History: Laws 1989, ch. 156, § 7.

ARTICLE 3B
Trademarks

57-3B-1. Short title.

    This act [57-3B-1 to 57-3B-17 NMSA 1978] may be cited as the "Trademark Act".

History: Laws 1997, ch. 197, § 1.

                                               ANNOTATIONS

Am. Jur. 2d, A.L.R. and C.J.S. references. -- Trademark licensor's liability for injury or
death allegedly due to defect in licensed product, 90 A.L.R.4th 981.

Application of secondary meaning test in action for trademark or tradename
infringement under § 43(a) of the Lanham Act (15 USCS § 1125(a)), 86 A.L.R. Fed.
489.

Liability as vicarious or contributory infringer under Lanham Act - modern cases, 152
A.L.R. Fed. 573.

57-3B-2. Purpose and intent of act.

    The purpose of the Trademark Act is to provide a system of state trademark
registration and protection substantially consistent with the federal system of trademark
registration and protection under the Trademark Act of 1946, as amended. It is the
intent that the construction given the federal act should be examined as persuasive
authority for interpreting and construing the Trademark Act.

History: Laws 1997, ch. 197, § 2.

                                               ANNOTATIONS

Cross references. -- For the federal Trademark Act of 1946, see 15 U.S.C. § 1051 et
seq.

Scope of the article. -- Article 3B lacks any provision expressly retaining common-law
trademark rights. It is thus likely that trademark infringement claims must be based on
trademarks recognized under federal trademark law or the New Mexico Trademark Act.
To the extent that such a claim exists, however, it is likely to have the same elements as
a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq.
Guidance Endodontics, LLC v. Dentsply Int'l, Inc., 708 F.Supp.2d 1209 (D.N.M. 2010).
57-3B-3. Definitions.

    As used in the Trademark Act:

    A. "applicant" includes the person filing an application for registration of a mark
under the Trademark Act as well as the legal representatives, successors or assigns of
the person;

    B. "dilution" means the lessening of the capacity of the registrant's mark to identify
and distinguish goods or services regardless of the presence or absence of:

         (1) competition between the parties; or

         (2) the likelihood of confusion, mistake or deception;

    C. "mark" includes any trademark or service mark entitled to registration under the
Trademark Act whether registered or not;

    D. "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 the
Trademark Act, includes 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;

    E. "registrant" includes the person to whom the registration of a mark under the
Trademark Act is issued as well as the legal representative, successors or assigns of
the person;

    F. "secretary" means the secretary of state or the secretary's designee charged with
the administration of the Trademark Act;

    G. "service mark" means any word, name, symbol, device or any combination of
these used by a person to identify and distinguish the services of one person, including
a unique service, from the services of other persons and to indicate the source of the
services, even if that source is unknown; provided, titles and character names used by a
person and other distinctive features of radio or television programs may be registered
as service marks notwithstanding that they or the programs may advertise the goods of
the sponsor;

    H. "trademark" means any word, name, symbol, device or any combination of these
used by a person to identify and distinguish the goods of the person, including a unique
product, from those manufactured or sold by others, and to indicate the source of the
goods, even if that source is unknown;

    I. "trade name" means any name used by a person to identify a business or
vocation of the person; and
    J. "use" means the bona fide use of a mark in the ordinary course of trade and not
made merely to reserve a right in the mark. For the purposes of the Trademark Act, a
mark is deemed to be in use:

         (1) on goods when it is placed in any manner on the goods or on the
containers or the displays associated with it or on the tags or labels affixed to them, or if
the nature of the goods makes the placement impracticable, then on documents
associated with the goods or their sale, and the goods are sold or transported in
commerce in this state; and

         (2) on services when it is used or displayed in the sale or advertising of
services and the services are rendered in this state.

History: Laws 1997, ch. 197, § 3.

57-3B-4. Registrability.

    A. 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:

         (1) consists of or comprises immoral, deceptive or scandalous matter;

         (2) consists of or comprises matter that may disparage or falsely suggest a
connection with persons living or dead, institutions, beliefs or national symbols or that
may bring them into contempt or disrepute;

         (3) consists of or comprises the flag, coat of arms or other insignia of the
United States or of any state, municipality, foreign nation or any simulation of these;

         (4) consists of or comprises the name, signature or portrait identifying a
particular living individual, except by the individual's written consent;

         (5) consists of a mark that:

             (a) when used on or in connection with the goods or services of the applicant,
is merely descriptive or deceptively misdescriptive of them;

             (b) when used on or in connection with the goods or services of the applicant,
is primarily geographically descriptive or deceptively misdescriptive of them;

             (c) is primarily merely a surname; provided, however, nothing in this
subsection shall prevent the registration of a mark used by the applicant that has
become distinctive of the applicant's goods or services. The secretary may accept as
evidence that the mark has become distinctive as used on or in connection with the
applicant's goods or services, proof of continuous use of it as a mark by the applicant in
this state for the five years before the date on which the claim of distinctiveness is
made; or

             (d) consists of or comprises a mark that so resembles a mark registered in
this state or a mark or trade name previously used by another and not abandoned, as to
be likely, when used on or in connection with the goods or services of the applicant, to
cause confusion or mistake or to deceive.

    B. A mark is deemed to be abandoned when either of the following occurs:

         (1) when its use has been discontinued with intent not to resume that use.
Intent not to resume may be inferred from circumstances; nonuse for two consecutive
years shall constitute prima facie evidence of abandonment; or

         (2) when any course of conduct of the owner, including acts of omission as
well as commission, causes the mark to lose its significance as a mark.

History: Laws 1997, ch. 197, § 4.

57-3B-5. Application of registration.

    A. Subject to the limitations set forth in the Trademark Act, any person who uses a
mark may file in the office of the secretary on a form prescribed by the secretary an
application for registration of that mark setting forth, but not limited to, the following
information:

         (1) the name and business address of the person applying for the registration;
and if a corporation, the state of incorporation; if a partnership, the state in which the
partnership is organized and the names of the general partners, as specified by the
secretary;

         (2) the goods or services on or in connection with which the mark is used and
the mode or manner in which the mark is used on or in connection with the goods or
services and the class in which the goods or services fall;

         (3) the date when the mark was first used anywhere and the date when it was
first used in this state by the applicant or a predecessor in interest;

         (4) a written description of the mark; and

         (5) a statement that the applicant is the owner of the mark, that the mark is in
use and that, to the knowledge of the person verifying the application, no other person
has registered, either federally or in this state, or has the right to use the mark either in
the identical form of it or in the near resemblance thereto as to be likely, when applied to
the goods or services of the other person, to cause confusion, mistake or to deceive.
    B. The secretary may also require a statement as to whether an application to
register the mark or portions of it or a composite of it, has been filed by the applicant or
a predecessor in interest in the United States patent and trademark office; and, if so, the
applicant shall provide full particulars with respect to it including the filing date, serial
number of each application, its status and, if any application was finally refused
registration or has otherwise not resulted in a registration, the reason for the refusal or
for not being registered.

    C. The secretary may also require that a drawing of the mark or three specimens
showing the mark as it is actually used accompany the application and that it complies
with the requirements specified by the secretary.

    D. The application shall be signed and verified by oath, affirmation or declaration
subject to perjury laws by the applicant or by a member of the firm or an officer of the
corporation or association applying for registration.

    E. The application shall be accompanied by a fee of twenty-five dollars ($25.00) for
each application.

History: Laws 1997, ch. 197, § 5.

                                               ANNOTATIONS

Federal trademark holder's rights not always superior to state holder's. -- While a
generalization has sometimes been made that the holder of a federal trademark
registration has rights superior to the holder of a state registered trademark and
superior to one who uses a trademark without any registration, this generalization is
much too inclusive and is incorrect with respect to certain fact situations. In the first
place, if the state registrant or nonregistrant actually was the prior user in the United
States, and the federal registrant was the second to use the mark, the superior right lies
with the state registrant or nonregistrant. If the state registrant or nonregistrant was the
second user in the United States, but was the first user in a certain geographical area
with continuous use from at least July 5, 1947, the second user has the prior right in that
area. Even if the federal registrant is the prior user of the mark, the state registrant or
nonregistrant can continue to use the mark unless he is using it "in commerce within the
control of congress." Finally, the second user, whether a state registrant or
nonregistrant, is not infringing on the federal registrant's trademark unless there is such
a confusing similarity between the marks that consumer confusion, consumer mistake
or consumer deception occurs. Whether there is a likelihood of confusion is a question
of fact. 1961 Op. Att'y Gen. No. 61-106.

Federal trademarks prevail in interstate commerce. -- A trademark registered under
the Federal Trademark Law in cases involving interstate commerce will generally prevail
over the same trademark registered under the state law. 1957 Op. Att'y Gen. No. 57-45
(rendered under former law).
State trademarks not given exclusive right of use in state. -- Trademarks
registered under the state statute are not conferred any exclusive right to the use of a
trademark in the state. 1957 Op. Att'y Gen. No. 57-45 (rendered under former law).

Am. Jur. 2d, A.L.R. and C.J.S. references. -- 74 Am. Jur. 2d Trademarks and
Tradenames §§ 1 to 8, 12 to 14, 72.

Time as an element in determining whether a descriptive term has acquired a
secondary meaning entitling it to protection against unfair competition, 40 A.L.R. 433.

Modern status of pendent federal jurisdiction, under 28 U.S.C.S. § 1338(b), over state
claim of unfair competition when joined with related claim under federal trademark laws,
62 A.L.R. Fed. 428.

What constitutes abandonment of trademark by conduct causing mark to lose
significance as indication of origin, under § 45 of Lanham Act (15 USC § 1127(b)), 81
A.L.R. Fed. 677.

Design on recreational object as valid trademark, 82 A.L.R. Fed. 9

What constitutes abandonment of trademark by discontinuance of use with intent not to
resume it, under § 45 of Lanham Act (15 USC § 1127), 83 A.L.R. Fed. 295.

87 C.J.S. Trademarks, Tradenames and Unfair Competition §§ 21 to 28, 126 to 137.

57-3B-6. Filing of application.

    A. Upon the filing of an application for registration and payment of the application
fee, the secretary may cause the application to be examined for conformity with the
Trademark Act.

    B. The applicant shall provide any additional pertinent information requested by the
secretary, including a description of a design mark and may make, or authorize the
secretary in writing to make, any reasonable amendments to the application as may be
requested by the secretary or deemed by the applicant to be advisable to respond to
any objection or rejection of the application.

    C. The secretary may require the applicant to disclaim an unregistrable component
of a mark that would otherwise be 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 becomes distinctive of the applicant's or registrant's goods or
services.
    D. The secretary may amend the application upon the applicant's written
agreement, or the secretary may require a new application to be submitted.

    E. If the applicant is found not to be entitled to registration, the secretary shall
advise the applicant of the reasons for non-registration. The applicant shall have thirty
days from the date of notification of non- registration from the secretary in which to reply
or to amend the application for reexamination. This procedure may be repeated until the
secretary makes a final refusal of registration of the mark or the applicant fails to reply
or amend the application within the period specified by the secretary, in which case the
application shall be deemed to have been abandoned.

    F. The secretary shall grant priority to the applications in order of filing. In the case
of any application rejected because of a prior-filed application of the same or
confusingly similar mark for the same or related goods or services, the applicant may
bring an action for cancellation of the registration on grounds of prior or superior rights
to the mark as provided in Section 11 [57-3B-11 NMSA 1978] of the Trademark Act.

History: Laws 1997, ch. 197, § 6.

                                               ANNOTATIONS

Authority of secretary. -- Under the former act, the secretary of state did not have the
duty or authority to review the validity of trademarks or trade names properly tendered
for filing. The former act required the registrant to determine whether a name or mark is
identical or similar to an existing registration and that he has the right to use such mark
or name. 1988 Op. Att'y Gen. No. 88-57.

57-3B-7. Certificate of registration.

    A. Upon compliance by the applicant with the requirements of the Trademark Act,
the secretary shall issue and deliver a certificate of registration to the applicant. The
certificate of registration shall be issued under the signature of the secretary and the
seal of the state, and it shall show:

         (1) the name and business address;

         (2) if a corporation, limited liability company or partnership, the state of
incorporation, or if a partnership, the state in which the partnership is organized;

         (3) the date claimed for the first use of the mark anywhere;

         (4) the date claimed for the first use of the mark in New Mexico;

         (5) the class and description of goods or services on or in connection with
which the mark is used; and
         (6) the registration date and the term of registration.

    B. A certificate of registration issued by the secretary or a copy of the certificate of
registration duly certified by the secretary shall be admissible in evidence as competent
and sufficient proof of the registration of the mark in any actions or judicial proceedings
in this state.

History: Laws 1997, ch. 197, § 7.

                                               ANNOTATIONS

Generally speaking, trademarks are subject to assignment or transfer except
when such are identifiable as personal to an individual, exempli gratia, an artist's mark
or signature. Thus, to enjoy the protection afforded under our registration laws, it would
only be necessary that the fact of such assignment be made known to the specific
recorder (secretary of state) by filing written and substantiated notice thereof. 1958 Op.
Att'y Gen. No. 58-81 (rendered under former law).

Failure to record notice of assignment leaves assignee unprotected. -- No period
of time is provided for in which the assignee of trademark right must record or otherwise
give public notice of the fact of transfer, but also, that a failure to effect such notice
leaves the assignee without protection of the law as would otherwise be provided. 1958
Op. Att'y Gen. No. 58-81 (rendered under former law).

Am. Jur. 2d, A.L.R. and C.J.S. references. -- 74 Am. Jur. 2d Trademarks and
Tradenames §§ 21, 26, 27.

87 C.J.S. Trademarks, Tradenames and Unfair Competition §§ 171 to 179.

57-3B-8. Duration and renewal.

    A. A registration of a mark is effective for ten years from the date of registration. An
application for renewal shall be filed within six months prior to its expiration in the
manner required by the secretary. The renewed registration shall be effective for ten
years from the date of expiration of the original registration. The application for renewal
shall be accompanied by the renewal fee. A registration of a mark may be renewed for
successive periods of ten years as provided in this section.

    B. All applications for renewal, whether of registrations made under the Trademark
Act or of registrations made under any act prior to the effective date of that act, shall
include a verified statement that the mark has been and is still in use and include a
specimen showing actual use of the mark on or in connection with the goods or
services.

History: Laws 1997, ch. 197, § 8.
57-3B-9. Assignments; changes of name and other instruments.

    A. A mark and its representation shall be assignable with the good will of the
business in which the mark is used, or with that part of the good will of the business
connected with the use of and symbolized by the mark. The assignment shall be by
instruments in writing duly executed and may be recorded with the secretary upon
payment of a twenty-five dollar ($25.00) recording fee. The secretary, upon recording
the assignment, shall issue in the name of the assignee a new certificate for the
remainder of the term of the registration or the last renewal of the registration. An
assignment of a registration shall be void as against any subsequent purchaser for
valuable consideration without notice unless it is recorded with the secretary within
three months after its date or unless it is recorded prior to the subsequent purchase.

    B. A registrant or applicant effecting a change of the name of the person to whom
the mark was issued or for whom an application was filed may record a certificate of
change of name of the registrant or applicant with the secretary upon payment of the
recording fee specified in Subsection A of this section. The secretary may issue to the
owner a certificate of amendment of registration for the remainder of the term of
registration or the last renewal of that registration.

    C. Other instruments that relate to a mark registered or a pending application
include licenses, security interests or mortgages, and they may be recorded in the
discretion of the secretary provided the instrument is in writing and has been duly
executed.

    D. Acknowledgment shall be prima facie evidence of the execution of an
assignment or other instrument and, when recorded by the secretary, the record shall
be prima facie evidence of execution. A photocopy of an instrument specified in this
section shall be accepted for recording if it is certified by any of the parties thereto or
their successors.

History: Laws 1997, ch. 197, § 9.

57-3B-10. Records.

    The secretary shall keep for public examination a record of all marks registered or
renewed under the Trademark Act and a record of all documents recorded pursuant to
Section 9 [57-3B-9 NMSA 1978] of the Trademark Act.

History: Laws 1997, ch. 197, § 10.

57-3B-11. Cancellation.

    The secretary shall cancel from the register, in whole or in part:
    A. a registration where the secretary shall receive a voluntary request for
cancellation from the registrant or the assignee of record;

    B. a registration granted under the Trademark Act and not renewed in accordance
with its provisions;

    C. a registration of which a court of competent jurisdiction finds that:

         (1) the registered mark has been abandoned;

         (2) the registrant is not the owner of the mark;

         (3) the registration was granted improperly;

         (4) the registration was obtained fraudulently;

         (5) the mark is or has become the generic name for the goods or services or
a portion of them, for which it has been registered; or

         (6) the registered mark is so similar as to likely 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 and not abandoned; or

    D. when a court of competent jurisdiction orders the cancellation of a registration on
any ground.

History: Laws 1997, ch. 197, § 11.

                                               ANNOTATIONS

Am. Jur. 2d, A.L.R. and C.J.S. references. -- When does product become generic
term so as to warrant cancellation of registration of mark, pursuant to § 14 of Lanham
Act (15 U.S.C.A. § 1064), 156 A.L.R. Fed. 131.

57-3B-12. Classification.

    The secretary shall by regulation establish a classification of goods and services for
convenience of administration of the Trademark Act but not to limit or extend the
applicant's or registrant's rights. 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 indicating the appropriate class or classes of goods or services. When a single
application includes goods or services that fall within multiple classes, the secretary
shall require payment of twenty-five dollars ($25.00) for each class. As far as practical
the classification of goods and services should conform to the classification adopted by
the United States patent and trademark office.
History: Laws 1997, ch. 197, § 12.

57-3B-13. Fraudulent registration.

    A person who, for himself on or [or on] behalf of any other person, procures the filing
or registration of any mark in the office of the secretary by knowingly making any false
or fraudulent representation or declaration, orally or in writing or by any other fraudulent
means, shall be liable to pay all damages sustained as a consequence of that filing or
registration recoverable by or on behalf of the injured party in any court of competent
jurisdiction.

History: Laws 1997, ch. 197, § 13.

                                               ANNOTATIONS

Bracketed material. -- The bracketed material was inserted by the compiler and is not
part of the law.

57-3B-14. Infringement.

    Any person shall be liable in a civil action by the registrant for any and all of the
remedies provided in Section 16 [57-3B-16 NMSA 1978] of the Trademark Act, who
shall:

    A. use, without the consent of the registrant, any reproduction, counterfeit, copy or
colorable imitation of a mark registered under the Trademark Act in connection with the
sale, distribution, offering for sale or advertising of any goods or services on or in
connection with which the use is likely to cause confusion or mistake or to deceive as to
the source of origin of the goods or services; or

    B. reproduce, counterfeit, copy or colorably imitate any such mark and apply the
reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used upon or in connection
with the sale or other distribution in this state of these goods or services.

    The registrant shall not be entitled to recover profits or damages under Subsection B
of this section unless the acts have been committed with the intent to cause confusion
or mistake or to deceive.

History: Laws 1997, ch. 197, § 14.

                                               ANNOTATIONS

Within state, federal registrant inferior to prior state registrant. -- When plaintiff,
doing business solely in the Northeast, applied for federal registration in the United
States patent office in 1968 and received registration in 1969, and defendant, doing
business solely in New Mexico, applied for the same trademark under this act and
received it in 1968, since defendant did not learn of plaintiff until 1971, and defendant
did not adopt plaintiff's name to benefit from plaintiff's reputation, and there were no
customers in common, plaintiff did not have exclusive nationwide rights, and in New
Mexico defendant had the superior right to the mark. Value House v. Phillips Mercantile
Co., 523 F.2d 424 (10th Cir. 1975).

Am. Jur. 2d, A.L.R. and C.J.S. references. -- 74 Am. Jur. 2d Trademarks and
Tradenames §§ 84 to 144.

Right to protection against simulation of physical appearance or arrangement of place of
business, or vehicle, 17 A.L.R. 784, 28 A.L.R. 114.

Territory of operation: right to protection against use of trademark or tradename beyond
the territory in which plaintiff operates, 36 A.L.R. 922.

Protection of business or trading corporation against use of same or similar name by
another corporation, 66 A.L.R. 948, 115 A.L.R. 1241, 72 A.L.R.3d 8.

Actual competition as necessary element of trademark infringement or unfair
competition, 148 A.L.R. 12.

Conflict of laws, with respect to trademark infringement or unfair competition, including
the area of conflict between federal and state law, 148 A.L.R. 139.

Unfair competition by imitation in sign or design of business place, 86 A.L.R.3d 884.

Liability of better business bureau or similar organization in tort, 50 A.L.R.4th 745.

Name appropriation by employer or former employer, 52 A.L.R.4th 156.

World wide web domain as violating state trademark protection statute or state unfair
trade practices act, 96 A.L.R.5th 1.

Application of secondary meaning test in action for trade dress infringement under §
43(a) of the Lanham Act (15 USC § 1125(a)), 87 A.L.R. Fed. 15.

Parody as trademark or tradename infringement, 92 A.L.R. Fed. 25.

Admissibility and weight of consumer survey in litigation under trademark opposition,
trademark infringement, and false designation of origin provisions of Lanham Act (15
USC §§ 1063, 1114, and 1125), 98 A.L.R. Fed. 20.

"Post-sale confusion" in trademark or trade dress infringement actions under § 43 of the
Lanham Trade-Mark Act (15 USCA § 11125), 145 A.L.R. Fed. 407.
Liability as vicarious or contributory infringer under Lanham Act - modern cases, 152
A.L.R. Fed. 573.

When is trade dress "inherently distinctive" for purposes of trade dress infringement
actions under § 43(a) of Lanham Act (15 U.S.C.A. § 1125(a)) - Cases after Two Pesos,
161 A.L.R. Fed. 327.

Parody as trademark or tradename dilution or infringement, 179 A.L.R. Fed. 181.

87 C.J.S. Trademarks, Tradenames and Unfair Competition §§ 64 to 86, 135.

57-3B-15. Injury to business reputation; dilution.

    A. The owner of a mark that is famous in this state shall be entitled, subject to the
principles of equity, to an injunction against another's use of a mark, commencing after
the owner's mark becomes famous, that causes dilution of the distinctive quality of the
owner's mark and to obtain other relief as is provided in this section. In determining
whether a mark is famous a court may consider factors such as, but not limited to:

         (1) the degree of inherent or acquired distinctiveness of the mark in this state;

         (2) the duration and extent of use of the mark in connection with the goods
and services;

         (3) the duration and extent of advertising and publicity of the mark in this
state;

         (4) the geographical extent of the trading area in which the mark is used;

         (5) the channels of trade for the goods or services with which the owner's
mark is used;

         (6) the degree of recognition of the owner's mark in its trading area and in the
other's trading area, and in the channels of trade in this state; and

         (7) the nature and extent of use of the same or similar mark by third parties.

    B. The owner shall be entitled only to injunctive relief in this state in an action
brought under this section, unless the subsequent user willfully intended to trade on the
owner's reputation or to cause dilution of the owner's mark. If willful intent is proven, the
owner shall also be entitled to the remedies set forth in the Trademark Act, subject to
the discretion of the court and the principles of equity.

History: Laws 1997, ch. 197, § 15.

                                               ANNOTATIONS
Proving famousness. -- With no evidence of the fame of the Thermafil mark in New
Mexico, no argument why Thermafil would be considered famous under New Mexico
law, and concessions that Thermafil is not famous outside the endodontic marketplace
and that federal law requires such fame, the court dismissed the defendants' unfair
competition claim based on trademark dilution. Guidance Endodontics v. Dentsply Int'l,
Inc., 708 F.Supp.2d 1209 (D.N.M. 2010).

Section not limited to noncompeting products. -- Despite the "notwithstanding"
clause at the end of former 57-3-10 NMSA 1978 could not be limited to cases involving
noncompeting products. Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th
Cir. 1987).

Association of trademarks for parody purposes without corresponding association
of manufacturers, which might confuse the consumer as to who is the actual
manufacturer, does not tarnish or appropriate the good will of the manufacturer of the
high quality similar product. Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482
(10th Cir. 1987).

Am. Jur. 2d, A.L.R. and C.J.S. references. -- What constitutes "famous mark" for
purposes of federal Trademark Dilution Act, 15 U.S.C. § 1125(c), which provides
remedies for dilution of famous marks, 165 A.L.R. Fed. 625.

57-3B-16. Remedies.

    Any owner of a mark registered under the Trademark Act may proceed by suit to
enjoin the manufacture, use, display or sale of any counterfeits or imitations of that mark
and any court of competent jurisdiction may grant injunctions to restrain the
manufacture, use, display or sale as may be deemed just and reasonable by the court.
The court may require the defendants to pay to the owner all profits derived from or all
damages suffered by reason of the wrongful manufacture, use, display or sale, or by
both payment of all profits derived and damages suffered. The court may also order that
any counterfeits or imitations in the possession or under the control of any defendant in
the case be delivered to an officer of the court or to the complainant and that the
counterfeits or imitations be destroyed. The court, in its discretion, may enter judgment
for an amount not to exceed three times the profits and damages and for reasonable
attorney fees of the prevailing party in those cases where the court finds the other party
committed the wrongful acts with knowledge or in bad faith or as otherwise the
circumstances of the case may warrant. The enumeration of any right or remedy in this
section shall not affect a registrant's right to prosecute under any criminal law of this
state.

History: Laws 1997, ch. 197, § 16.

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