Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-1. Definitions.

As used in this chapter, the following words, unless the context otherwise requires, have the following meanings:

(1) “Applicant” means any person filing an application for registration of a mark under this chapter, his or her legal representatives, successors, or assigns;

(2) “Mark” means any trademark or service mark entitled to registration under this chapter whether registered or not;

(3) “Person” means any individual, firm, partnership, corporation, association, union, or other organization;

(4) “Registrant” means any person to whom the registration of a mark under this chapter is issued, his or her legal representative, successors, or assigns;

(5) “Service mark” means a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others;

(6) “Trade name” means a word, name, symbol, device, or any combination thereof used by a person to identify his or her business, vocation, or occupation and distinguish it from the business, vocation, or occupation of others;

(7) “Trademark” means any word, name, symbol, or device, or any combination of them, adopted and used by a person to identify goods made or sold by him or her, and to distinguish them from goods made or sold by others;

(8) For the purposes of this chapter, a trademark is deemed to be “used” in the state:

(i) On goods when it is placed in any manner on the goods or their containers or the displays associated with the goods or their containers, or on the tags or labels affixed to them, and the goods are sold or otherwise distributed in the state; and

(ii) On services when it is used or displayed in the sale or advertising of services, and the services are rendered in the state.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-2. Application for registration.

(a) Subject to the limitations stated in this chapter, any person who adopts and uses a mark may file in the office of the secretary of state, on a form to be furnished by him or her, an application for registration of that mark stating, but not limited to, the following information:

(1) The name and business address of the person applying for the registration, and, if a business corporation, non-profit corporation, limited liability partnership, limited partnership, or limited liability company, the state of incorporation or formation, as applicable;

(2) The goods or services in connection with which the mark is used and the mode or manner in which the mark is used 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 the state by the applicant or his or her predecessor in business; and

(4) A statement that the applicant is the owner of the mark and that no other person has the right to use the mark in the state, either in the identical form of the mark or in such near resemblance to it as might be calculated to deceive or to be mistaken for it.

(b) The application shall be signed and verified by the applicant or by a member of the firm or an officer of the business corporation non-profit corporation; authorized partner of the limited liability partnership; general partner of the limited partnership; authorized person of the limited liability company; or association applying for registration.

(c) The application shall be accompanied by a specimen or facsimile of the mark in triplicate.

(d) The application for registration shall be accompanied by a filing fee of fifty dollars ($50.00), payable to the secretary of state.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-3. Registrability.

No person may register a mark 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 bring them into contempt or disrepute;

(3) 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;

(4) Consists of or comprises the name, signature, or portrait of any living individual, except with his or her written consent;

(5) When applied to the goods or services of the applicant is merely descriptive or deceptively misdescriptive of them; or when applied to the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them; or is primarily merely a surname. Provided, however, that nothing in this subdivision shall prevent the registration of a mark used in the state by the applicant that has become distinctive of the applicant’s goods or services. The secretary of state may accept as evidence that the mark has become distinctive, as applied to the applicant’s goods or services, proof of continuous use as a mark by the applicant in the state or elsewhere for the five (5) years next preceding the date of the filing of the application for registration; or

(6) So resembles a mark registered in the state or a mark or trade name previously used in the 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.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-4. Certificate of registration.

(a) Upon compliance by the applicant with the requirements of this chapter, the secretary of state shall cause a certificate of registration to be issued and delivered to the applicant.

(b) 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 corporation, non-profit corporation, limited liability partnership, limited partnership or limited liability company, the state of incorporation, or formation, as applicable, of the person claiming ownership of the mark; the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in the state; the class of goods or services and a description of the goods or services on which the mark is used; a reproduction of the mark; the registration date; and the term of the registration.

(c) Any certificate of registration issued by the secretary of state under the provisions of this section, or a copy of a 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 action or judicial proceedings in any court of the state.

(d) Registration of or renewal of a mark provided by this chapter shall be constructive notice of the registrant’s claim of ownership and shall, when introduced in any action, be prima facie evidence of the registrant’s exclusive right to use the registered mark in this state on goods or services specified in the registration subject to any conditions or limitations stated in the registration, but shall not preclude an opposing party from proving any legal or equitable defense or defect that might have been asserted if the mark had not been registered.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-5. Duration and renewal.

(a) Registration of a mark under this chapter shall be effective for a term of ten (10) years from the date of registration and, upon application filed within six (6) months prior to the expiration of the term on a form to be furnished by the secretary of state, the registration may be renewed for a like term. A renewal fee of fifty dollars ($50.00), payable to the secretary of state, shall accompany the application for renewal of the registration.

(b) A mark registration may be renewed for successive periods of ten (10) years in like manner.

(c) The secretary of state shall notify registrants of marks under this chapter of the necessity of renewal within the year next preceding the expiration of the ten (10) years from the date of registration by writing to the last known address of the registrants.

(d) All applications for renewals under this chapter, whether of registrations made under this chapter or of registrations effected under any prior law, shall include a statement that the mark is still in use in the state.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-6. Assignment.

Any mark and its registration under this chapter 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. Assignment shall be by instruments in writing duly executed and may be recorded with the secretary of state upon the payment of a fee of twenty dollars ($20.00) payable to the secretary of state, who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of its last renewal. An assignment of any registration shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the secretary of state within three (3) months after the date of assignment or prior to any subsequent purchase.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-7. Records.

The secretary of state shall keep for public examination a record of all marks registered or renewed under this chapter.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-8. Cancellation.

The secretary of state shall cancel:

(1) Any registration that the secretary of state shall receive concerning a voluntary request for cancellation from the registrant or the assignee of record;

(2) Any registration granted and not renewed in accordance with the provision of this chapter;

(3) Any registration that the superior court 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 improperly granted;

(iv) That the registration was fraudulently obtained; or

(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 office, prior to the date of the filing of the application for registration by the registrant under this chapter, and not abandoned; provided, however, that should the registrant prove that he or she is the owner of a concurrent registration of his or her mark in the United States patent office covering an area including the state, the registration under this chapter shall not be cancelled;

(4) Any registration ordered cancelled by the superior court.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-9. Classification.

The secretary of state shall promulgate rules and regulations for the determination of classes of goods and services for the convenience of the administration of this chapter.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-10. Fraudulent registration.

Any person who shall for him or herself, or on behalf of any other person, procure the filing or registration of any mark in the office of the secretary of state 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 the filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-11. Infringement.

Subject to the provisions of § 6-2-14, any person who shall:

(1) Use, without 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 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

(2) Reproduce, counterfeit, copy, or colorably imitate any 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 conjunction with the sale or other distribution in the state of the goods or services; shall be liable to a civil action by the owner of the registered mark for any or all of the remedies provided in § 6-2-13, except that under this section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that the mark is intended to be used to cause confusion or mistake or to deceive.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-12. Injury to business reputation — Dilution.

Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark registered under this chapter or a mark valid at common law or a trade name valid at common law shall be a ground for injunctive relief notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-13. Remedies.

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, and the superior court may grant injunctions to restrain the manufacture, use, display, or sale as may be deemed just and reasonable by the court and may require the defendants to pay to the owner all profits derived from and all damages suffered by reason of the wrongful manufacture, use, display, or sale; and 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, to be destroyed.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-14. Common law rights.

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

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-15. Severability.

If any provision of any section of this chapter shall be held invalid, the remainder of the sections and the application of the provisions to persons or circumstances other than those as to which it is held invalid, shall not be affected thereby.

Title 6
Commercial Law — General Regulatory Provisions

Chapter 2
Registration and Protection of Trademarks

§ 6-2-16. Termination of prior registrations — Notice.

Any registration of trademarks in force on October 1, 1975 shall expire ten (10) years from the date of the registration or one year after October 1, 1975, whichever is later, and may be renewed by filing an application with the secretary of state on a form furnished by the secretary and paying the renewal fee within six (6) months prior to the expiration of the registration.