act-1998-0-73•Pennsylvania Act 1998-73 — NAMES (54 PA.C.S.) - OMNIBUS AMENDMENTS
Pennsylvania Act 1998-73 — NAMES (54 PA.C.S.) - OMNIBUS AMENDMENTS
act-1998-0-731998 Pa. Act 73Law
Act text
NAMES (54 PA.C.S.) - OMNIBUS AMENDMENTS
Act of Jun. 18, 1998, P.L. 518, No. 73 Cl. 54
Session of 1998
No. 1998-73
HB 1480
AN ACT
Amending Title 54 (Names) of the Pennsylvania Consolidated
Statutes, adding and changing definitions; making
classifications; and providing for registrability and
application for registration, duration and renewal, for
cancellation for damages for fraudulent registration, for
infringement, for injury to business or reputation and for
remedies.
The General Assembly of the Commonwealth of Pennsylvania
hereby enacts as follows:
Section 1. Sections 1102, 1103, 1111, 1112, 1114, 1116,
1121, 1123, 1124 and 1125 of Title 54 of the Pennsylvania
Consolidated Statutes are amended to read:
§ 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." A trademark shall be deemed to be
"adopted and used" in this Commonwealth when it is placed in any
manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto,
and such goods are sold or otherwise distributed in this
Commonwealth. A service mark shall be deemed to be "adopted and
used" in this Commonwealth when it is used or displayed in the
sale or advertising of services and the services are rendered in
this Commonwealth.]
"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." [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 and includes, without
limitation, the marks, names, symbols, titles, designations,
slogans, character names and distinctive features of radio or
other advertising used in commerce.] 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, [adopted and] used by a person to identify
[goods produced, manufactured or sold by the person,] and [to]
distinguish [them] the goods of such person, including a unique
product, from [goods produced,] 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.
§ 1103. Classification.
The [following] general classes of goods and services [are]
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. [The
department may, by regulation, amend the classification
established by this section if such amendment does not limit or
extend the rights of any applicant or registrant.] 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. [The classes are as follows:
GOODS
(1) Chemical products used in industry, science,
photography, agriculture, horticulture, forestry; artificial
and synthetic resins; plastics in the form of powders,
liquids or pastes, for industrial use; manures (natural and
artificial); fire extinguishing compositions; tempering
substances and chemical preparations for soldering; chemical
substances for preserving foodstuffs; tanning substances;
adhesive substances used in industry.
(2) Paints, varnishes, lacquers; preservatives against
rust and against deterioration of wood; coloring matters,
dyestuffs; mordants; natural resins; metals in foil and
powder form for painters and decorators.
(3) Bleaching preparations and other substances for
laundry use; cleaning, polishing, scouring and abrasive
preparations; soaps; perfumery, essential oils, cosmetics,
hair lotions; dentifrices.
(4) Industrial oils and greases (other than edible oils
and fats and essential oils); lubricants; dust laying and
absorbing compositions; fuels (including motor spirit) and
illuminants; candles, tapers, night-lights and wicks.
(5) Pharmaceutical, veterinary and sanitary substances;
infants' and invalids' foods; plasters, material for
bandaging; material for stopping teeth, dental wax;
disinfectants; preparations for killing weeds and destroying
vermin.
(6) Unwrought and partly wrought common metals and their
alloys; anchors, anvils, bells, rolled and cast building
materials; rails and other metallic materials for railway
tracks; chains (except driving chains for vehicles); cables
and wires (nonelectric); locksmiths' work; metallic pipes and
tubes; safes and cash boxes; steel balls; horseshoes; nails
and screws; other goods in nonprecious metal not included in
other classes; ores.
(7) Machines and machine tools; motors (except for land
vehicles); machine couplings and belting (except for land
vehicles); large size agricultural implements; incubators.
(8) Hand tools and instruments; cutlery, forks and
spoons; side arms.
(9) Scientific, nautical, surveying and electrical
apparatus and instruments (including wireless), photographic,
cinematographic, optical, weighing, measuring, signalling,
checking (supervision), lifesaving and teaching apparatus and
instruments; coin or counter-fed apparatus; talking machines;
cash registers; calculating machines; fire extinguishing
apparatus.
(10) Surgical, medical, dental and veterinary
instruments and apparatus (including artificial limbs, eyes
and teeth).
(11) Installations for lighting, heating, steam
generating, cooking, refrigerating, drying, ventilating,
water supply and sanitary purposes.
(12) Vehicles; apparatus for locomotion by land, air or
water.
(13) Firearms; ammunition and projectiles; explosive
substances; fireworks.
(14) Precious metals and their alloys and goods in
precious metals or coated therewith (except cutlery, forks
and spoons); jewelry, precious stones, horological and other
chronometric instruments.
(15) Musical instruments (other than talking machines
and wireless apparatus).
(16) Paper and paper articles, cardboard and cardboard
articles; printed matter, newspapers and periodicals, books;
bookbinding material; photographs; stationery, adhesive
materials (stationery); artists' materials; paint brushes;
typewriters and office requisites (other than furniture);
instructional and teaching material (other than apparatus);
playing cards; printers' type and cliches (stereotype).
(17) Gutta-percha, India rubber, balata and substitutes,
articles made from these substances and not included in other
classes; plastics in the form of sheets, blocks and rods,
being for use in manufacture; materials for packing, stopping
or insulating; asbestos, mica and their products; hose pipes
(nonmetallic).
(18) Leather and imitations of leather and articles made
from these materials and not included in other classes;
skins, hides; trunks and travelling bags; umbrellas, parasols
and walking sticks; whips, harness and saddlery.
(19) Building materials, natural and artificial stone,
cement, lime, mortar, plaster and gravel; pipes of
earthenware or cement; road-making materials; asphalt, pitch
and bitumen; portable buildings; stone monuments; chimney
pots.
(20) Furniture, mirrors, picture frames; articles (not
included in other classes) of wood, cork, reeds, cane,
wicker, horn, bone, ivory, whalebone, shell, amber, mother-
of-pearl, meerschaum, celluloid, substitutes for all these
materials, or of plastics.
(21) Small domestic utensils and containers (not of
precious metal or coated therewith); combs and sponges;
brushes (other than paint brushes); brush-making materials;
instruments and material for cleaning purposes; steel wool;
glassware, porcelain and earthenware, not included in other
classes.
(22) Ropes, string, nets, tents, awnings, tarpaulins,
sails, sacks; padding and stuffing materials (hair, capoc,
feathers, seaweed, etc.); raw fibrous textile materials.
(23) Yarns, threads.
(24) Tissues (piece goods); bed and table covers;
textile articles not included in other classes.
(25) Clothing, including boots, shoes and slippers.
(26) Lace and embroidery, ribbons and braid; buttons,
press buttons, hooks and eyes, pins and needles; artificial
flowers.
(27) Carpets, rugs, mats and matting; linoleums and
other materials for covering floors; wall hangings
(nontextile).
(28) Games and playthings; gymnastic and sporting
articles (except clothing); ornaments and decorations for
Christmas trees.
(29) Meat, fish, poultry and game; meat extracts;
preserved, dried and cooked fruits and vegetables; jellies,
jams; eggs, milk and other dairy products; edible oils and
fats; preserves, pickles.
(30) Coffee, tea, cocoa, sugar, rice, tapioca, sago,
coffee substitutes; flour and preparations made from cereals;
bread, biscuits, cakes, pastry and confectionery, ices,
honey, treacle; yeast, baking powder; salt, mustard; pepper,
vinegar, sauces, spices; ice.
(31) Agricultural, horticultural and forestry products
and grains not included in other classes; living animals;
fresh fruits and vegetables; seeds; live plants and flowers;
foodstuffs for animals, malt.
(32) Beer, ale and porter; mineral and aerated waters
and other nonalcoholic drinks; syrups and other preparations
for making beverages.
(33) Wines, spirits and liqueurs.
(34) Tobacco, raw or manufactured; smokers' articles;
matches.
SERVICES
(35) Advertising and business.
(36) Insurance and financial.
(37) Construction and repair.
(38) Communication.
(39) Transportation and storage.
(40) Material treatment.
(41) Education and entertainment.
(42) Miscellaneous.]
§ 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 [of any] identifying a particular living individual,
except [with his or her] by the individual's written consent.
(5) Consists of a mark which:
(i) when [applied to] used on or in connection with
the goods or services of the applicant is merely
descriptive or deceptively misdescriptive of them;
(ii) when [applied to] 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 [applied to] 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[, or elsewhere,] for the five years [next
preceding] before the date [of the filing of the application
for registration] 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 [applied to] 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.
§ 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 [business of the applicant]
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 [the
right to use such mark in this Commonwealth,] registered,
either federally or in this Commonwealth or has the right to
use such mark, either in the identical form thereof or in
[any] such near resemblance thereto, as [might be calculated
to deceive or to be mistaken therefor] 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).
§ 1114. Duration and renewal.
(a) General rule.--Registration of a mark under this chapter
shall be effective for a term of [ten] 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 [ten] 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).
§ 1116. Cancellation.
(a) General rule.--The department shall cancel from the
register under this chapter:
(1) All registrations under this chapter which are [more
than ten years old and] 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 [adoption and] 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).
§ 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, [verbally]
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.
§ 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 [owner of such
registered mark] 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 [knowledge that such mark is intended to be used] 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.
§ 1124. Injury to business or 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.]
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.
§ 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).
Section 2. This act shall take effect in 60 days.
APPROVED--The 18th day of June, A. D. 1998.
THOMAS J. RIDGE
Setzen Sie Ihre Recherche in ChatGPT oder Claude fort
Verbinden Sie Omnilex, um den Rechtskorpus über Ihren KI-Assistenten zu durchsuchen.