(1) “Abandoned” applies to a mark when either of the following occurs:
(a) When its use has been discontinued with intent not to resume such use. Intent not to resume use may be inferred from circumstances. Nonuse for 3 consecutive years shall constitute prima facie evidence of abandonment.
(b) When any course of conduct of the owner, including acts of omission or commission, causes the mark to lose its significance as a mark.
(2) “Applicant” means the person filing an application for registration of a mark under this chapter and the legal representatives, successors, or assigns of such person.
(3) “Certification mark” means any word, name, symbol, or device, or any combination thereof, used by a person other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
(4) “Collective mark” means a trademark or service mark used by the members of a cooperative, an association, or other collective group or organization, and includes marks used to indicate membership in a union, an association, or other organization.
(5) “Department” means the Florida Department of State or its designee charged with the administration of this chapter.
(6) “Dilution” means the lessening of the capacity of a mark to identify and distinguish goods or services, regardless of the presence or absence of:
(a) Competition between the owner of the mark and other parties.
(b) Likelihood of confusion, mistake, or deception.
(7) “Mark” includes any trademark, service mark, certification mark, or collective mark entitled to registration under this chapter, whether or not registered.
(8) “Person,” and any other word or term used to designate the applicant or other party entitled to a benefit or privilege or rendered liable under the provisions of this chapter, means a juristic person as well as a natural person. “Juristic person” includes a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.
(9) “Registrant” means the person to whom the registration of a mark under this chapter is issued and the legal representatives, successors, or assigns of such person.
(10) “Related company” means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
(11) “Service mark” means any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the services of such 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, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that the person or the programs may advertise the goods of the sponsor.
(12) “Trade name” means any name used by a person to identify a business or vocation of such person.
(13) “Trademark” means any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the goods of such person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if the source is unknown.
(14) “Use” means the bona fide use of a mark in the ordinary course of trade and not used merely for the purpose of reserving a right in a mark. For purposes of this chapter, a mark is deemed to be in use:
(a) On goods when:
1. The mark is placed in any manner on the goods, 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, on documents associated with the goods or their sale; and
2. The goods are sold or transported in this state.
(b) On services when the mark is used or displayed in the sale or advertising of services and the services are rendered in this state.
(1) A mark by which the goods or services of any 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;
(b) Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;
(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;
(d) Consists of or comprises a name, signature, or portrait identifying a particular living individual, except by her or his written consent, or the name, signature, or portrait of a deceased President of the United States during the lifetime of his widow or her widower, if any, except by the written consent of the widow or widower;
(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;
2. When used on or in connection with the goods or services of the applicant, is primarily geographically descriptive of them;
3. When used on or in connection with the goods or services of the applicant, is primarily geographically deceptively misdescriptive of them;
4. Is primarily merely a surname; or
5. Comprises any matter that, as a whole, is functional.
Except as expressly excluded in subparagraphs 3. and 5., nothing in this paragraph shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods or services. The department may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods or services, proof of substantially exclusive and continuous use thereof as a mark by the applicant in this state or elsewhere 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 or a mark or trade name previously used in this state by another and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive. Registration shall not be denied solely on the basis of reservation or registration by another of a corporate name or fictitious name that is the same or similar to the mark for which registration is sought.
(2) Subject to the provisions relating to the registration of trademarks and service marks, so far as they are applicable, collective and certification marks, including indications of regional origin, shall be registrable under this chapter, in the same manner and with the same effect as are trademarks and service marks, by persons, and nations, states, municipalities, and the like, exercising control over the use of the marks sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks and service marks. The Department of State may establish a separate register for such collective marks and certification marks.
(1) Subject to the limitations set forth in this chapter, any person who uses a trademark or service mark in this state may file with the department, in a manner and form complying with the requirements of the department, 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 such registration, and, if a business entity, the place of incorporation or organization;
(b) 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 in connection with such goods or services and the class or classes in which such goods or services fall;
(c) The date the mark was first used anywhere and the date it was first used in this state by the applicant, the applicant’s predecessor in interest, or a related company of the applicant; and
(d) A statement that the applicant is the owner of the mark, that the mark is in use, and that, to the best of the applicant’s knowledge, no other person except a related company has registered such mark in this state, or has the right to use such mark in this state, 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, to cause mistake, or to deceive.
(2) Every applicant for registration of a certification mark in this state shall file with the department, in a manner and form complying with the requirements of the department, an application setting forth, but not limited to, the following information:
(a) The information required by paragraph (1)(a);
(b) The date when the certification mark was first used anywhere and the date when it was first used in this state under the authority of the applicant;
(c) The manner in which and the conditions under which the certification mark is used in this state; and
(d) A statement that the applicant is exercising control over the use of the mark, that the applicant is not herself or himself engaged in the production or marketing of the goods or services to which the mark is applied, and that no person except the applicant or persons authorized by the applicant, or related companies thereof, has the right to use such mark in this state, 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, to cause mistake, or to deceive.
(3) Every applicant for registration of a collective mark in this state shall file with the department, in a manner and form complying with the requirements of the department, an application setting forth, but not limited to, the following information:
(a) The information required by paragraphs (1)(a) and (b);
(b) The date when the collective mark was first used anywhere and the date when it was first used in this state by any member of the applicant or a related company of such member;
(c) The class of persons entitled to use the mark, indicating their relationship to the applicant, and the nature of the applicant’s control over the use of the mark; and
(d) A statement that no person except the applicant or members of the applicant, or related companies thereof, has the right to use such mark in this state, 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, to cause mistake, or to deceive.
(4) The department may also require that a drawing of the mark, complying with the requirements of the department, accompany the application.
(5) Every application under this section shall be signed and verified by the applicant or by a member of the firm or an officer or other authorized representative of the business entity applying.
(6) Every application under this section shall be accompanied by three specimens or facsimiles showing the mark as actually used.
(7) Every application under this section shall be accompanied by a filing fee payable to the department in accordance with s. 495.191.
(1) Upon the receipt of an application for registration and payment of the application fee, the department may cause the application to be examined for conformity with this chapter.
(2) The applicant shall provide any additional pertinent information requested by the department, including a description of a design mark, and may make, or authorize the department to make, such amendments to the application as may be reasonably requested by the department or deemed by the applicant to be advisable to respond to any rejection or objection.
(3) The department may require the applicant to disclaim an unregistrable component of a mark otherwise registrable, 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 is or has become distinctive of the applicant’s or registrant’s goods or services.
(4) Amendments may be made by the department upon the application submitted by the applicant upon the applicant’s agreement, or a new application may be required to be submitted. Amendments to an otherwise properly filed application shall not affect the application filing date for purposes of determining the applicant’s or registrant’s filing priority rights.
(5) If the applicant is found not to be entitled to registration, the department shall advise the applicant of the rejection and of the reasons for rejection. The applicant shall have 3 months in which to reply or amend the application, in which event the application shall be reexamined. This procedure may be repeated until:
(a) The department makes final its refusal to register the mark; or
(b) The applicant fails to reply or amend the application within the specified period, whereupon the application shall be abandoned.
For good cause shown, such as the pendency of litigation involving the mark, the department may extend the period of time in which to respond to the rejection or suspend examination of the application.
(6) If the department makes final its refusal to register the mark, the applicant may seek review of such decision in accordance with ss. 120.569 and 120.57.
(7) In the event of multiple applications concurrently being processed by the department which seek registration of the same or confusingly similar marks for the same or related goods or services, the department shall grant priority to the applications in order of receipt. If a prior-received application is granted a registration, the other application or applications shall then be rejected. The applicant of a rejected application 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 s. 495.101(3).
495.041 Use by related companies.—Where a mark registered or unregistered is or may be used legitimately by related companies, such use shall inure to the benefit of the owner of the mark, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person is controlled by the registrant or applicant for registration of a mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of that registrant or applicant, as the case may be.
(1) The Department of State may require the applicant for registration to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
(2) No disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or her or his right of registration on another application if the disclaimed matter be or shall have become distinctive of her or his goods or services.
(1) Upon compliance by the applicant with the requirements of this chapter, the department 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 of State and the seal of the state, and it shall show the name and business address and, if a business entity, the place of incorporation or organization, of the person claiming ownership of the mark in this state, 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 or classes 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.
(2) Any certificate of registration issued by the department under the provisions hereof or a copy thereof duly certified by the department shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action or judicial proceedings in any court of this state, and shall be prima facie evidence of the validity of the registration, registrant’s ownership of the mark, and of registrant’s exclusive right to use the mark in this state on or in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein.
(1) Registration of a mark hereunder shall be effective for a term of 5 years from the date of registration and, upon application filed within 6 months prior to the expiration of such term, in a manner and form complying with the requirements of the department, the registration may be renewed for a like term beginning at the end of the expiring term. Every application under this section shall be accompanied by a filing fee, payable to the department in accordance with s. 495.191.
(2) A registration may be renewed for successive periods of 5 years in like manner.
(3) Any registration in effect on January 1, 2007, shall continue in effect for the unexpired term thereof and may be renewed by filing an application for renewal with the department in a manner and form complying with the requirements of the department and paying the renewal fee therefor within 6 months prior to the expiration of the registration.
(4) All applications for renewal under this chapter, whether of registrations made under this act or of registrations made under any prior acts, shall include a verified statement that the mark is still in use in this state, and shall include a specimen showing actual use of the mark on or in connection with the goods or services subject to the renewal application, or shall state that its nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.
495.081 Assignments; changes of name; security interests.—
(1) A registered mark or a mark for which an application for registration has been filed 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. Assignments shall be by an instrument in writing duly executed and may be recorded with the department upon the payment of the applicable fee. A photocopy of an assignment shall be accepted for recording if it is certified by any of the parties thereto, or their successors, to be a true and correct copy of the original. Upon recording of the assignment, the department 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.
(2) An assignment of any registration under this chapter shall be void against any subsequent purchaser for valuable consideration without notice, unless such assignment is recorded with the department within 3 months after the date of the assignment or prior to the subsequent purchase.
(3) A registrant or applicant for registration effecting a change of the name may record a certificate of change of name of the registrant or applicant with the department upon the payment of the recording fee payable to the department in accordance with s. 495.191. In the case of a pending application for a mark that becomes approved for registration, the department shall issue a certificate of registration in the registrant’s new name. In the case of a registered mark, the department shall issue a new certificate of registration in the registrant’s new name for the remainder of the term of the registration or last renewal thereof. A person’s failure to record a name change in accordance with this subsection shall not affect the person’s substantive rights in the mark or its registration.
(4) Acknowledgment shall be prima facie evidence of the execution of an assignment or other instrument and, when recorded by the department, the record shall be prima facie evidence of execution.
(5) Security interests in marks shall be created and perfected in accordance with chapter 679.
495.091 Records.—The department shall keep for public examination a record of all marks registered or renewed under this chapter, including all documents recorded under s. 495.081.
495.101 Cancellation.—The department shall cancel from the register:
(1) Any registration for which the department has received a voluntary request for cancellation by the registrant, which request shall be in a manner and form complying with the requirements of the department.
(2) All registrations granted under this chapter and not renewed in accordance with the provisions hereof.
(3) Any registration for which a court of competent jurisdiction finds that:
(a) The registered mark has been abandoned.
(b) The registrant is not the owner of the mark.
(c) The registration was granted improperly.
(d) The registration was obtained fraudulently.
(e) The mark is or has become the generic name for the goods or services, or a portion thereof, for which the mark has been registered.
(f) 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 canceled.
(g) In the case of a certification mark, that the registrant does not control or is not able to exercise control over the use of such mark; or engages in the production or marketing of any goods or services to which the certification mark is applied; or the registrant permits the use of the certification mark for purposes other than to certify; or the registrant discriminately refuses to certify or continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies. Nothing in this paragraph shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant.
(4) When a court of competent jurisdiction shall order cancellation of a registration on any ground.
(1) The following general classes of goods and services, conforming to the classification adopted by the United States Patent and Trademark Office, are established for convenience of administration of this chapter:
(a) Goods:
1. Class 1 Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.
2. Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.
3. Class 3 Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.
4. Class 4 Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.
5. Class 5 Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
6. Class 6 Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.
7. Class 7 Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.
8. Class 8 Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.
9. Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
10. Class 10 Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.
11. Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
12. Class 12 Vehicles; apparatus for locomotion by land, air or water.
13. Class 13 Firearms; ammunition and projectiles; explosives; fireworks.
14. Class 14 Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.
15. Class 15 Musical instruments.
16. Class 16 Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.
17. Class 17 Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.
18. Class 18 Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.
19. Class 19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
20. Class 20 Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.
21. Class 21 Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.
22. Class 22 Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials,except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.
23. Class 23 Yarns and threads, for textile use.
24. Class 24 Textiles and substitutes for textiles; household linen; curtains of textile or plastic.
25. Class 25 Clothing, footwear, headgear.
26. Class 26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.
27. Class 27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
28. Class 28 Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.
29. Class 29 Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; oils and fats for food.
30. Class 30 Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water).
31. Class 31 Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.
32. Class 32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
33. Class 33 Alcoholic beverages (except beers).
34. Class 34 Tobacco; smokers’ articles; matches.
(b) Services:
1. Class 35 Advertising; business management; business administration; office functions.
2. Class 36 Insurance; financial affairs; monetary affairs; real estate affairs.
3. Class 37 Building construction; repair; installation services.
4. Class 38 Telecommunications.
5. Class 39 Transport; packaging and storage of goods; travel arrangement.
6. Class 40 Treatment of materials.
7. Class 41 Education; providing of training; entertainment; sporting and cultural activities.
8. Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
9. Class 43 Services for providing food and drink; temporary accommodation.
10. Class 44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
11. Class 45 Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.
(c) Certification and collective membership marks:
1. Class 200 Collective membership marks.
2. Class A Certification marks for goods.
3. Class B Certification marks for services.
(d) The goods and services recited in collective trademark and collective service mark applications are assigned to the same classes that are appropriate for those goods and services in general.
(2) The establishment of the classes of goods and services set forth in subsection (1) is not for the purpose of limiting or extending the rights of the applicant or registrant. 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 comprised in one or more of the classes listed, but in the event that a single application includes goods or services in connection with which the mark is being used which fall within different classes of goods or services, a fee equaling the sum of the fees for registration in each class shall be payable.
495.121 Fraudulent registration.—Any person who shall for herself or himself, or on behalf of any other person, procure the filing or registration of any mark with the Department of State under the provisions hereof, by knowingly making any false or fraudulent representation or declaration, verbally or in writing, or by any other fraudulent means, shall be liable to pay all damages sustained in consequence of such filing or registration, and for punitive or exemplary damages, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction.
495.131 Infringement.—Subject to the provisions of s. 495.161, any person who shall, without the consent of the registrant:
(1) Use any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, to cause mistake, or to deceive; or
(2) Reproduce, counterfeit, copy, or colorably imitate a mark registered under this chapter and apply 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, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, to cause mistake, or to deceive;
shall be liable in a civil action by the owner of such registered mark for any or all of the remedies provided in s. 495.141, except that under subsection (2) hereof the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive.
(1) Any owner of a mark registered under this chapter 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 said court deemed just and reasonable, and may require the defendants to pay to such owner all profits derived from and/or all damages suffered by reason of such wrongful manufacture, use, display, or sale and to pay the costs of the action; and such court may also order that any such counterfeits or imitations in the possession or under the control of any defendant in such case be delivered to an officer of the court, or to the complainant, to be destroyed. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court may also award reasonable attorney’s fees to the prevailing party according to the circumstances of the case.
(2) The enumeration of any right or remedy herein shall not affect a registrant’s right to prosecute under any penal law of this state.
495.145 Forum for actions regarding registration.—An action seeking cancellation of a registration of a mark registered under this chapter may be brought in any court of competent jurisdiction in this state. Service of process on a nonresident registrant may be made in accordance with ss. 48.161 and 48.181. The department may not be made a party to cancellation proceedings.
(1) The owner of a mark that 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 and to obtain such other relief against another person’s commercial use of a mark or trade name if such use begins after the mark has become famous and is likely to cause dilution of the distinctive quality of the famous mark, as provided in this section. In determining whether a mark is distinctive and famous, a court may consider factors, including, but not limited to:
(a) The degree of inherent or acquired distinctiveness of the mark in this state.
(b) The duration and extent of use of the mark in connection with the goods and services with which the mark is used.
(c) The duration and extent of advertising and publicity of the mark in this state.
(d) The geographical extent of the trading area in which the mark is used.
(e) The channels of trade for the goods or services with which the mark is used.
(f) 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.
(g) The nature and extent of use of the same or similar mark by third parties.
(h) Whether the mark is the subject of a state registration in this state or a federal registration under the Federal Trademark Act of March 3, 1881, or the Federal Trademark Act of February 20, 1905, or a principal register registration under the Federal Trademark Act of July 5, 1946.
(2) 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 the 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, and the mark is registered in this state, the owner shall also be entitled to all remedies set forth in this chapter, subject to the discretion of the court and the principles of equity.
(3) The following shall not be actionable under this section:
(a) 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.
(b) Noncommercial use of the mark.
(c) All forms of news reporting and news commentary.
495.161 Common-law rights.—Nothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.
495.171 Effective date; repeal of conflicting acts.—
(1) This chapter, as amended by this act, shall be in force and take effect January 1, 2007, but shall not affect any suit, proceeding, or appeal then pending.
(2) Sections 506.06-506.13 are repealed on January 1, 2007, provided that as to any suit, proceeding, or appeal, and for that purpose only, pending at the time this chapter, as amended by this act, takes effect such repeal shall be deemed not to be effective until final determination of said pending suit, proceeding, or appeal.
495.181 Construction of chapter.—The intent of this chapter 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 should be examined as persuasive authority for interpreting and construing this chapter.
