Model Trademark Act

Provides a system of state trademark registration and protection
substantially consistent with the federal system of trademark
registration and protection under federal law.  Repeals existing
trademark law.  Requires the attorney general to review the need
for additional statutory changes and report to the legislature.

THE SENATE                              S.B. NO.           1435
TWENTIETH LEGISLATURE, 1999                                
STATE OF HAWAII                                            

                   A  BILL  FOR  AN  ACT



 1      SECTION 1.  The Hawaii Revised Statutes is amended by adding
 2 a new chapter to be appropriately designated and to read as
 3 follows:
 4                             "CHAPTER
 5                            TRADEMARKS
 6       -1 Definitions.  As used in this chapter, unless the
 7 context clearly requires otherwise:
 8      "Abandoned" means, with respect to a mark, when either of
 9 the following occurs:
10      (1)  Its use has been discontinued with intent not to resume
11           such use.  Intent not to resume may be inferred from
12           circumstances.  Nonuse for two consecutive years shall
13           constitute prima facie evidence of abandonment.
14      (2)  Any course of conduct of the owner, including acts of
15           omission as well as commission, causes the mark to lose
16           its significance as a mark.
17      "Applicant" means the person filing an application for
18 registration of a mark under this chapter, and the legal
19 representatives, successors, or assigns of that person.

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 1      "Dilution" means the lessening of the capacity of a famous
 2 mark to identify and distinguish goods or services, regardless of
 3 the presence or absence of:
 4      (1)  Competition between the owner of the famous mark and
 5           other parties; or
 6      (2)  Likelihood of confusion, mistake, or deception.
 7      "Mark" includes any trademark or service mark, entitled to
 8 registration under this chapter whether registered or not.
 9      "Person" and any other word or term used to designate the
10 applicant or other party entitled to a benefit or privilege or
11 rendered liable under this chapter includes a juristic person as
12 well as a natural person.  The term "juristic person" includes a
13 firm, partnership, corporation, union, association, or other
14 organization capable of suing and being sued in a court of law.
15      "Registrant" means the person to whom the registration of a
16 mark under this chapter is issued, and the legal representatives,
17 successors, or assigns of that person.
18      "Secretary" means the lieutenant governor or the lieutenant
19 governor's designee.
20      "Service mark" means any word, name, symbol, or device or
21 any combination thereof used by a person, to identify and
22 distinguish the services of one person, including a unique
23 service, from the services of others, and to indicate the source

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 1 of the services, even if that source is unknown.  Titles,
 2 character names used by a person, and other distinctive features
 3 of radio or television programs may be registered as service
 4 marks notwithstanding that they, or the programs, may advertise
 5 the goods of the sponsor.
 6      "Trademark" means any word, name, symbol, or device or any
 7 combination thereof used by a person to identify and distinguish
 8 the goods of such person, including a unique product, from those
 9 manufactured or sold by others, and to indicate the source of the
10 goods, even if that source is unknown.
11      "Trade name" means any name used by a person to identify a
12 business or vocation of such person.
13      "Use" means the bona fide use of a mark in the ordinary
14 course of trade, and not made merely to reserve a right in a
15 mark.  For the purposes of this chapter, a mark shall be deemed
16 to be in use:
17      (1)  On goods when it is placed in any manner on the goods
18           or other containers or the displays associated
19           therewith or on the tags or labels affixed thereto, or
20           if the nature of the goods makes such placement
21           impracticable, then on documents associated with the
22           goods or their sale, and the goods are sold or
23           transported in commerce in this State; and

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 1      (2)  On services when it is used or displayed in the sale or
 2           advertising of services and the services are rendered
 3           in this State.
 4         -2  Registrability.  A mark by which the goods or
 5 services of any applicant for registration may be distinguished
 6 from the goods or services of others shall not be registered if
 7 it:
 8      (1)  Consists of or comprises immoral, deceptive, or
 9           scandalous matter;
10      (2)  Consists of or comprises matter which may disparage or
11           falsely suggest a connection with persons, living or
12           dead, institutions, beliefs, or national symbols, or
13           bring them into contempt, or disrepute;
14      (3)  Consists of or comprises the flag or coat of arms or
15           other insignia of the United States, or of any state or
16           municipality, or of any foreign nation, or any
17           simulation thereof;
18      (4)  Consists of or comprises the name, signature, or
19           portrait identifying a particular living individual,
20           except by the individual's written consent;
21      (5)  Consists of a mark which:
22           (A)  When used on or in connection with the goods or
23                services of the applicant, is merely descriptive

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 1                or deceptively misdescriptive of them;
 2           (B)  When used on or in connection with the goods or
 3                services of the applicant is primarily
 4                geographically descriptive or deceptively
 5                misdescriptive of them; or
 6           (C)  Is primarily merely a surname;
 7           provided that nothing in this paragraph shall prevent
 8           the registration of a mark used by the applicant which
 9           has become distinctive of the applicant's goods or
10           services.  The secretary may accept as evidence that
11           the mark has become distinctive, as used on or in
12           connection with the applicant's goods or services,
13           proof of continuous use thereof as a mark by the
14           applicant in this State for the five years before the
15           date on which the claim of distinctiveness is made; or
16      (6)  Consists of or comprises a mark which so resembles a
17           mark registered in this State or a mark or trade name
18           previously used by another and not abandoned, as to be
19           likely, when used on or in connection with the goods or
20           services of the applicant, to cause confusion or
21           mistake or to deceive.
22         -3  Application for registration.(a)  Subject to the
23 limitations set forth in this chapter, any person who uses a mark

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 1 may file in the office of the secretary, in a manner complying
 2 with the requirements of the secretary, an application for
 3 registration of that mark setting forth, but not limited to, the
 4 following information:
 5      (1)  The name and business address of the person applying
 6           for such registration; and, if a corporation, the state
 7           of incorporation, or if a partnership, the state in
 8           which the partnership is organized and the names of the
 9           general partners, as specified by the secretary;
10      (2)  The goods or services on or in connection with which
11           the mark is used and the mode or manner in which the
12           mark is used on or in connection with such goods or
13           services and the class in which such goods or services
14           fall;
15      (3)  The date when the mark was first used anywhere and the
16           date when it was first used in this State by the
17           applicant or a predecessor in interest; and
18      (4)  A statement that the applicant is the owner of the
19           mark, that the mark is in use, and that, to the
20           knowledge of the person verifying the application, no
21           other person has registered, either federally or in
22           this State, or has the right to use such mark either in
23           the identical form thereof or in such near resemblance

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 1           thereto as to be likely, when applied to the goods or
 2           services of such other person, to cause confusion, or
 3           to cause mistake, or to deceive.
 4      (b)  The secretary may also require a statement as to
 5 whether an application to register the mark, or portions or a
 6 composite thereof, has been filed by the applicant or a
 7 predecessor in interest in the United States Patent and Trademark
 8 Office; and, if so, the applicant shall provide full particulars
 9 with respect thereto including the filing date and serial number
10 of each application, the status thereof and, if any application
11 was finally refused registration or has otherwise not resulted in
12 a registration, the reasons therefor.
13      (c)  The secretary may also require that a drawing of the
14 mark, complying with such requirements as the secretary may
15 specify, accompany the application.
16      (d)  The application shall be signed and verified (by oath,
17 affirmation, or declaration subject to perjury laws) by the
18 applicant or by a member of the firm or an officer of the
19 corporation or association applying.
20      (e)  The application shall be accompanied by three specimens
21 showing the mark as actually used.
22      (f)  The application shall be accompanied by the application
23 fee payable to the secretary.

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 1         -4  Filing of applications.(a)  Upon the filing of an
 2 application for registration and payment of the application fee,
 3 the secretary may cause the application to be examined for
 4 conformity with this chapter.
 5      (b)  The applicant shall provide any additional pertinent
 6 information requested by the secretary including a description of
 7 a design mark and may make, or authorize the secretary to make,
 8 such amendments to the application as may be reasonably requested
 9 by the secretary or deemed by the applicant to be advisable to
10 respond to any rejection or objection.
11      (c)  The secretary may require the applicant to disclaim an
12 unregisterable component of a mark otherwise registerable and an
13 applicant may voluntarily disclaim a component of a mark sought
14 to be registered.   No disclaimer shall prejudice or affect the
15 applicant's or registrant's rights then existing or thereafter
16 arising in the disclaimed matter, or the applicant's or
17 registrant's rights of registration on another application if the
18 disclaimed matter is or shall have become distinctive of the
19 applicant's or registrant's goods or services.
20      (d)  Amendments may be made by the secretary upon the
21 application submitted by the applicant upon applicant's
22 agreement, or a new application may be required to be submitted.
23      (e)  If the applicant is found not to be entitled to

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 1 registration, the secretary shall advise the applicant thereof
 2 and of the reasons therefor.  The applicant shall have a
 3 reasonable period of time specified by the secretary in which to
 4 reply or to amend the application, in which event the application
 5 shall then be reexamined.  This procedure may be repeated until
 6 the secretary finally refuses registration of the mark or the
 7 applicant fails to reply or amend within the specified period,
 8 whereupon the application shall be deemed to have been abandoned.
 9      (f)  If the secretary finally refuses registration of the
10 mark, the applicant may seek a writ of mandamus to compel such
11 registration.  Such writ may be granted, but without costs to the
12 secretary, on proof that all the statements in the application
13 are true and that the mark is otherwise entitled to registration.
14      (g)  In the instance of applications concurrently being
15 processed by the secretary seeking registration of the same or
16 confusingly similar marks for the same or related goods or
17 services, the secretary shall grant priority to the applications
18 in order of filing.  If a prior-filed application is granted a
19 registration, the other application or applications shall then be
20 rejected.  Any rejected applicant may bring an action for
21 cancellation of the registration upon grounds of prior or
22 superior rights to the mark, in accordance with section    -9.
23         -5  Certificate of registration.(a)  Upon compliance

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 1 by the applicant with the requirements of this chapter, the
 2 secretary shall cause a certificate of registration to be issued
 3 and delivered to the applicant.  The certificate of registration
 4 shall be issued under the signature of the secretary and the seal
 5 of the State, and it shall show the name and business address
 6 and, if a corporation, the state of incorporation, or if a
 7 partnership, the state in which the partnership is organized and
 8 the names of the general partners, as specified by the secretary,
 9 of the person claiming ownership of the mark, the date claimed
10 for the first use of the mark anywhere and the date claimed for
11 the first use of the mark in this State, the class of goods or
12 services and a description of the goods or services on or in
13 connection with which the mark is used, a reproduction of the
14 mark, the registration date and the term of the registration.
15      (b)  Any certificate of registration issued by the secretary
16 under this section or a copy thereof duly certified by the
17 secretary shall be admissible in evidence as competent and
18 sufficient proof of the registration of such mark in any actions
19 or judicial proceedings in any court of this State.
20         -6  Duration and renewal.(a)  A registration of mark
21 under this chapter shall be effective for a term of five years
22 from the date of registration and, upon application filed within
23 six months prior to the expiration of such term, in a manner

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 1 complying with the requirements of the secretary.  The
 2 registration may be renewed for a like term from the end of the
 3 expiring term.  A renewal fee, payable to the secretary, shall
 4 accompany the application for renewal of the registration.
 5      (b)  A registration may be renewed for successive periods of
 6 five years in like manner.
 7      (c)  Any registration in force on the effective date of this
 8 chapter shall continue in full force and effect for the unexpired
 9 term thereof and may be renewed by filing an application for
10 renewal with the secretary complying with the requirements of the
11 secretary and paying the aforementioned renewal fee therefor
12 within six months prior to the expiration of the registration.
13      (d)  All applications for renewal under this chapter,
14 whether of registrations made under this chapter or of
15 registrations effected under any prior law, shall include a
16 verified statement that the mark has been and is still in use and
17 include a specimen showing actual use of the mark on or in
18 connection with the goods and services.
19         -7  Assignments, changes of name, and other instruments.
20 (a)  Any mark and its registration under this chapter shall be
21 assignable with the good will of the business in which the mark
22 is used, or with that part of the good will of the business
23 connected with the use of and symbolized by the mark.  Assignment

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 1 shall be by instruments in writing duly executed and may be
 2 recorded with the secretary, upon the payment of the recording
 3 fee payable to the secretary who, upon recording of the
 4 assignment, shall issue in the name of the assignee a new
 5 certificate for the remainder of the term of the registration or
 6 of the last renewal thereof.  An assignment of any registration
 7 under this chapter shall be void as against any subsequent
 8 purchaser for valuable consideration without notice, unless it is
 9 recorded with the secretary within three months after the date
10 thereof or prior to such subsequent purchase.
11      (b)  Any registrant or applicant effecting a change of the
12 name of the person to whom the mark was issued or for whom an
13 application was filed may record a certificate of change of name
14 of the registrant or applicant with the secretary upon the
15 payment of the recording fee.  The secretary may issue in the
16 name of the assignee a certificate of registration of an assigned
17 application.  The secretary may issue in the name of the
18 assignee, a new certificate of registration for the remainder of
19 the term of the registration or last renewal thereof.
20      (c)  Other instruments which relate to a mark registered or
21 application pending pursuant to this chapter, including licenses,
22 security interests, or mortgages, may be recorded in the
23 discretion of the secretary; provided that the instrument is in

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 1 writing and duly executed.
 2      (d)  Acknowledgement shall be prima facie evidence of the
 3 execution of an assignment or other instrument and, when recorded
 4 by the secretary, the record shall be prima facie evidence of
 5 execution.
 6      (e)  A photocopy of any instrument referred to in subsection
 7 (a), (b), or (c) shall be accepted for recording if it is
 8 certified by any of the parties thereto, or their successors, to
 9 be a true and correct copy of the original.
10         -8  Records.  The secretary shall keep for public
11 examination a record of all marks registered or renewed under
12 this chapter, as well as a record of all documents recorded
13 pursuant to section     -7.
14         -9  Cancellation.  The secretary shall cancel from the
15 register, in whole or in part:
16      (1)  Any registration concerning which the secretary shall
17           receive a voluntary request for cancellation thereof
18           from the registrant or the assignee of record;
19      (2)  All registrations granted under this chapter and not
20           renewed in accordance with this chapter;
21      (3)  Any registration concerning which a court of competent
22           jurisdiction shall find that:
23           (A)  The registered mark has been abandoned;

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 1           (B)  The registrant is not the owner of the mark;
 2           (C)  The registration was granted improperly;
 3           (D)  The registration was obtained fraudulently;
 4           (E)  The mark is or has become the generic name for the
 5                goods or services, or a portion thereof, for which
 6                it has been registered; or
 7           (F)  The registered mark is so similar, as to likely
 8                cause confusion or mistake or to deceive, to a
 9                mark registered by another person in the United
10                States Patent and Trademark Office prior to the
11                date of the filing of application for registration
12                by the registrant hereunder, and not abandoned;
13                provided that should the registrant prove that the
14                registrant is the owner of a concurrent
15                registration of a mark in the United States Patent
16                and Trademark Office covering an area including
17                this State, the registration under this chapter
18                shall not be cancelled; or
19      (4)  When a court of competent jurisdiction shall order
20           cancellation of a registration on any ground.
21         -10  Classification.  The secretary shall by rules
22 adopted pursuant to chapter 91 establish a classification of
23 goods and services for convenience of administration of this

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 1 chapter, but not to limit or extend the applicant's or
 2 registrant's rights, and a single application for registration of
 3 a mark may include any or all goods upon which, or services with
 4 which, the mark is actually being used indicating the appropriate
 5 class or classes of goods or services.  When a single application
 6 includes goods or services which fall within multiple classes,
 7 the secretary may require payment of a fee for each class.  To
 8 the extent practical, the classification of goods and services
 9 should conform to the classification adopted by the United States
10 Patent and Trademark Office.
11         -11  Fraudulent registration.  Any person who shall for
12 that person, or on behalf of any other person, procure the filing
13 or registration of any mark in the office of the secretary under
14 this chapter, by knowingly making any false or fraudulent
15 representation or declaration, orally or in writing, or by any
16 other fraudulent means, shall be liable to pay all damages
17 sustained in consequence of such filing or registration, to be
18 recovered by or on behalf of the party injured thereby in any
19 court of competent jurisdiction.
20         -12  Infringement.  Subject to section    -16, any
21 person who shall:
22      (1)  Use, without the consent of the registrant, any
23           reproduction, counterfeit, copy, or colorable imitation

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 1           of a mark registered under this chapter in connection
 2           with the sale, distribution, offering for sale, or
 3           advertising of any goods or services on or in
 4           connection with which the use is likely to cause
 5           confusion or mistake or to deceive as to the source of
 6           origin of such goods or services; or
 7      (2)  Reproduce, counterfeit, copy or colorably imitate any
 8           such mark and apply such reproduction, counterfeit,
 9           copy or colorable imitation to labels, signs, prints,
10           packages, wrappers, receptacles, or advertisements
11           intended to be used upon or in connection with the sale
12           or other distribution in this State of such goods or
13           services;
14 shall be liable in a civil action by the registrant for any and
15 all of the remedies provided in section    -14, except that under
16 paragraph (2) the registrant shall not be entitled to recover
17 profits or damages unless the acts have been committed with the
18 intent to cause confusion or mistake or to deceive.
19         -13  Injury to business reputation; dilution.(a)  The
20 owner of a mark which is famous in this State shall be entitled,
21 subject to the principles of equity and upon such terms as the
22 court deems reasonable, to an injunction against another person's
23 commercial use of a mark or trade name, if such use begins after

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 1 the mark has become famous and causes dilution of the distinctive
 2 quality of the mark, and to obtain such other relief as is
 3 provided in this section.  In determining whether a mark is
 4 distinctive and famous, a court may consider factors such as, but
 5 not limited to:
 6      (1)  The degree of inherent or acquired distinctiveness of
 7           the mark in this State;
 8      (2)  The duration and extent of use of the mark in
 9           connection with the goods and services with which the
10           mark is used;
11      (3)  The duration and extent of advertising and publicity of
12           the mark in this State;
13      (4)  The geographical extent of the trading area in which
14           the mark is used;
15      (5)  The channels of trade for the goods or services with
16           which the mark is used;
17      (6)  The degree of recognition of the mark in the trading
18           areas and channels of trade in this State used by the
19           mark's owner and the person against whom the injunction
20           is sought;
21      (7)  The nature and extent of use of the same or similar
22           mark by third parties; and
23      (8)  Whether the mark is the subject of a state registration

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 1           in this State, or a federal registration under the Act
 2           of March 3, 1881, or under the Act of February 20,
 3           1905, or on the principal register.
 4      (b)  In an action brought under this section, the owner of a
 5 famous mark shall be entitled only to injunctive relief in this
 6 State, unless the person against whom the injunctive relief is
 7 sought wilfully intended to trade on the owner's reputation or to
 8 cause dilution of the famous mark.  If such wilful intent is
 9 proven, the owner shall also be entitled to the remedies set
10 forth in this chapter, subject to the discretion of the court and
11 the principles of equity.
12      (c)  The following shall not be actionable under this
13 section:
14      (1)  Fair use of a famous mark by another person in
15           comparative commercial advertising or promotion to
16           identify the competing goods or services of the owner
17           of the famous mark;
18      (2)  Noncommercial use of the mark; and
19      (3)  All forms of news reporting and news commentary.
20         -14  Remedies.(a)  Any owner of a mark registered
21 under this chapter may proceed by suit to enjoin the manufacture,
22 use, display, or sale of any counterfeits or imitations thereof
23 and any court of competent jurisdiction may grant injunctions to

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 1 restrain such manufacture, use, display, or sale as may be deemed
 2 just and reasonable by that court, and may require the defendants
 3 to pay to the owner all profits derived from and all damages
 4 suffered by reason of such wrongful manufacture, use, display, or
 5 sale.  The court may also order that any such counterfeit or
 6 imitation in the possession or under the control of any defendant
 7 in such case be delivered to an officer of the court, or to the
 8 complainant, to be destroyed.  The court, in its discretion, may
 9 enter judgment for an amount not to exceed three times such
10 profits and damages and reasonable attorneys' fees of the
11 prevailing party in such cases where the court finds the other
12 party committed such wrongful acts with knowledge or in bad faith
13 or otherwise as according to the circumstances of the case.
14      (b)  The enumeration of any right or remedy in this section
15 shall not affect a registrant's right to prosecute under any
16 penal law of this State.
17         -15  Forum for actions regarding registration; service
18 on out-of-state registrants.(a)  Actions to require
19 cancellation of a mark registered pursuant to this chapter or in
20 mandamus to compel registration of a mark pursuant to this
21 chapter shall be brought in the circuit court.  In an action in
22 mandamus, the proceeding shall be based solely upon the record
23 before the secretary.  In an action for cancellation, the

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 1 secretary shall not be made a party to the proceeding but shall
 2 be notified of the filing of the complaint by the clerk of the
 3 court in which it is filed and shall be given the right to
 4 intervene in the action.
 5      (b)  In any action brought against a nonresident registrant,
 6 service may be effected upon the secretary as agent for service
 7 of the registrant in accordance with the procedures established
 8 for service upon nonresident corporations and business entities
 9 under section 634-31.
10         -16  Common law rights.  Nothing in this chapter shall
11 adversely affect the rights or the enforcement of rights in marks
12 acquired in good faith at any time at common law.
13         -17  Fees.  The secretary shall by rules adopted
14 pursuant to chapter 91 adopt the fees payable for the various
15 applications and recording fees and for related services.  Unless
16 specified by the secretary, the fees payable are not refundable.
17         -18  Intent of chapter.  The intent of this chapter is
18 to provide a system of state trademark registration and
19 protection substantially consistent with the federal system of
20 trademark registration and protection under the Trademark Act of
21 1946, as amended.  To that end, the construction given the
22 federal Act should be examined as persuasive authority for

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 1 interpreting and construing this chapter."
 2      SECTION 2.  Chapter 482, Hawaii Revised Statutes, is
 3 repealed.
 4      SECTION 3.  The attorney general shall review the
 5 requirements imposed by the new chapter added by section 1 of
 6 this Act to determine whether any additional statutory changes
 7 are necessary, in order to ensure both the effective
 8 implementation of that chapter and the continued protection of
 9 existing trademarks, prints, labels, and trade names.  The
10 attorney general shall report findings and recommendations,
11 including any proposed implementing legislation, to the
12 legislature no later than twenty days before the convening of the
13 regular session of 2000.
14      SECTION 4.  If any provision of this Act, or the application
15 thereof to any person or circumstance is held invalid, the
16 invalidity does not affect other provisions or applications of
17 the Act which can be given effect without the invalid provision
18 or application, and to this end the provisions of this Act are
19 severable.
20      SECTION 5.  This Act does not affect rights and duties that
21 matured, penalties that were incurred, and proceedings that were
22 begun, before its effective date.

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 1      SECTION 6.  This Act shall take effect upon its approval.
 3                              INTRODUCED BY:______________________