The state of Indiana has their own trademark office! Who ever heard of that? I always thought that trademarks were only a federal issue. What about an Indiana state trademark that conflicts with a federal trademark? What's next? Every city having their own trademark office?
Wow, California also has it's own bogus state of California trademark office too! http://www.sos.ca.gov/business/ts/ts_faq.htm#question9
Their FAQ has some funny questions. Let me interpret them:
- Q: Does a federal trademark or service mark supersede a filing at the state level?
- A: Private legal counsel should be consulted if this is an issue for you.
- Translation: We can't tell you if there is any real value to a state trademark....
- Q: If a trademark or service mark is registered at the federal level, does it have to be registered at the state level?
- A: No, however it is highly recommended that the mark be registered at the state level as well to have a record of the mark.
- Translations:
- We don't need no stinkin' federal government... Buy California!
- Please send us money. Please!
- Highly recommended by who?
For Indiana see:
Infringement of Indiana State Trademark:
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.
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(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.
