CHAPTER 1. TRADEMARK ACT
IC 24-2
ARTICLE 2. TRADEMARKS, TRADE NAMES, AND
TRADE SECRETS
IC 24-2-1
Chapter 1. Trademark Act
IC 24-2-1-0.5
Intent; judicial or administrative interpretation
Sec. 0.5. This chapter is intended to provide a system of state
trademark registration and protection that is consistent with the
federal system of trademark registration and protection under the
Trademark Act of 1946. A judicial or an administrative interpretation
of a provision of the federal Trademark Act may be considered as
persuasive authority in construing a provision of this chapter.
As added by P.L.135-2006, SEC.1.
IC 24-2-1-1
Repealed
(Repealed by P.L.135-2006, SEC.21.)
IC 24-2-1-2
Definitions
Sec. 2. The following definitions apply throughout this chapter:
(1) "Abandoned" means either of the following:
(A) The person who owns the mark has discontinued use of
the mark and does not intend to resume use of the mark. A
person's intent not to resume use of the mark may be inferred
from the circumstances. Three (3) consecutive years without
use of a mark constitutes prima facie evidence that the use of
the mark has been abandoned.
(B) The conduct of the owner, including an act or omission,
has caused the mark to lose its significance as a mark.
(2) "Applicant" means a person who files an application for
registration of a mark under this chapter and the legal
representatives, successors, or assigns of the person.
(3) "Dilution" means 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
(B) the likelihood of confusion, mistake, or deception.
(4) "Mark" means a trademark or service mark that is entitled
to registration under this chapter, whether the mark is registered
or not.
(5) "Person" means:
(A) a human being;
(B) a corporation;
(C) a partnership;
(D) a limited liability company; or
(E) any other entity or organization:
(i) capable of suing and being sued in a court of law;
(ii) entitled to a benefit or privilege under this chapter; or
(iii) rendered liable under this chapter.
(6) "Registrant" means a person to whom the registration of a
mark under this chapter is issued and the legal representatives,
successors, or assigns of the person.
(7) "Secretary" means the secretary of state or the designee of
the secretary charged with the administration of this chapter.
(8) "Service mark" means a word, name, symbol, device, or
combination of a word, name, symbol, or device that is used by
a person to:
(A) identify a service, including a unique service, of a person
and distinguish the person's service from the service of
another person; and
(B) indicate the source of a service, even if the source is
unknown.
Titles and character names and other distinctive features of
radio or television programs used by a person may be registered
as a service mark even though the radio or television programs
may advertise the goods of the sponsor.
(9) "Trademark" means any word, name, symbol, or device or
any combination of a word, name, symbol, or device that is used
by a person to:
(A) identify and distinguish goods, including a unique
product, of a person and distinguish the person's goods from
goods manufactured or sold by another person; and
(B) indicate the source of the goods, even if the source is
unknown.
(10) "Trade name" means a name used by a person to identify
a business or vocation of the person.
(11) "Use" means the bona fide use of a mark in the ordinary
course of trade and not a use made merely to reserve a right in
a mark. A mark is considered to be in use:
(A) on or in connection with a good if the:
(i) mark is placed in any manner on the good, a container
for the good, a display associated with the good, or a tag
or label affixed to the good; or
(ii) nature of the good makes placement of the mark as
described in item (i) impracticable and the mark is placed
on a document associated with the good or with the sale of
the good; and
(B) if the good described in clause (A) is sold or transported
in Indiana.
A mark is considered to be in use on or in connection with a
service if the mark is used or displayed in the sale or advertising
of the service and the service is rendered in Indiana.
(Formerly: Acts 1955, c.174, s.2; Acts 1959, c.256, s.1.) As amended
by P.L.152-1986, SEC.22; P.L.8-1993, SEC.338; P.L.135-2006,
SEC.2.
IC 24-2-1-3
Registerability
Sec. 3. A mark by which the goods or services of an applicant
may be distinguished from other goods or services may not be
registered if the mark:
(1) consists of or comprises immoral, deceptive, or scandalous
matter;
(2) consists of or comprises matter that may:
(A) disparage or falsely suggest a connection with:
(i) persons living or dead;
(ii) institutions;
(iii) beliefs; or
(iv) national symbols; or
(B) bring into contempt or disrepute:
(i) persons living or dead;
(ii) institutions;
(iii) beliefs; or
(iv) national symbols;
(3) consists of or comprises the flag, coat of arms, or other
insignia of:
(A) the United States;
(B) a state or municipality;
(C) the United Nations; or
(D) a foreign nation;
(4) consists of or comprises the name, signature, or portrait
identifying a particular living individual, unless the individual
provides written consent; or
(5) is a mark that:
(A) if used on or in connection with the goods or services of
the applicant, is merely descriptive or deceptively
misdescriptive of the goods or services;
(B) if used on or in connection with the goods or services of
the applicant, is primarily geographically descriptive or
deceptively geographically misdescriptive of the goods or
services; or
(C) is primarily merely a surname.
This subdivision does not prevent the registration of a mark that
is used in Indiana by the applicant and has become distinctive
of the applicant's goods or services. The secretary may accept
proof of continuous use of a mark by the applicant in Indiana
for the five (5) years immediately preceding the date on which
the claim of distinctiveness is made as evidence that the mark
has become distinctive, as used on or in connection with the
applicant's goods or services; or
(6) is a mark that so resembles a mark registered in Indiana or
a mark or trade name previously used by another person in
Indiana and not abandoned, as to be likely, if used on or in
connection with the goods or services of the applicant, to cause
deception, confusion, or mistake.
(Formerly: Acts 1955, c.174, s.3; Acts 1959, c.256, s.2.) As amended
by P.L.152-1986, SEC.23; P.L.135-2006, SEC.3.
IC 24-2-1-4
Application for registration
Sec. 4. (a) Subject to the limitations of this chapter, a person who
uses a mark in Indiana may file in the office of the secretary, in a
manner that complies with the requirements of the secretary, an
application for registration of the mark. The application must include
the following information:
(1) The name and business address of the person applying for
registration of the mark, and:
(A) if the applicant is a corporation, the state of
incorporation;
(B) if the applicant is a partnership, the:
(i) state in which the partnership is organized; and
(ii) names of the general partners, as specified by the
secretary; or
(C) if the applicant is another form of legal entity, the
jurisdiction in which the legal entity was organized.
(2) The:
(A) goods or services on or in connection with which the
mark is used;
(B) mode or manner in which the mark is used on or in
connection with the goods or services; and
(C) class in which the goods or services fall.
(3) The date on which the mark was first used anywhere and the
date on which the mark was first used in Indiana by the
applicant or the applicant's predecessor in business.
(4) A statement that:
(A) the applicant is the owner of the mark;
(B) the mark is in use; and
(C) to the knowledge of the person verifying the application,
another person:
(i) has not registered the mark, either federally or in
Indiana; or
(ii) does not have the right to use the mark either in the
identical form or in such near resemblance to the form as
to be likely, if applied to the goods or services of the other
person, to cause deception, confusion, or mistake.
(b) The secretary may also require on an application:
(1) a statement indicating whether an application to register a
mark, parts of a mark, or a composite of a mark, has been filed
by the applicant or a predecessor in the interest of the applicant
in the United States Patent and Trademark Office. If an
application has previously been filed in the United States Patent
and Trademark Office, the applicant must provide full
particulars with respect to the previous application, including
the:
(A) filing date and serial number of each application;
(B) status of each application; and
(C) reason or reasons for the refusal of the application or the
nonregistration of the mark if an application to register the
mark was finally refused registration or if an application to
register the mark has not resulted in a registration; and
(2) a drawing of the mark that complies with the requirements
of the secretary.
(c) The application must be signed and verified under oath,
affirmation, or declaration subject to perjury laws by:
(1) the applicant;
(2) a member of the applicant firm or applicant limited liability
company; or
(3) an officer of the applicant corporation, association, or other
form of legal entity.
The application must be accompanied by three (3) specimens
showing actual use of the mark. The application must be
accompanied by an application fee payable to the secretary.
(Formerly: Acts 1955, c.174, s.4; Acts 1959, c.256, s.3.) As amended
by P.L.152-1986, SEC.24; P.L.8-1993, SEC.339; P.L.135-2006,
SEC.4.
IC 24-2-1-4.5
Examination; additional information; new application; disclaiming
component of mark; amending; civil action; priority
Sec. 4.5. (a) If a person files an application for registration of a
mark and pays the application fee, the secretary may examine the
application for conformity with this chapter.
(b) An applicant must provide additional information requested by
the secretary, including a description of a design mark.
(c) An applicant may make or authorize the secretary to make
reasonable amendments to an application that are requested by the
secretary or are considered by the applicant to be advisable to
respond to a rejection or an objection.
(d) The secretary may require an applicant to submit a new
application if the secretary determines amendments to the application
are necessary and the applicant does not make or authorize the
secretary to make amendments under subsection (c).
(e) The secretary may require an applicant to disclaim a
component of a mark that is not eligible for registration, and an
applicant may voluntarily disclaim a component of a mark for which
registration is sought. A disclaimer does not prejudice or affect the
applicant's rights:
(1) existing at the time of application or arising after the
application in the disclaimed matter; or
(2) on another application if the disclaimed matter is or
becomes distinctive of the applicant's goods or services.
(f) If an applicant is not entitled to registration of a mark under
this chapter, the secretary shall advise the applicant of the reason the
applicant is not entitled to registration of the mark. The applicant has
a reasonable time specified by the secretary:
(1) to reply to the reason the applicant is not entitled to
registration; or
(2) to amend the application.
If the applicant replies to the secretary or amends the application
within the reasonable time, the secretary shall reexamine the
application.
(g) The procedure under subsection (f) may be repeated until:
(1) the secretary finally refuses registration of the mark; or
(2) the applicant fails to reply or amend the application within
the time specified by the secretary, at which time the secretary
shall consider the application to have been withdrawn.
(h) If the secretary issues a final order refusing the registration of
a mark, an applicant may bring a civil action in a court with
jurisdiction to compel the registration of the mark. A court may order
the secretary to register a mark, without costs to the secretary, on
proof that all statements in the application are true and the mark is
entitled to registration.
(i) If two (2) or more applications are concurrently processed by
the secretary for registration of the same or confusingly similar
marks for the same or related goods or services, the secretary shall
grant priority to the applications in order of filing. If a previously
filed application is granted a registration, the other application or
applications must be rejected. A rejected applicant may bring an
action for cancellation of the previously registered mark based upon
previous or superior rights to the mark under section 10 of this
chapter.
As added by P.L.135-2006, SEC.5.
IC 24-2-1-5
Certificate of registration
Sec. 5. (a) If an applicant complies with the requirements of this
chapter, the secretary shall issue and deliver a certificate of
registration to the applicant. The certificate of registration must be
issued under the signature of the secretary and the seal of the state of
Indiana. The certificate of registration must include all of the
following:
(1) The name and business address of the person claiming
ownership of the mark. If the person claiming ownership of the
mark is:
(A) a corporation, the certificate of registration must show
the state of incorporation;
(B) a partnership, the certificate of registration must show
the state in which the partnership is organized and the names
of the general partners, as specified by the secretary; or
(C) another form of legal entity, the certificate of registration
must show the jurisdiction in which the legal entity is
organized.
(2) The date claimed for the first use of the mark anywhere and
the date claimed for the first use of the mark in Indiana.
(3) The class of goods or services and a description of the goods
or services on or in connection with which the mark is used.
(4) A reproduction of the mark.
(5) The registration date.
(6) The term of the registration.
(b) A certificate of registration issued by the secretary under
subsection (a) or a copy of a certificate of registration certified by the
secretary is admissible in evidence as competent and sufficient proof
of the registration of the mark in an action or judicial proceeding in
a court of Indiana.
(Formerly: Acts 1955, c.174, s.5; Acts 1959, c.256, s.4.) As amended
by P.L.152-1986, SEC.25; P.L.135-2006, SEC.6.
IC 24-2-1-6
Duration and renewal
Sec. 6. (a) Registration of a mark under this chapter is effective
for a term of five (5) years from the date of registration.
(b) If a person who registers a mark under subsection (a) files an
application not more than six (6) months before the expiration of the
five (5) year term, in a manner complying with the requirements of
the secretary, the registration may be renewed for an additional five
(5) year term commencing at the end of the expiring five (5) year
term.
(c) A renewal fee payable to the secretary must accompany the
application for renewal of the registration.
(d) A registration may be renewed for successive periods of five
(5) years in the manner described in subsection (b).
(e) The secretary shall notify the registrants of marks of the
necessity of renewal within the year next preceding the expiration of
the five (5) years from the date of the registration by writing to the
last known address of the registrants.
(f) An application for renewal under this chapter for a mark
registered under this chapter or a mark registered under a prior law,
must include:
(1) a verified statement that the mark has been and remains in
use; and
(2) a specimen showing actual use of the mark on or in
connection with the good or service.
(Formerly: Acts 1955, c.174, s.6.) As amended by P.L.135-2006,
SEC.7.
IC 24-2-1-7
Expiration of registration
Sec. 7. A registration in force on July 1, 2006, continues in full
force and effect for the unexpired term of the registration and may be
renewed by:
(1) filing an application for renewal with the secretary; and
(2) paying the renewal fee;
in the manner described in section 6 of this chapter not more than six
(6) months before the expiration of the registration.
(Formerly: Acts 1955, c.174, s.7.) As amended by P.L.152-1986,
SEC.26; P.L.135-2006, SEC.8.
IC 24-2-1-8
Assignment
Sec. 8. (a) A mark and the registration of a mark under this
chapter are assignable with the:
(1) good will of the business in which the mark is used; or
(2) part of the good will of the business:
(A) connected with the use of the mark; and
(B) symbolized by the mark.
(b) An assignment:
(1) must be made by an instrument in writing duly executed;
and
(2) may be recorded with the secretary upon the payment of a
recording fee to the secretary.
(c) The secretary, after recording an assignment, shall issue in the
name of the assignee a new certificate of registration for the
remainder of the term of the:
(1) registration; or
(2) most recent renewal of the registration.
(d) An assignment of a registration under this chapter is void
against a subsequent purchaser for valuable consideration without
notice unless the assignment is recorded with the secretary not more
than three (3) months:
(1) after the date of the assignment; or
(2) before the subsequent purchase.
(Formerly: Acts 1955, c.174, s.8.) As amended by P.L.152-1986,
SEC.27; P.L.135-2006, SEC.9.
IC 24-2-1-8.5
Certificate of change of name; new certificate of registration
Sec. 8.5. (a) A registrant or an applicant who changes the name of
the person to whom the mark is issued or for whom an application is
filed may record a certificate of change of name of the registrant or
applicant with the secretary upon the payment of a recording fee.
(b) The secretary may issue a new certificate of registration or an
assigned application in the name of the assignee. The secretary may
issue a new certificate of registration in the name of the assignee for
the remainder of the term of the:
(1) certificate of registration; or
(2) most recent renewal of the certificate of registration.
As added by P.L.135-2006, SEC.10.
IC 24-2-1-9
Records
Sec. 9. The secretary shall keep for public examination a record
of all marks registered or renewed under this chapter as well as a
record of all instruments recorded under sections 8 and 8.5 of this
chapter.
(Formerly: Acts 1955, c.174, s.9.) As amended by P.L.152-1986,
SEC.28; P.L.135-2006, SEC.11.
IC 24-2-1-10
Cancellation
Sec. 10. The secretary shall cancel from the register in whole or
in part:
(1) a registration for which the secretary receives a voluntary
request for cancellation from the registrant or the assignee of
record;
(2) all registrations granted under this chapter and not renewed
under section 6 of this chapter;
(3) a registration for which a court of competent jurisdiction
finds that:
(A) the registered mark has been abandoned;
(B) the registrant is not the owner of the mark;
(C) the registration was granted improperly;
(D) the registration was obtained fraudulently;
(E) the registered mark is or has become the generic name
for the good or the service, or a part of the good or the
service, for which the mark was registered; or
(F) the registered mark is so similar to a mark registered by
another person on the principal register in the United States
Patent and Trademark Office as to be likely to cause
deception, confusion, or mistake between the marks, and the
mark registered in the United States Patent and Trademark
Office was filed before the filing of the application for
registration by the registrant under this chapter. However, a
mark may not be canceled under this clause if the registrant
proves that the registrant is the owner of a concurrent
registration of a mark in the United States Patent and
Trademark Office covering an area including Indiana; or
(4) a registration if a court of competent jurisdiction orders
cancellation of the registration on any ground.
(Formerly: Acts 1955, c.174, s.10.) As amended by P.L.152-1986,
SEC.29; P.L.135-2006, SEC.12.
IC 24-2-1-11
Classification; single application
Sec. 11. (a) The secretary shall adopt rules under IC 4-22-2 to
establish:
(1) a classification of goods and services for convenience of
administration of this chapter but not to limit or extend an
applicant's or registrant's rights; and
(2) a single application for registration of a mark that:
(A) may include each good upon which a mark is used;
(B) may include each service with which a mark is used; and
(C) must indicate the appropriate class or classes of the
goods or services.
To the extent practical, the classification of goods or services should
conform to the classification of goods or services adopted by the
United States Patent and Trademark Office.
(b) If a single application includes goods or services that fall
within multiple classes, the secretary may require payment of a fee
for each class.
(Formerly: Acts 1955, c.174, s.11; Acts 1959, c.256, s.5.) As
amended by P.L.152-1986, SEC.30; P.L.135-2006, SEC.13.
IC 24-2-1-12
Damages for fraudulent registration
Sec. 12. (a) A person who shall for himself or herself, or on behalf
of any other person, procure the filing or registration of any mark in
the office of the secretary under this chapter by knowingly making
a false or fraudulent representation or declaration orally, in writing,
or by other fraudulent means, is liable for all damages sustained in
consequence of the filing or registration.
(b) The damages may be recovered by or on behalf of the injured
party in a court of competent jurisdiction.
(Formerly: Acts 1955, c.174, s.12.) As amended by P.L.135-2006,
SEC.14.
IC 24-2-1-13
Infringement
Sec. 13. Subject to the provisions of section 15 of this chapter, a
person who:
(1) uses, without the consent of the registrant, a reproduction,
counterfeit, copy, or colorable imitation of a mark registered
under this chapter:
(A) in connection with the sale, offering for sale,
distribution, or advertising of goods or services; or
(B) on or in connection with which the use is likely to cause
confusion or mistake, or result in deception regarding the
source of origin of the goods or services; or
(2) reproduces, counterfeits, or copies a mark or colorably
imitates a mark and applies the reproduction, counterfeit, copy,
or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used:
(A) in connection with the sale or other distribution of the
goods or services in Indiana; or
(B) on the goods or services;
is liable in a civil action brought by the registrant for the remedies
provided in this chapter, except that under subdivision (2) the
registrant is not entitled to recover profits or damages unless the acts
have been committed with the intent to cause deception, confusion,
or mistake.
(Formerly: Acts 1955, c.174, s.13; Acts 1959, c.256, s.6.) As
amended by P.L.152-1986, SEC.31; P.L.135-2006, SEC.15.
IC 24-2-1-13.5
Fanciful marks; famous marks; injunctive relief; remedies;
attorney's fees
Sec. 13.5. (a) This section applies only to fanciful marks, except
in cases where the other person's use tarnishes the reputation of the
famous mark.
(b) An owner of a mark that is famous in Indiana is entitled,
subject to the principles of equity and terms a court considers
reasonable, to an injunction against another person's commercial use
of the mark or trade name if the other person's use begins after the
mark has become famous and the other person's use causes dilution
of the distinctive quality of the mark, and to other relief provided in
this section. In determining whether a mark is distinctive and famous,
a court may consider factors such as:
(1) the degree of inherent or acquired distinctiveness of the
mark in Indiana;
(2) the duration and extent of use of the mark in connection
with the goods or services with which the mark is used;
(3) the duration and extent of advertising and publicity of the
mark in Indiana;
(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 Indiana as it relates to the use of the
mark by the:
(A) mark's owner; and
(B) person against whom the injunction is sought;
(7) the nature and extent of use of the same or a similar mark by
a third party; and
(8) whether the mark is the subject of a:
(A) registration in Indiana;
(B) federal registration under the Act of March 3, 1881;
(C) federal registration under the Act of February 20, 1905;
or
(D) registration on the principal register.
(c) In an action brought under this section, the owner of a famous
mark is entitled only to injunctive relief 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 willful
intent is proven, the owner of the famous mark is entitled to the other
remedies set forth in this section, subject to the discretion of the
court and the principles of equity.
(d) A court may require a defendant to pay to the owner of a mark
all profits derived from and damages suffered by reason of the use of
the mark in violation of this section and, in exceptional cases, may
award reasonable attorney's fees to the prevailing party.
(e) The following are not 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 the mark.
(3) All forms of news reporting and news commentary.
As added by P.L.135-2006, SEC.16.
IC 24-2-1-14
Remedies
Sec. 14. (a) An owner of a mark registered under this chapter may
bring an action to enjoin the use of any mark in violation of section
13 of this chapter and the manufacture, display, or sale of any goods
or services identified by the mark and a court of competent
jurisdiction may grant an injunction to restrain the use of the mark
and the manufacture, display, or sale of the goods or services as the
court considers just and reasonable.
(b) A court may:
(1) require a defendant to pay to the owner of a mark all:
(A) profits derived from; and
(B) damages suffered by reason of; the wrongful
manufacture, display, or sale of the goods or services; and
(2) order that the goods or item bearing the mark in the
possession or under the control of a defendant in the case be
delivered to an officer of the court or to the complainant to be
destroyed.
(c) In addition to amounts a court may award under subsection
(b), a court may enter judgment for:
(1) an amount not to exceed the greater of:
(A) three (3) times the profits derived from; or
(B) three (3) times the damages suffered by reason of;
the intentional use of a counterfeit mark, knowing it to be a
counterfeit in connection with the goods or services for which
the mark is registered; and
(2) in exceptional cases, reasonable attorney's fees to the
prevailing party.
(d) The invocation of a right or remedy in this chapter does not
affect a registrant's right to prosecution under a penal law.
(Formerly: Acts 1955, c.174, s.14.) As amended by P.L.152-1986,
SEC.32; P.L.135-2006, SEC.17.
IC 24-2-1-14.5
Cancellation; action to compel registration; jurisdiction
Sec. 14.5. (a) An action for cancellation of a mark registered
under this chapter or an action to compel registration of a mark under
this chapter must be brought in a court with jurisdiction in Indiana.
(b) In an action for cancellation of a mark, the secretary:
(1) may not be made a party to an action;
(2) must be notified of the filing of a complaint in an action by
the clerk of the court in which the complaint is filed; and
(3) is entitled to intervene in an action for cancellation of a
mark.
(c) In an action brought against a nonresident registrant, service
may be effected upon the secretary as agent for service of the
registrant in accordance with the procedures established for service
upon nonresident corporations and business entities.
As added by P.L.135-2006, SEC.18.
IC 24-2-1-15
Common law rights
Sec. 15. This chapter does not adversely affect the rights or the
enforcement of rights in a mark acquired in good faith at any time at
common law.
(Formerly: Acts 1955, c.174, s.15.) As amended by P.L.135-2006,
SEC.19.
IC 24-2-1-15.3
Fees
Sec. 15.3. (a) The secretary shall adopt rules under IC 4-22-2 to
establish:
(1) an application fee;
(2) a renewal fee;
(3) a recording fee; and
(4) fees for related services.
(b) A fee is nonrefundable unless otherwise specified in the rules
adopted by the secretary under subsection (a).
As added by P.L.135-2006, SEC.20.
IC 24-2-1-16
Repealed
(Repealed by P.L.135-2006, SEC.21.)