75-25-25 - Owner of famous mark entitled to injunction against another's commercial use of the famous mark; "famous" defined; geographic limitations of injunctive relief; permitted uses of f
§ 75-25-25. Owner of famous mark entitled to injunction against another's commercial use of the famous mark; "famous" defined; geographic limitations of injunctive relief; permitted uses of famous mark.
(a) Subject to the principles of equity, the owner of a mark which is famous and distinctive, inherently or through acquired distinctiveness, in this state shall be entitled 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 is likely to cause dilution of the famous mark, and to obtain such other relief as is provided in this section.
(b) A mark is famous if it is widely recognized by the general consuming public of this state or a geographic area in this state as a designation of source of the goods or services of the mark's owner. In determining whether a mark is famous, a court may consider factors such as, but not limited to:
(1) The duration, extent, and geographic reach of advertising and publicity of the mark in this state, whether advertised or publicized by the owner or third parties;
(2) The amount, volume, and geographic extent of sales of goods or services offered under the mark in this state;
(3) The extent of actual recognition of the mark in this state; and
(4) Whether the mark is the subject of a state registration in this state, or a federal registration under the Act of March 3, 1881, or under the Act of February 20, 1905, or on the principal register under the Trademark Act of 1946, as amended.
(c) In an action brought under this section, the owner of a famous mark shall be entitled to injunctive relief throughout the geographic area in which the mark is found to have become famous prior to commencement of the junior use, but not beyond the borders of this state. If the person against whom the injunctive relief is sought willfully intended to cause dilution of the famous mark, then 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.
(d) The following shall not be actionable under this section:
(1) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with:
(A) Advertising or promotion that permits consumers to compare goods or services; or
(B) Identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner;
(2) Noncommercial use of the mark; and
(3) All forms of news reporting and news commentary.
Sources: Codes, 1942, § 4227-13; Laws, 1952, ch. 338, § 13; Laws, 1971, ch. 437, § 13; Laws, 1996, ch. 402, § 13; Laws, 2009, ch. 386, § 9, eff from and after July 1, 2009.