CHAPTER 1. TRADEMARK ACT
IC 24-2
ARTICLE 2. TRADEMARKS, TRADE NAMES, ANDTRADE 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 statetrademark registration and protection that is consistent with thefederal system of trademark registration and protection under theTrademark Act of 1946. A judicial or an administrative interpretationof a provision of the federal Trademark Act may be considered aspersuasive 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Repealed
(Repealed by P.L.135-2006, SEC.21.)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 ofthe mark and does not intend to resume use of the mark. Aperson's intent not to resume use of the mark may be inferredfrom the circumstances. Three (3) consecutive years withoutuse of a mark constitutes prima facie evidence that the use ofthe 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 forregistration of a mark under this chapter and the legalrepresentatives, successors, or assigns of the person.
(3) "Dilution" means the lessening of the capacity of a famousmark to identify and distinguish goods or services, regardless ofthe presence or absence of:
(A) competition between the owner of the famous mark andother parties; or
(B) the likelihood of confusion, mistake, or deception.
(4) "Mark" means a trademark or service mark that is entitledto registration under this chapter, whether the mark is registeredor 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 amark 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 ofthe secretary charged with the administration of this chapter.
(8) "Service mark" means a word, name, symbol, device, orcombination of a word, name, symbol, or device that is used bya person to:
(A) identify a service, including a unique service, of a personand distinguish the person's service from the service ofanother person; and
(B) indicate the source of a service, even if the source isunknown.
Titles and character names and other distinctive features ofradio or television programs used by a person may be registeredas a service mark even though the radio or television programsmay advertise the goods of the sponsor.
(9) "Trademark" means any word, name, symbol, or device orany combination of a word, name, symbol, or device that is usedby a person to:
(A) identify and distinguish goods, including a uniqueproduct, of a person and distinguish the person's goods fromgoods manufactured or sold by another person; and
(B) indicate the source of the goods, even if the source isunknown.
(10) "Trade name" means a name used by a person to identifya business or vocation of the person.
(11) "Use" means the bona fide use of a mark in the ordinarycourse of trade and not a use made merely to reserve a right ina 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 containerfor the good, a display associated with the good, or a tagor label affixed to the good; or
(ii) nature of the good makes placement of the mark asdescribed in item (i) impracticable and the mark is placedon a document associated with the good or with the sale ofthe good; and
(B) if the good described in clause (A) is sold or transportedin Indiana.
A mark is considered to be in use on or in connection with aservice if the mark is used or displayed in the sale or advertisingof the service and the service is rendered in Indiana.
(Formerly: Acts 1955, c.174, s.2; Acts 1959, c.256, s.1.) As amendedby 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 applicantmay be distinguished from other goods or services may not beregistered if the mark:
(1) consists of or comprises immoral, deceptive, or scandalousmatter;
(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 otherinsignia 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 portraitidentifying a particular living individual, unless the individualprovides written consent; or
(5) is a mark that:
(A) if used on or in connection with the goods or services ofthe applicant, is merely descriptive or deceptivelymisdescriptive of the goods or services;
(B) if used on or in connection with the goods or services ofthe applicant, is primarily geographically descriptive ordeceptively geographically misdescriptive of the goods orservices; or
(C) is primarily merely a surname.
This subdivision does not prevent the registration of a mark thatis used in Indiana by the applicant and has become distinctiveof the applicant's goods or services. The secretary may acceptproof of continuous use of a mark by the applicant in Indianafor the five (5) years immediately preceding the date on whichthe claim of distinctiveness is made as evidence that the markhas become distinctive, as used on or in connection with theapplicant's goods or services; or
(6) is a mark that so resembles a mark registered in Indiana ora mark or trade name previously used by another person inIndiana and not abandoned, as to be likely, if used on or inconnection 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 amendedby 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 whouses a mark in Indiana may file in the office of the secretary, in amanner that complies with the requirements of the secretary, anapplication for registration of the mark. The application must includethe following information:
(1) The name and business address of the person applying forregistration of the mark, and:
(A) if the applicant is a corporation, the state ofincorporation;
(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 thesecretary; or
(C) if the applicant is another form of legal entity, thejurisdiction in which the legal entity was organized.
(2) The:
(A) goods or services on or in connection with which themark is used;
(B) mode or manner in which the mark is used on or inconnection 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 thedate on which the mark was first used in Indiana by theapplicant 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 inIndiana; or
(ii) does not have the right to use the mark either in theidentical form or in such near resemblance to the form asto be likely, if applied to the goods or services of the otherperson, to cause deception, confusion, or mistake.
(b) The secretary may also require on an application:
(1) a statement indicating whether an application to register amark, parts of a mark, or a composite of a mark, has been filedby the applicant or a predecessor in the interest of the applicantin the United States Patent and Trademark Office. If anapplication has previously been filed in the United States Patentand Trademark Office, the applicant must provide fullparticulars with respect to the previous application, includingthe: (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 thenonregistration of the mark if an application to register themark was finally refused registration or if an application toregister the mark has not resulted in a registration; and
(2) a drawing of the mark that complies with the requirementsof 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 liabilitycompany; or
(3) an officer of the applicant corporation, association, or otherform of legal entity.
The application must be accompanied by three (3) specimensshowing actual use of the mark. The application must beaccompanied by an application fee payable to the secretary.
(Formerly: Acts 1955, c.174, s.4; Acts 1959, c.256, s.3.) As amendedby 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; disclaimingcomponent of mark; amending; civil action; priority
Sec. 4.5. (a) If a person files an application for registration of amark and pays the application fee, the secretary may examine theapplication for conformity with this chapter.
(b) An applicant must provide additional information requested bythe secretary, including a description of a design mark.
(c) An applicant may make or authorize the secretary to makereasonable amendments to an application that are requested by thesecretary or are considered by the applicant to be advisable torespond to a rejection or an objection.
(d) The secretary may require an applicant to submit a newapplication if the secretary determines amendments to the applicationare necessary and the applicant does not make or authorize thesecretary to make amendments under subsection (c).
(e) The secretary may require an applicant to disclaim acomponent of a mark that is not eligible for registration, and anapplicant may voluntarily disclaim a component of a mark for whichregistration is sought. A disclaimer does not prejudice or affect theapplicant's rights:
(1) existing at the time of application or arising after theapplication in the disclaimed matter; or
(2) on another application if the disclaimed matter is orbecomes distinctive of the applicant's goods or services.
(f) If an applicant is not entitled to registration of a mark underthis chapter, the secretary shall advise the applicant of the reason theapplicant 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 toregistration; or
(2) to amend the application.
If the applicant replies to the secretary or amends the applicationwithin the reasonable time, the secretary shall reexamine theapplication.
(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 withinthe time specified by the secretary, at which time the secretaryshall consider the application to have been withdrawn.
(h) If the secretary issues a final order refusing the registration ofa mark, an applicant may bring a civil action in a court withjurisdiction to compel the registration of the mark. A court may orderthe secretary to register a mark, without costs to the secretary, onproof that all statements in the application are true and the mark isentitled to registration.
(i) If two (2) or more applications are concurrently processed bythe secretary for registration of the same or confusingly similarmarks for the same or related goods or services, the secretary shallgrant priority to the applications in order of filing. If a previouslyfiled application is granted a registration, the other application orapplications must be rejected. A rejected applicant may bring anaction for cancellation of the previously registered mark based uponprevious or superior rights to the mark under section 10 of thischapter.
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 thischapter, the secretary shall issue and deliver a certificate ofregistration to the applicant. The certificate of registration must beissued under the signature of the secretary and the seal of the state ofIndiana. The certificate of registration must include all of thefollowing:
(1) The name and business address of the person claimingownership of the mark. If the person claiming ownership of themark is:
(A) a corporation, the certificate of registration must showthe state of incorporation;
(B) a partnership, the certificate of registration must showthe state in which the partnership is organized and the namesof the general partners, as specified by the secretary; or
(C) another form of legal entity, the certificate of registrationmust show the jurisdiction in which the legal entity isorganized.
(2) The date claimed for the first use of the mark anywhere andthe date claimed for the first use of the mark in Indiana. (3) The class of goods or services and a description of the goodsor 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 undersubsection (a) or a copy of a certificate of registration certified by thesecretary is admissible in evidence as competent and sufficient proofof the registration of the mark in an action or judicial proceeding ina court of Indiana.
(Formerly: Acts 1955, c.174, s.5; Acts 1959, c.256, s.4.) As amendedby 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 effectivefor a term of five (5) years from the date of registration.
(b) If a person who registers a mark under subsection (a) files anapplication not more than six (6) months before the expiration of thefive (5) year term, in a manner complying with the requirements ofthe secretary, the registration may be renewed for an additional five(5) year term commencing at the end of the expiring five (5) yearterm.
(c) A renewal fee payable to the secretary must accompany theapplication 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 thenecessity of renewal within the year next preceding the expiration ofthe five (5) years from the date of the registration by writing to thelast known address of the registrants.
(f) An application for renewal under this chapter for a markregistered under this chapter or a mark registered under a prior law,must include:
(1) a verified statement that the mark has been and remains inuse; and
(2) a specimen showing actual use of the mark on or inconnection 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 fullforce and effect for the unexpired term of the registration and may berenewed 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 thischapter 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 arecording fee to the secretary.
(c) The secretary, after recording an assignment, shall issue in thename of the assignee a new certificate of registration for theremainder 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 voidagainst a subsequent purchaser for valuable consideration withoutnotice unless the assignment is recorded with the secretary not morethan 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 ofthe person to whom the mark is issued or for whom an application isfiled may record a certificate of change of name of the registrant orapplicant with the secretary upon the payment of a recording fee.
(b) The secretary may issue a new certificate of registration or anassigned application in the name of the assignee. The secretary mayissue a new certificate of registration in the name of the assignee forthe 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 recordof all marks registered or renewed under this chapter as well as arecord of all instruments recorded under sections 8 and 8.5 of thischapter.(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 orin part:
(1) a registration for which the secretary receives a voluntaryrequest for cancellation from the registrant or the assignee ofrecord;
(2) all registrations granted under this chapter and not renewedunder section 6 of this chapter;
(3) a registration for which a court of competent jurisdictionfinds 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 namefor the good or the service, or a part of the good or theservice, for which the mark was registered; or
(F) the registered mark is so similar to a mark registered byanother person on the principal register in the United StatesPatent and Trademark Office as to be likely to causedeception, confusion, or mistake between the marks, and themark registered in the United States Patent and TrademarkOffice was filed before the filing of the application forregistration by the registrant under this chapter. However, amark may not be canceled under this clause if the registrantproves that the registrant is the owner of a concurrentregistration of a mark in the United States Patent andTrademark Office covering an area including Indiana; or
(4) a registration if a court of competent jurisdiction orderscancellation 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 toestablish:
(1) a classification of goods and services for convenience ofadministration of this chapter but not to limit or extend anapplicant'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 thegoods or services.
To the extent practical, the classification of goods or services should
conform to the classification of goods or services adopted by theUnited States Patent and Trademark Office.
(b) If a single application includes goods or services that fallwithin multiple classes, the secretary may require payment of a feefor each class.
(Formerly: Acts 1955, c.174, s.11; Acts 1959, c.256, s.5.) Asamended 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 behalfof any other person, procure the filing or registration of any mark inthe office of the secretary under this chapter by knowingly makinga false or fraudulent representation or declaration orally, in writing,or by other fraudulent means, is liable for all damages sustained inconsequence of the filing or registration.
(b) The damages may be recovered by or on behalf of the injuredparty 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, aperson who:
(1) uses, without the consent of the registrant, a reproduction,counterfeit, copy, or colorable imitation of a mark registeredunder 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 causeconfusion or mistake, or result in deception regarding thesource of origin of the goods or services; or
(2) reproduces, counterfeits, or copies a mark or colorablyimitates 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 thegoods or services in Indiana; or
(B) on the goods or services;
is liable in a civil action brought by the registrant for the remediesprovided in this chapter, except that under subdivision (2) theregistrant is not entitled to recover profits or damages unless the actshave been committed with the intent to cause deception, confusion,or mistake.
(Formerly: Acts 1955, c.174, s.13; Acts 1959, c.256, s.6.) Asamended 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, exceptin cases where the other person's use tarnishes the reputation of thefamous mark.
(b) An owner of a mark that is famous in Indiana is entitled,subject to the principles of equity and terms a court considersreasonable, to an injunction against another person's commercial useof the mark or trade name if the other person's use begins after themark has become famous and the other person's use causes dilutionof the distinctive quality of the mark, and to other relief provided inthis 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 themark in Indiana;
(2) the duration and extent of use of the mark in connectionwith the goods or services with which the mark is used;
(3) the duration and extent of advertising and publicity of themark in Indiana;
(4) the geographical extent of the trading area in which themark is used;
(5) the channels of trade for the goods or services with whichthe mark is used;
(6) the degree of recognition of the mark in the trading areasand channels of trade in Indiana as it relates to the use of themark 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 bya 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 famousmark is entitled only to injunctive relief unless the person againstwhom the injunctive relief is sought willfully intended to trade on theowner's reputation or to cause dilution of the famous mark. If willfulintent is proven, the owner of the famous mark is entitled to the otherremedies set forth in this section, subject to the discretion of thecourt and the principles of equity.
(d) A court may require a defendant to pay to the owner of a markall profits derived from and damages suffered by reason of the use ofthe mark in violation of this section and, in exceptional cases, mayaward 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 comparativecommercial advertising or promotion to identify the competinggoods 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 maybring an action to enjoin the use of any mark in violation of section13 of this chapter and the manufacture, display, or sale of any goodsor services identified by the mark and a court of competentjurisdiction may grant an injunction to restrain the use of the markand the manufacture, display, or sale of the goods or services as thecourt 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 wrongfulmanufacture, display, or sale of the goods or services; and
(2) order that the goods or item bearing the mark in thepossession or under the control of a defendant in the case bedelivered to an officer of the court or to the complainant to bedestroyed.
(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 acounterfeit in connection with the goods or services for whichthe mark is registered; and
(2) in exceptional cases, reasonable attorney's fees to theprevailing party.
(d) The invocation of a right or remedy in this chapter does notaffect 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 registeredunder this chapter or an action to compel registration of a mark underthis 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 bythe clerk of the court in which the complaint is filed; and
(3) is entitled to intervene in an action for cancellation of amark.
(c) In an action brought against a nonresident registrant, servicemay be effected upon the secretary as agent for service of the
registrant in accordance with the procedures established for serviceupon 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 theenforcement of rights in a mark acquired in good faith at any time atcommon 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 toestablish:
(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 rulesadopted 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.)