CHAPTER 11

TRADEMARKS

Sec.

1101.  Short title of chapter.

1102.  Definitions.

1103.  Classification.

1111.  Registrability.

1112.  Application for registration.

1113.  Registration of mark.

1114.  Duration and renewal.

1115.  Assignment.

1116.  Cancellation.

1121.  Damages for fraudulent registration.

1122.  Disclaimer of unregistrable matter.

1123.  Infringement.

1124.  Injury to business or reputation; dilution.

1125.  Remedies.

1126.  Common law rights.

Enactment.  Chapter 11 was added December 16, 1982, P.L.1309, No.295, effective in 90 days.

Special Provisions in Appendix.  See section 7 of Act 295 of 1982 in the appendix to this title for special provisions relating to registration of trademark or service mark.

§ 1101.  Short title of chapter.

This chapter shall be known and may be cited as the "Pennsylvania Trademark Act."

§ 1102.  Definitions.

The following words and phrases when used in this chapter shall have, unless the context clearly indicates otherwise, the meanings given to them in this section:

"Abandoned."  A mark shall be deemed to be "abandoned" when either of the following occurs:

(1)  When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall constitute prima facie evidence of abandonment.

(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.

"Adopted and used."  (Deleted by amendment).

"Applicant."  Any person filing an application for registration of a mark under this chapter, or the legal representatives, successors or assigns of such person.

"Dilution."  The lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of a competition between the owner of the famous mark and other parties or likelihood of confusion, mistake or deception.

"Mark."  Includes any trademark or service mark entitled to registration under this chapter whether registered or not.

"Person."  This word or 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 to include a juristic person as well as a natural person. The term "juristic person" includes a firm, partnership, corporation, union, association or other organization capable of suing and being sued in a court of law.

"Registrant."  Any person who registers a mark under this chapter, or the legal representatives, successors or assigns of such person.

"Service mark."  Any word, name, symbol or devise or any combination thereof used by a person to identify and distinguish the services of one 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 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.

"Trademark."  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 that source is unknown.

"Trade name."  A word, name, symbol, device or any combination thereof used by a person to identify the business, vocation or occupation of the person and distinguish it from the business, vocation or occupation of others.

"Use."  The bona fide use of a mark in the ordinary course of trade and not merely to reserve a right in a mark. For the purposes of this chapter, a mark shall be deemed to be in use:

(1)  On goods when it is placed in any manner on the goods or other 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, then on documents associated with the goods or other sale and the goods are sold or transported in commerce in this Commonwealth.

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

(June 18, 1998, P.L.518, No.73, eff. 60 days)

§ 1103.  Classification.

The general classes of goods and services established by the United States Patent and Trademark Office in accordance with the International Classification System are to be utilized for the purpose of administering this chapter. An application for registration of a mark shall be limited to a single general class of goods or services. Nothing in this chapter shall be construed as limiting the registration of a mark to one general class.

(June 18, 1998, P.L.518, No.73, eff. 60 days)

Special Provisions in Appendix.  See section 7 of Act 295 of 1982 in the appendix to this title for special provisions relating to registration of trademark or service mark.

§ 1111.  Registrability.

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 which:

(1)  Consists of or comprises immoral, deceptive or scandalous matter.

(2)  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.

(3)  Consists of or comprises the flag or coat of arms or other insignia of the United States, the Commonwealth of Pennsylvania, or of any other state or municipality, or of any foreign nation, or any simulation thereof.

(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 which:

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

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

(iii)  is primarily merely a surname.

Nothing in this paragraph shall prevent the registration of a mark used in this Commonwealth by the applicant which has become distinctive of the goods or services of the applicant. The department may accept as evidence that the mark has become distinctive as used on or in connection with the goods or services of the applicant, proof of continuous use thereof as a mark by the applicant in this Commonwealth for the five years before the date on which the claim of distinctiveness is made.

(6)  Consists of or comprises a mark which so resembles a mark registered in this Commonwealth or a mark or trade name previously used in this Commonwealth by another and not abandoned, as to be likely, when used or in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive, unless it shall be proved to the satisfaction of the department that the person last applying for the registry of such mark is entitled thereto and is the owner thereof by right of prior adoption and use, in which case the date of the adoption shall determine the ownership, and shall be proved by verified statements of persons conversant with such dates. In case the department becomes satisfied after a hearing held as provided by section 1116(5) (relating to cancellation) that the person last applying for registry is entitled by priority of adoption and use in this Commonwealth to register such mark, it shall revoke the first registry thereof and, upon application and the payment of the fee, register the same in the name of such applicant.

(June 18, 1998, P.L.518, No.73, eff. 60 days)

§ 1112.  Application for registration.

(a)  General rule.--Subject to the limitations set forth in this chapter, any person who has adopted and used a mark in this Commonwealth may file in the department an application for registration of that mark, setting forth the following information:

(1)  The name of the person applying for such registration, the residence, location or place of business of the applicant, and, if a corporation, the jurisdiction of incorporation, or, if a partnership, the state in which the partnership is organized and the names of the general partners.

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

(3)  The date when the mark was first used anywhere and the date when it was first used in this Commonwealth by the applicant or the predecessor in interest.

(4)  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 Commonwealth, or has the right to use such mark, 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 or to cause mistake or to deceive.

(4.1)  Whether an application to register the mark or portions or a composite thereof 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 thereto, including the filing date and serial number of each application, the status thereof and, if any application was finally refused registration or has otherwise not resulted in a registration, the reasons therefor.

(5)  Such other information necessary to the administration of this chapter as the department may specify by regulation.

(b)  Facsimile.--The application shall be accompanied by a facsimile of such mark.

(b.1)  Application fee.--The application shall be accompanied by the fee specified in 15 Pa.C.S. § 153(a) (relating to fee schedule).

(c)  Cross reference.--See 15 Pa.C.S. § 134 (relating to docketing statement).

(Dec. 21, 1988, P.L.1444, No.177, eff. Oct. 1, 1989; June 18, 1998, P.L.518, No.73, eff. 60 days)

References in Text.  Section 153(a) of Title 15, referred to in subsec. (b.1), was repealed by the act of December 23, 2003, P.L.282, No.47, and a new subsec. (a) was added by the act of July 13, 2013, P.L.476, No.67, effective in 60 days, with the exception of subsec. (a)(16), which shall take effect upon publication of the notice under section 55 of Act 67.

§ 1113.  Registration of mark.

Upon compliance by the applicant with the requirements of this chapter, the department shall register the mark.

§ 1114.  Duration and renewal.

(a)  General rule.--Registration of a mark under this chapter shall be effective for a term of five years from the date of registration and, upon application for renewal filed within six months prior to the expiration of such term, the registration may be renewed for a like term from the end of the expiring term. A mark registration may be renewed for successive periods of five years in like manner. All applications for renewals shall include a statement that the mark is still in use in this Commonwealth and include a specimen showing actual use of the mark on or in conjunction with the goods or services. Any registration in force on the date on which the amendment to this section shall become effective shall continue in full force and effect for the unexpired term thereof and may be renewed by filing an application of renewal in accordance with this subsection.

(b)  Cross reference.--See 15 Pa.C.S. § 134 (relating to docketing statement).

(Dec. 21, 1988, P.L.1444, No.177, eff. Oct. 1, 1989; June 18, 1998, P.L.518, No.73, eff. 60 days)

Special Provisions in Appendix.  See section 7 of Act 295 of 1982 in the appendix to this title for special provisions relating to registration of trademark or service mark.

§ 1115.  Assignment.

(a)  General rule.--Any mark and its registration under this chapter 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. Assignment shall be by instrument in writing, duly executed, and may be recorded with the department. A registrant may record an assignment to itself to reflect of record a change in the name of the registrant.

(b)  Unrecorded assignments.--An assignment of any registration under this chapter shall be void as against any subsequent purchaser for valuable consideration and without notice, unless it is recorded with the department not later than the earlier of:

(1)  three months after the date of the assignment; or

(2)  such subsequent purchase.

(c)  Cross reference.--See 15 Pa.C.S. § 134 (relating to docketing statement).

(Dec. 21, 1988, P.L.1444, No.177, eff. Oct. 1, 1989)

1988 Amendment.  Act 177 added subsec. (c).

§ 1116.  Cancellation.

(a)  General rule.--The department shall cancel from the register under this chapter:

(1)  All registrations under this chapter which are not renewed in accordance with this chapter.

(2)  Any registration concerning which the department shall receive an application for cancellation thereof from the registrant or the assignee of record.

(3)  Any registration concerning which a court of competent jurisdiction shall find:

(i)  That the registered mark has been abandoned.

(ii)  That the registrant is not the owner of the mark.

(iii)  That the registration was granted improperly.

(iv)  That the registration was obtained fraudulently.

(iv.1)  That the mark is or has become the generic name for the goods or services or a portion thereof for while it has been registered.

(v)  That 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 under this chapter or former provisions of law and not abandoned, except that if the registrant proves that the registrant is the owner of a concurrent registration of the mark in the United States Patent and Trademark Office, covering an area including this Commonwealth, the registration under this chapter shall not be cancelled.

(4)  When a court of competent jurisdiction shall order cancellation of a registration on any ground.

(5)  Any registration in the following circumstances:

(i)  Where an applicant, by verified statement or other good and sufficient evidence, shall prove to the satisfaction of the department that the applicant is entitled by virtue of prior use to any mark theretofore registered in the department.

(ii)  In the case of a corporation having filed articles of dissolution or a decree of dissolution, any person may, at any time at least three years thereafter, present a petition to the department setting forth such fact.

(iii)  In the case of a person not having filed articles of dissolution or a decree of dissolution, but having discontinued or gone out of the business to which such registration is pertinent.

(iv)  When a registered mark has been abandoned or discontinued for a period of at least five years subsequent to registration and such abandonment and nonuse still persists.

In all circumstances enumerated in this paragraph, any person may present a petition for cancellation to the department. The petition shall set forth the pertinent facts relative thereto, and shall contain proof of service of notice of the petition on the person in whose name the registration is recorded, and asking that such registration be cancelled. The department shall fix a time to hear the parties concerned in the matter, and shall send, by certified mail, a notice of hearing to the person in whose name such registration is recorded. If, after hearing, the department is satisfied of the truth of the facts alleged in the petition in accordance with the provisions of this paragraph, it shall cancel the registration.

(b)  Cross reference.--See 15 Pa.C.S. § 134 (relating to docketing statement).

(Dec. 21, 1988, P.L.1444, No.177, eff. Oct. 1, 1989; June 18, 1998, P.L.518, No.73, eff. 60 days)

Special Provisions in Appendix.  See section 7 of Act 295 of 1982 in the appendix to this title for special provisions relating to registration of trademark or service mark.

Cross References.  Section 1116 is referred to in section 1111 of this title.

§ 1121.  Damages for fraudulent registration.

Any person who shall, for himself or herself or on behalf of any other person, procure the filing or registration of any mark in the department under this chapter 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 in consequence of such filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction.

(June 18, 1998, P.L.518, No.73, eff. 60 days)

§ 1122.  Disclaimer of unregistrable matter.

The department shall require unregistrable matter to be disclaimed, but such disclaimer shall not prejudice or affect the common law rights of the applicant then existing or thereafter arising in such disclaimed matter.

§ 1123.  Infringement.

(a)  General rule.--Subject to the provisions of section 1126 (relating to common law rights), any person who shall:

(1)  use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under this chapter in connection with the sale, offering for sale or advertising of any goods or services in a manner likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or

(2)  reproduce, counterfeit, copy or colorably imitate any such mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in connection with the sale or other distribution in this Commonwealth of such goods or services;

shall be liable to a civil action by the registrant for any or all of the remedies provided in section 1125 (relating to remedies), except that under paragraph (2) the registrant shall not be entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion or mistake or to deceive.

(b)  Exception.--The provisions of subsection (a) shall not apply to any advertising agency, publisher of newspapers, magazines or other advertising media accepting authorization for the reproduction or copy of any such mark innocently and in good faith in the usual course of business.

(June 18, 1998, P.L.518, No.73, eff. 60 days)

Cross References.  Section 1123 is referred to in section 1125 of this title.

§ 1124.  Injury to business or reputation; dilution.

The owner of a mark which is famous in this Commonwealth shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use of a mark or trade name if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark and to obtain such other relief as is provided in this section. In determining whether a mark is distinctive and 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 Commonwealth.

(2)  The duration and extent of use of the mark in connection with the goods and services with which the mark is used.

(3)  The duration and extent of advertising and publicity of the mark in this Commonwealth.

(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 mark is used.

(6)  The degree of recognition of the mark in the trading areas and channels of trade in this Commonwealth used by the mark's owner and the person against whom the injunction is sought.

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

(8)  Whether the mark is the subject of a registration in this Commonwealth or a Federal registration under the act of March 3, 1881 (21 Stat. 502) or the act of February 20, 1905 (33 Stat. 724), repealed by the Trademark Act of 1946 (60 Stat. 427, 15 U.S.C. § 1051 et seq.), or on the principal register.

In an action brought under this section, the owner of a famous mark shall be entitled only to injunctive relief in this Commonwealth 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, the owner shall also be entitled to the remedies set forth in this chapter, subject to the discretion of the court and the principles of equity. The following shall not be actionable under this section:

(1)  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.

(2)  Noncommercial use of a mark.

(3)  All forms of news reporting and news commentary.

(June 18, 1998, P.L.518, No.73, eff. 60 days)

§ 1125.  Remedies.

(a)  General rule.--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 court deemed just and reasonable, and may, except as provided in section 1123 (relating to infringement), require the defendants to pay to such owner all profits derived from and all damages suffered by reason of such wrongful manufacture, use, display or sale, 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. The court, in its discretion, may enter judgment for an amount not to exceed three times such profits and damages and/or reasonable attorney fees of the prevailing party in such cases where the court finds the other party committed such wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case.

(b)  Exception.--No owner of such a mark shall have such right of injunction against an advertising agency, publisher of newspapers, magazines or other advertising media accepting authorization for the reproduction or copy of any such mark innocently and in good faith in the usual course of business.

(c)  Criminal prosecutions unaffected.--The enumeration of any right or remedy in this chapter shall not affect the right of a registrant to prosecute under Title 18 (relating to crimes and offenses).

(June 18, 1998, P.L.518, No.73, eff. 60 days)

Cross References.  Section 1125 is referred to in section 1123 of this title.

§ 1126.  Common law rights.

Nothing in this chapter shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.

Cross References.  Section 1126 is referred to in section 1123 of this title.