applicant [believes he] is
1-47 the owner of the mark, and that, to the best of the applicant's
1-48 [his] knowledge, no other person is entitled to use the mark in
1-49 this state:
1-50 (A) in the identical form used by the applicant;
1-51 or
1-52 (B) in a form that is likely, when used in
1-53 connection with the goods or services, to cause confusion or
1-54 mistake, or to deceive, because of its resemblance to the mark used
1-55 by the applicant; [and]
1-56 (10) a narrative description of the mark; and
1-57 (11) such additional information or documents as the
1-58 secretary of state may reasonably require.
1-59 (c) The applicant shall:
1-60 (1) prepare and file the application and a copy of the
1-61 application with the secretary of state; and
1-62 (2) submit as part of the application to the secretary
1-63 of state:
1-64 (A) two identical specimens or facsimiles of the
2-1 mark as actually used, one specimen or facsimile with the original
2-2 application and one specimen or facsimile with the copy; [and,]
2-3 (B) a drawing of the mark that complies with any
2-4 requirement specified by the secretary of state; and
2-5 (C) an application [a filing] fee of $50 payable
2-6 to the secretary of state.
2-7 (d) The applicant or the applicant's [his] agent shall sign
2-8 [and verify] the application.
2-9 SECTION 2. Subchapter B, Chapter 16, Business & Commerce
2-10 Code, is amended by adding Sections 16.105-16.109 to read as
2-11 follows:
2-12 Sec. 16.105. EXAMINATION OF APPLICATION. (a) On the filing
2-13 of an application for registration and payment of the application
2-14 fee, the secretary of state shall examine the application for
2-15 compliance with this chapter.
2-16 (b) The applicant shall provide to the secretary of state
2-17 additional pertinent information requested by the secretary of
2-18 state.
2-19 (c) The secretary of state shall examine applications in the
2-20 order in which the applications are filed, including applications
2-21 concurrently processed for registration of the same or confusingly
2-22 similar marks used in connection with the same or similar goods or
2-23 services.
2-24 Sec. 16.106. AMENDMENT TO APPLICATION. (a) The applicant
2-25 may make an amendment to the application as reasonably requested by
2-26 the secretary of state or in response to a rejection or objection
2-27 to the registration by the secretary of state.
2-28 (b) An amendment to the application, other than an amendment
2-29 to the date on which the applicant first uses the mark, may be made
2-30 by the applicant's agent. The secretary of state may require the
2-31 applicant to execute and submit a new application instead of making
2-32 an amendment.
2-33 (c) An amendment to the application made to the date on
2-34 which the applicant first used the mark may not specify a date of
2-35 use that is after the date on which the application was filed.
2-36 Sec. 16.107. DISCLAIMER OF UNREGISTRABLE COMPONENT. The
2-37 secretary of state may require the applicant to disclaim or the
2-38 applicant may voluntarily disclaim an unregistrable component of a
2-39 mark that is otherwise registrable. A disclaimer may not prejudice
2-40 or affect the:
2-41 (1) rights of the applicant or registrant in the
2-42 disclaimed matter; or
2-43 (2) rights of the applicant or registrant to make an
2-44 application to register a mark if the disclaimed matter is
2-45 distinctive of the goods or services of the applicant or
2-46 registrant.
2-47 Sec. 16.108. CONCURRENT APPLICATIONS FOR SAME OR SIMILAR
2-48 MARK. (a) When concurrently processing applications for the same
2-49 or confusingly similar marks used in connection with the same or
2-50 similar goods or services, the secretary of state shall give
2-51 priority to the application that was filed first. If the
2-52 previously filed application is registered, the secretary of state
2-53 shall reject the other application.
2-54 (b) The applicant may bring an action for cancellation of
2-55 the previously issued registration on the ground that the applicant
2-56 has a prior or superior right to the mark under this chapter.
2-57 Sec. 16.109. DENIAL OF REGISTRATION. (a) If the secretary
2-58 of state finds that the applicant is not entitled to register the
2-59 mark, the secretary of state shall:
2-60 (1) notify the applicant of the reason for the denial
2-61 of the application; and
2-62 (2) give the applicant a reasonable amount of time as
2-63 prescribed by the secretary of state in which to:
2-64 (A) issue a response to the denial; or
2-65 (B) amend the application.
2-66 (b) The applicant may repeat the examination procedures
2-67 described by Subsection (a) until the earlier of:
2-68 (1) the expiration of the period prescribed by the
2-69 secretary of state under Subsection (a)(2); or
3-1 (2) the date on which the secretary of state finally
3-2 refuses registration of the application.
3-3 (c) If the secretary of state finally refuses registration
3-4 of the mark, the applicant may seek a review of the decision of the
3-5 secretary of state in accordance with the procedures prescribed by
3-6 this chapter.
3-7 SECTION 3. Section 16.11, Business & Commerce Code, is
3-8 amended to read as follows:
3-9 Sec. 16.11. REGISTRATION BY SECRETARY OF STATE. If the
3-10 application satisfies the requirements of this chapter, and the
3-11 application [filing] fee has been [is] paid, the secretary of state
3-12 shall:
3-13 (1) endorse on the original and the copy of the
3-14 application:
3-15 (A) the word "filed"; and
3-16 (B) the date on which the application was filed;
3-17 (2) file the original in his office;
3-18 (3) issue a certificate of registration evidencing
3-19 registration on the date on which the application was filed;
3-20 (4) attach the copy to the certificate of
3-21 registration; and
3-22 (5) deliver the certificate of registration with the
3-23 attached copy of the application to the applicant.
3-24 SECTION 4. Section 16.14, Business & Commerce Code, is
3-25 amended by amending Subsection (a) and adding Subsection (d) to
3-26 read as follows:
3-27 (a) The registration of a mark under this chapter may be
3-28 renewed for an additional 10-year term by filing a renewal
3-29 application within six months before the day the registration
3-30 expires [on a form prescribed by the secretary of state]. The
3-31 registrant shall submit [as part of his renewal application] to the
3-32 secretary of state:
3-33 (1) a renewal application [an affidavit] stating that:
3-34 (A) the mark is still in use in this state; or
3-35 (B) nonuse of the mark in this state:
3-36 (i) is due to special circumstances which
3-37 excuse the nonuse; and
3-38 (ii) is not due to an intention to abandon
3-39 the mark in this state; and
3-40 (2) a renewal application fee of $25 payable to the
3-41 secretary of state.
3-42 (d) The renewal application must be signed by the registrant
3-43 or the registrant's agent.
3-44 SECTION 5. Section 16.15(a), Business & Commerce Code, is
3-45 amended to read as follows:
3-46 (a) The secretary of state shall keep for public examination
3-47 a record of all:
3-48 (1) marks registered, reregistered, or renewed under
3-49 this chapter; [and]
3-50 (2) assignments recorded under Section 16.18 of this
3-51 code; and
3-52 (3) other instruments recorded under Section 16.19 of
3-53 this code.
3-54 SECTION 6. Subchapter B, Chapter 16, Business & Commerce
3-55 Code, is amended by adding Sections 16.19, 16.20, and 16.21 to read
3-56 as follows:
3-57 Sec. 16.19. RECORDATION OF OTHER INSTRUMENTS. (a) An
3-58 instrument that is related to the ownership of a mark registered
3-59 under this subchapter, including articles of merger or conversion
3-60 or a document effecting a name change, may be recorded with the
3-61 secretary of state by:
3-62 (1) filing a certified copy of the instrument; and
3-63 (2) paying a filing fee in the amount established for
3-64 the filing of an assignment under Section 16.18.
3-65 (b) This section does not apply to the recording of a
3-66 mortgage or a security interest or other instrument that is
3-67 recordable under the Uniform Commercial Code.
3-68 (c) A license agreement related to a mark registered under
3-69 this chapter may not be recorded under this section.
4-1 Sec. 16.20. TRANSFER OF MARK; CHANGE OF REGISTRANT'S NAME.
4-2 (a) If ownership of a registered mark is transferred or a
4-3 registrant's name is changed during the unexpired term of a
4-4 registration, a new certificate of registration may be issued for
4-5 the remainder of the unexpired term of the mark's registration in
4-6 the name of the transferee or in the new name of the registrant at
4-7 the request of the registrant or transferee.
4-8 (b) A request for a new certificate must be signed by the
4-9 registrant or transferee and accompanied by a fee in the amount set
4-10 by Section 405.031(a), Government Code, for an official
4-11 certificate.
4-12 Sec. 16.21. POWERS OF SECRETARY OF STATE. (a) The
4-13 secretary of state may adopt rules relating to the filing of
4-14 documents under this subchapter.
4-15 (b) The secretary of state may prescribe forms for use in
4-16 filing documents under this subchapter.
4-17 SECTION 7. Subchapter C, Chapter 16, Business & Commerce
4-18 Code, is amended by adding Section 16.31 to read as follows:
4-19 Sec. 16.31. CRIMINAL PENALTY. (a) A person commits an
4-20 offense if the person knowingly or intentionally signs and presents
4-21 or causes to be presented for filing a document that may be or is
4-22 required to be filed under this chapter and that:
4-23 (1) indicates that the person signing the document has
4-24 the authority to act on behalf of an applicant or registrant when
4-25 the person is not authorized to act on behalf of the applicant or
4-26 registrant;
4-27 (2) contains a material false statement; or
4-28 (3) is forged.
4-29 (b) An offense under this section is a Class A misdemeanor
4-30 unless the actor's intent is to defraud or harm another, in which
4-31 event the offense is a state jail felony.
4-32 SECTION 8. Sections 16.12(b) and 16.14(c), Business &
4-33 Commerce Code, are repealed.
4-34 SECTION 9. This Act takes effect September 1, 1997.
4-35 SECTION 10. The importance of this legislation and the
4-36 crowded condition of the calendars in both houses create an
4-37 emergency and an imperative public necessity that the
4-38 constitutional rule requiring bills to be read on three several
4-39 days in each house be suspended, and this rule is hereby suspended.
4-40 * * * * *