State Codes and Statutes

Statutes > Wyoming > Title40 > Chapter1

CHAPTER 1 - TRADEMARKS AND SERVICE MARKS

 

40-1-101. Definitions.

 

(a) The term "trademark" as used in this act meansany word, name, symbol, or device or any combination thereof adopted and usedby a person to identify and distinguish the goods of such person, including aunique product, from those manufactured or sold by others, and to indicate thesource of the goods, even if that source is unknown.

 

(b) The term "service mark" as used in this act meansany word, name, symbol or device or any combination thereof used by a person,to identify and distinguish the services of one (1) person, including a uniqueservice, from the services of others and to indicate the source of theservices, even if that source is unknown. Titles, character names used by aperson and other distinctive features of radio or television programs may beregistered as service marks notwithstanding that they, or the programs, mayadvertise the goods of the sponsor.

 

(c) The term "mark" as used in this act includes anytrademark or service mark entitled to registration under this act whetherregistered or not.

 

(d) The term "person" and any other word or term usedto designate the applicant or other party entitled to a benefit or privilege orrendered liable under the provisions of this act includes a juristic person aswell as a natural person. The term "juristic person" includes afirm, partnership, corporation, association, union or other organization orbusiness entity capable of suing and being sued in a court of law.

 

(e) The term "applicant" as used in this act embracesthe person filing an application for registration of a mark under this act, andthe legal representatives, successors or assigns of such person.

 

(f) The term "registrant" as used in this actembraces the person to whom the registration of a mark under this act is issuedand the legal representatives, successors or assigns of such person.

 

(g) The term "use" in this act means the bona fideuse of a mark in the ordinary course of trade and not made merely to reserve aright in a mark. For the purposes of this act, a mark shall be deemed to be inuse in this state:

 

(i) On goods when it is placed in any manner on the goods orother containers on the displays associated therewith or on the tags or labelsaffixed thereto, or if the nature of the goods makes such placementimpracticable, then on documents associated with the goods or their sale, andthe goods are sold or transported in commerce in this state; and

 

(ii) On services when it is used or displayed in the sale oradvertising of services and the services are rendered in this state.

 

(h) A mark shall be deemed to be "abandoned" underthis act when either of the following occurs:

 

(i) When its use has been discontinued with the intent not toresume such use. Intent not to resume may be inferred from circumstances. Nonuse for two (2) consecutive years shall constitute prima facie evidence ofabandonment;

 

(ii) When any course of conduct of the owner, including acts ofomission as well as commission, causes the mark to lose its significance as amark.

 

(j) The term "dilution" as used in this act means thelessening of the capacity of a registrant's mark to identify and distinguishgoods or services, regardless of the presence or absence of:

 

(i) Competition between the parties; or

 

(ii) Likelihood of confusion, mistake or deception.

 

(k) The term "secretary" as used in this act meansthe secretary of state or the designee of the secretary charged with theadministration of this act.

 

(m) "This act" means W.S. 40-1-101 through 40-1-116.

 

40-1-102. Marks which cannot be registered.

 

(a) A mark by which the goods or services of any applicant forregistration may be distinguished from the goods or services of others shallnot be registered if it:

 

(i) Consists of or comprises immoral, deceptive or scandalousmatter; or

 

(ii) Consists of or comprises matter which may disparage orfalsely suggest a connection with persons, living or dead, institutions,beliefs, or national symbols, or bring them into contempt, or disrepute; or

 

(iii) Consists of or comprises the flag or coat of arms or otherinsignia of the United States, or of any state or municipality, or of anyforeign nation, or any simulation thereof; or

 

(iv) Consists of or comprises the name, signature or portraitidentifying a particular living individual, except by the individual's writtenconsent; or

 

(v) Consists of a mark which, (A) when used on or in connectionwith the goods or services of the applicant, is merely descriptive ordeceptively misdescriptive of them, or (B) when used on or in connection withthe goods or services of the applicant is primarily geographically descriptiveor deceptively misdescriptive of them, or (C) is primarily merely a surname;provided, however, that nothing in this paragraph shall prevent theregistration of a mark used in this state by the applicant which has becomedistinctive of the applicant's goods or services. The secretary may accept asevidence that the mark has become distinctive, as used on or in connection withthe applicant's goods or services, proof of continuous use thereof as a mark bythe applicant in this state or elsewhere for the five (5) years before the dateon which the claim of distinctiveness is made; or

 

(vi) Consists of or comprises a mark which is the same as, ordeceptively similar to, a mark registered in this state, a trade name or thename of a juristic person, or a mark or trade name previously used in thisstate by another and not abandoned, as to be likely, when applied to the goodsor services of the applicant, to cause confusion or mistake or to deceive.

 

40-1-103. Application for registration; filing fee.

 

(a) Subject to the limitations set forth in this act, anyperson who uses a mark in this state may file in the office of the secretary,in a manner complying with the requirements of the secretary, an applicationfor registration of that mark setting forth, but not limited to, the followinginformation:

 

(i) The name and business address of the person applying forsuch registration; and, if a corporation, the state of incorporation, or if apartnership, the state in which the partnership is organized and the names ofthe general partners, as specified by the secretary, or similar information forother juristic persons, as specified by the secretary;

 

(ii) The goods or services on or in connection with which themark is used and the mode or manner in which the mark is used on or inconnection with such goods or services and the class in which such goods orservices fall;

 

(iii) The date when the mark was first used anywhere and the datewhen it was first used in this state by the applicant or a predecessor ininterest;

 

(iv) 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 theapplication, no other person has registered, either federally or in this state,or has the right to use such mark either in the identical form thereof or insuch near resemblance as to be likely, when applied to the goods or services ofsuch other person, to cause confusion or to cause mistake or to deceive; and

 

(v) If required by the secretary, a statement as to whether anapplication to register the mark, or portions or a composite, has been filed bythe applicant or a predecessor in interest in the United States patent andtrademark office; and, if so, the applicant shall provide full particularsincluding the filing date and serial number of each application, the statusand, if any application was finally refused registration or has otherwise notresulted in a registration, the reasons therefor.

 

(b) The application shall be signed and verified by oath,affirmation or declaration subject to perjury laws by the applicant or by amember of the firm or an officer of the corporation or association applying.

 

(c) The application shall be accompanied by a specimen orfacsimile of such mark in triplicate. The secretary may also require that adrawing of the mark, complying with requirements as the secretary may specify,accompany the application.

 

(d) The application for registration shall be accompanied by afiling fee, set in accordance with W.S. 40-1-116, but not to exceed threehundred dollars ($300.00) and payable to the secretary.

 

40-1-104. Examination of application; amendment of application.

 

 

(a) Upon the filing of an application for registration andpayment of the application fee, the secretary may cause the application to beexamined for conformity with this act.

 

(b) The applicant shall provide any additional pertinentinformation requested by the secretary, including a description of a designmark and may make or authorize the secretary to make such amendments to theapplication as may be reasonably requested by the secretary or deemed by theapplicant to be advisable to respond to any rejection or objection.

 

(c) The secretary may require the applicant to disclaim anunregisterable component of a mark otherwise registerable and an applicant mayvoluntarily disclaim a component of a mark sought to be registered. Nodisclaimer shall prejudice or affect the applicant's or registrant's rightsthen existing or thereafter arising in the disclaimed matter, or theapplicant's or registrant's rights of registration on another application ifthe disclaimed matter be or shall have become distinctive of the applicant's orregistrant's goods or services.

 

(d) Amendments may be made by the secretary upon theapplication submitted by the applicant upon the applicant's agreement or afresh application may be required to be submitted.

 

(e) If the applicant is found not to be entitled toregistration, the secretary shall advise the applicant of the reasons. Theapplicant shall have a reasonable period of time specified by the secretary inwhich to reply or to amend the application, in which event the applicationshall then be reexamined. This procedure may be repeated until (A) thesecretary finally refuses registration of the mark or (B) the applicant failsto reply or amend within the specified period, whereupon the application shallbe deemed to have been abandoned.

 

40-1-105. Term of registration; renewals.

 

(a) Registration of a mark is effective for a term of five (5)years from the date of registration and, upon application filed within six (6)months prior to the expiration of such term, in a manner complying with therequirements of the secretary, the registration may be renewed for a like termfrom the end of the expiring term. A renewal fee set in accordance with W.S.40-1-116, but not to exceed one hundred fifty dollars ($150.00) and payable tothe secretary, shall accompany the application for renewal of the registration.

 

(b) Renewal periods. - A mark registration may be renewed forsuccessive periods of five (5) years in like manner. All applications forrenewal under this act, whether of registrations made under this act or ofregistrations effected under any prior act, shall include a verified statementthat the mark has been and is still in use and include a specimen showingactual use of the mark on or in connection with the goods or services.

 

(c) Repealed By Laws 1997, ch. 112, 3.

 

(d) Existing registration. - Any registration in force on thedate on which this act shall become effective shall continue in full force andeffect for the unexpired term and may be renewed by filing an application forrenewal with the secretary, complying with the requirements of the secretary,and paying the aforementioned renewal fee within six (6) months prior to theexpiration of the registration.

 

(e) Repealed By Laws 1997, ch. 112, 3.

 

40-1-106. Assignment of marks and registration; change of name.

 

 

(a) Any mark and its registration under this act shall beassignable with the goodwill of the business in which the mark is used, or withthat part of the goodwill of the business connected with the use of andsymbolized by the mark. Assignment shall be by instruments in writing dulyexecuted and may be recorded with the secretary upon the payment of a fee setin accordance with W.S. 40-1-116, but not to exceed seventy-five dollars($75.00) and payable to the secretary. Upon recording of the assignment, the secretaryshall issue in the name of the assignee a new certificate for the remainder ofthe term of the registration or of the last renewal thereof. An assignment ofany registration under this act shall be void as against any subsequentpurchaser for valuable consideration without notice, unless it is recorded withthe secretary within three (3) months after the date thereof or prior to suchsubsequent purchase.

 

(b) Any registrant or applicant effecting a change of the nameof the person to whom the mark was issued or for whom an application was filedmay record a certificate of change of name of the registrant or applicant withthe secretary upon the payment of the recording fee. The secretary may issuein the name of the assignee a certificate of registration of an assignedapplication. The secretary may issue in the name of the assignee, a newcertificate or registration for the remainder of the term of the registrationor last renewal thereof.

 

(c) A photocopy or photograph of any instrument referred to insubsections (a) and (b) of this section shall be accepted for recording if itis certified by the applicant, or their successors, to be a true and correctcopy of the original.

 

40-1-107. Public record of marks.

 

Thesecretary shall keep for public examination a record of all marks registered orrenewed under this act.

 

40-1-108. Cancellation of registration.

 

(a) The secretary shall cancel from the register in whole or inpart:

 

(i) Repealed By Laws 1997, ch. 112, 3.

 

(ii) Any registration concerning which the secretary shallreceive a voluntary request for cancellation thereof from the registrant or theassignee of record and shall receive payment of a fee set in accordance withW.S. 40-1-116, but not to exceed thirty dollars ($30.00);

 

(iii) All registrations granted under this act and not renewed inaccordance with the provisions hereof;

 

(iv) Any registration concerning which a court of competentjurisdiction shall find:

 

(A) That the registered mark has been abandoned;

 

(B) That the registrant is not the owner of the mark;

 

(C) That the registration was granted improperly;

 

(D) That the registration was obtained fraudulently;

 

(E) That the registered mark is so similar, as to be likely tocause confusion or mistake or to deceive, to a mark registered by anotherperson in the United States patent and trademark office, prior to the date ofthe filing of the application for registration by the registrant hereunder, andnot abandoned; provided, however, that should the registrant prove that theregistrant is the owner of a concurrent registration of his mark in the UnitedStates patent and trademark office covering an area including this state, theregistration hereunder shall not be cancelled;

 

(F) That the mark is or has become the generic name for thegoods or services, or a portion thereof, for which it has been registered.

 

(v) When a court of competent jurisdiction shall order cancellationof a registration on any ground.

 

40-1-109. Classification of marks.

 

(a) Repealed By Laws 1997, ch. 112, 3.

 

(b) Repealed By Laws 1997, ch. 112, 3.

 

(c) The secretary shall by regulation establish aclassification of goods and services for marks for the convenience ofadministration of this act, but not to limit or extend the applicant's orregistrant's rights.

 

40-1-110. False or fraudulent representations or declarations;liability for damages sustained.

 

Any person who shall for himself, or onbehalf of any other person, procure the filing or registration of any mark inthe office of the secretary under the provisions of this act, by knowinglymaking any false or fraudulent representation or declaration, orally or inwriting, or by any other fraudulent means, shall be liable to pay all damagessustained in consequence of such filing or registration, to be recovered by oron behalf of the party injured thereby in any court of competent jurisdiction.

 

40-1-111. Civil liability.

 

Subject to the provisions of W.S. 40-1-113any person who shall (a) use, without the consent of the registrant, anyreproduction, counterfeit, copy, or colorable imitation of a mark registeredunder this act in connection with the sale, distribution, offering for sale, oradvertising of any goods or services on or in connection with which such use islikely to cause confusion or mistake or to deceive as to the source of originof such goods or services, or (b) reproduce, counterfeit, copy or colorablyimitate any such mark and apply such reproduction, counterfeit, copy orcolorable imitation to labels, signs, prints, packages, wrappers, receptacles,or advertisements intended to be used upon or in conjunction with the sale orother distribution in this state of such goods or services, shall be liable toa civil action by the owner of such registered mark for any or all of theremedies provided in W.S. 40-1-112, except that under subsection (b) hereof theregistrant shall not be entitled to recover profits or damages unless the actshave been committed with knowledge that such mark is intended to be used tocause confusion or mistake or to deceive.

 

40-1-112. Remedies.

 

 

(a) Any owner of a mark registered under this act may proceedby suit to enjoin the manufacture, use, display or sale of any counterfeits orimitations thereof and any court of competent jurisdiction may grantinjunctions to restrain such manufacture, use, display, or sale as may be bythe said court deemed just and reasonable, and may require the defendants topay to such owner all profits derived from and/or all damages suffered byreason of such wrongful manufacture, use, display or sale; and such court may alsoorder that any such counterfeits or imitations in the possession or under thecontrol 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 enterjudgment for an amount not to exceed three (3) times such profits and damagesand reasonable attorneys' fees of the prevailing party in such cases where thecourt finds the other party committed such wrongful acts with knowledge or inbad faith or otherwise as according to the circumstances of the case.

 

(b) The enumeration of any right or remedy herein shall notaffect a registrant's right to prosecute under any penal law of this state.

 

40-1-113. Marks acquired at common law.

 

Nothing in this act shall adversely affectthe rights or the enforcement of rights in marks acquired in good faith at anytime at common law.

 

40-1-114. Inapplicable to livestock brands, marks or tags.

 

This act shall not be construed to apply tobrands, marks or tags on livestock.

 

40-1-115. Injury to business reputation; dilution.

 

(a) The owner of a mark which is famous in this state shall beentitled, subject to the principles of equity, to an injunction againstanother's use of a mark, commencing after the owner's mark becomes famous, whichcauses dilution of the distinctive quality of the owner's mark, and to obtainsuch other relief as is provided in this section. In determining whether amark is famous, a court may consider factors such as, but not limited to:

 

(i) The degree of inherent or acquired distinctiveness of themark in this state;

 

(ii) The duration and extent of use of the mark in connectionwith the goods and services;

 

(iii) The duration and extent of advertising and publicity of themark in this state;

 

(iv) The geographical extent of the trading area in which themark is used;

 

(v) The channels of trade for the goods or services with whichthe owner's mark is used;

 

(vi) The degree of recognition of the owner's mark in its and inthe other's trading areas and channels of trade in this state; and

 

(vii) The nature and extent of use of the same or similar mark bythird parties.

 

(b) The owner shall be entitled only to injunctive relief inthis state in an action brought under this section, unless the subsequent userwillfully intended to trade on the owner's reputation or to cause dilution ofthe owner's mark. If such willful intent is proven, the owner shall also beentitled to the remedies set forth in this act, subject to the discretion of thecourt and the principles of equity.

 

40-1-116. Powers of secretary of state; filing and other fees.

 

(a) The secretary has the power reasonably necessary to performthe duties required of him by this act including the promulgation of rules andregulations necessary to carry out the purposes of this act.

 

(b) The secretary shall set and collect filing, service andcopying fees to recover the costs of providing those services and administeringthis act. Fees shall not exceed the costs of providing these services andadministering this act.

 

State Codes and Statutes

Statutes > Wyoming > Title40 > Chapter1

CHAPTER 1 - TRADEMARKS AND SERVICE MARKS

 

40-1-101. Definitions.

 

(a) The term "trademark" as used in this act meansany word, name, symbol, or device or any combination thereof adopted and usedby a person to identify and distinguish the goods of such person, including aunique product, from those manufactured or sold by others, and to indicate thesource of the goods, even if that source is unknown.

 

(b) The term "service mark" as used in this act meansany word, name, symbol or device or any combination thereof used by a person,to identify and distinguish the services of one (1) person, including a uniqueservice, from the services of others and to indicate the source of theservices, even if that source is unknown. Titles, character names used by aperson and other distinctive features of radio or television programs may beregistered as service marks notwithstanding that they, or the programs, mayadvertise the goods of the sponsor.

 

(c) The term "mark" as used in this act includes anytrademark or service mark entitled to registration under this act whetherregistered or not.

 

(d) The term "person" and any other word or term usedto designate the applicant or other party entitled to a benefit or privilege orrendered liable under the provisions of this act includes a juristic person aswell as a natural person. The term "juristic person" includes afirm, partnership, corporation, association, union or other organization orbusiness entity capable of suing and being sued in a court of law.

 

(e) The term "applicant" as used in this act embracesthe person filing an application for registration of a mark under this act, andthe legal representatives, successors or assigns of such person.

 

(f) The term "registrant" as used in this actembraces the person to whom the registration of a mark under this act is issuedand the legal representatives, successors or assigns of such person.

 

(g) The term "use" in this act means the bona fideuse of a mark in the ordinary course of trade and not made merely to reserve aright in a mark. For the purposes of this act, a mark shall be deemed to be inuse in this state:

 

(i) On goods when it is placed in any manner on the goods orother containers on the displays associated therewith or on the tags or labelsaffixed thereto, or if the nature of the goods makes such placementimpracticable, then on documents associated with the goods or their sale, andthe goods are sold or transported in commerce in this state; and

 

(ii) On services when it is used or displayed in the sale oradvertising of services and the services are rendered in this state.

 

(h) A mark shall be deemed to be "abandoned" underthis act when either of the following occurs:

 

(i) When its use has been discontinued with the intent not toresume such use. Intent not to resume may be inferred from circumstances. Nonuse for two (2) consecutive years shall constitute prima facie evidence ofabandonment;

 

(ii) When any course of conduct of the owner, including acts ofomission as well as commission, causes the mark to lose its significance as amark.

 

(j) The term "dilution" as used in this act means thelessening of the capacity of a registrant's mark to identify and distinguishgoods or services, regardless of the presence or absence of:

 

(i) Competition between the parties; or

 

(ii) Likelihood of confusion, mistake or deception.

 

(k) The term "secretary" as used in this act meansthe secretary of state or the designee of the secretary charged with theadministration of this act.

 

(m) "This act" means W.S. 40-1-101 through 40-1-116.

 

40-1-102. Marks which cannot be registered.

 

(a) A mark by which the goods or services of any applicant forregistration may be distinguished from the goods or services of others shallnot be registered if it:

 

(i) Consists of or comprises immoral, deceptive or scandalousmatter; or

 

(ii) Consists of or comprises matter which may disparage orfalsely suggest a connection with persons, living or dead, institutions,beliefs, or national symbols, or bring them into contempt, or disrepute; or

 

(iii) Consists of or comprises the flag or coat of arms or otherinsignia of the United States, or of any state or municipality, or of anyforeign nation, or any simulation thereof; or

 

(iv) Consists of or comprises the name, signature or portraitidentifying a particular living individual, except by the individual's writtenconsent; or

 

(v) Consists of a mark which, (A) when used on or in connectionwith the goods or services of the applicant, is merely descriptive ordeceptively misdescriptive of them, or (B) when used on or in connection withthe goods or services of the applicant is primarily geographically descriptiveor deceptively misdescriptive of them, or (C) is primarily merely a surname;provided, however, that nothing in this paragraph shall prevent theregistration of a mark used in this state by the applicant which has becomedistinctive of the applicant's goods or services. The secretary may accept asevidence that the mark has become distinctive, as used on or in connection withthe applicant's goods or services, proof of continuous use thereof as a mark bythe applicant in this state or elsewhere for the five (5) years before the dateon which the claim of distinctiveness is made; or

 

(vi) Consists of or comprises a mark which is the same as, ordeceptively similar to, a mark registered in this state, a trade name or thename of a juristic person, or a mark or trade name previously used in thisstate by another and not abandoned, as to be likely, when applied to the goodsor services of the applicant, to cause confusion or mistake or to deceive.

 

40-1-103. Application for registration; filing fee.

 

(a) Subject to the limitations set forth in this act, anyperson who uses a mark in this state may file in the office of the secretary,in a manner complying with the requirements of the secretary, an applicationfor registration of that mark setting forth, but not limited to, the followinginformation:

 

(i) The name and business address of the person applying forsuch registration; and, if a corporation, the state of incorporation, or if apartnership, the state in which the partnership is organized and the names ofthe general partners, as specified by the secretary, or similar information forother juristic persons, as specified by the secretary;

 

(ii) The goods or services on or in connection with which themark is used and the mode or manner in which the mark is used on or inconnection with such goods or services and the class in which such goods orservices fall;

 

(iii) The date when the mark was first used anywhere and the datewhen it was first used in this state by the applicant or a predecessor ininterest;

 

(iv) 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 theapplication, no other person has registered, either federally or in this state,or has the right to use such mark either in the identical form thereof or insuch near resemblance as to be likely, when applied to the goods or services ofsuch other person, to cause confusion or to cause mistake or to deceive; and

 

(v) If required by the secretary, a statement as to whether anapplication to register the mark, or portions or a composite, has been filed bythe applicant or a predecessor in interest in the United States patent andtrademark office; and, if so, the applicant shall provide full particularsincluding the filing date and serial number of each application, the statusand, if any application was finally refused registration or has otherwise notresulted in a registration, the reasons therefor.

 

(b) The application shall be signed and verified by oath,affirmation or declaration subject to perjury laws by the applicant or by amember of the firm or an officer of the corporation or association applying.

 

(c) The application shall be accompanied by a specimen orfacsimile of such mark in triplicate. The secretary may also require that adrawing of the mark, complying with requirements as the secretary may specify,accompany the application.

 

(d) The application for registration shall be accompanied by afiling fee, set in accordance with W.S. 40-1-116, but not to exceed threehundred dollars ($300.00) and payable to the secretary.

 

40-1-104. Examination of application; amendment of application.

 

 

(a) Upon the filing of an application for registration andpayment of the application fee, the secretary may cause the application to beexamined for conformity with this act.

 

(b) The applicant shall provide any additional pertinentinformation requested by the secretary, including a description of a designmark and may make or authorize the secretary to make such amendments to theapplication as may be reasonably requested by the secretary or deemed by theapplicant to be advisable to respond to any rejection or objection.

 

(c) The secretary may require the applicant to disclaim anunregisterable component of a mark otherwise registerable and an applicant mayvoluntarily disclaim a component of a mark sought to be registered. Nodisclaimer shall prejudice or affect the applicant's or registrant's rightsthen existing or thereafter arising in the disclaimed matter, or theapplicant's or registrant's rights of registration on another application ifthe disclaimed matter be or shall have become distinctive of the applicant's orregistrant's goods or services.

 

(d) Amendments may be made by the secretary upon theapplication submitted by the applicant upon the applicant's agreement or afresh application may be required to be submitted.

 

(e) If the applicant is found not to be entitled toregistration, the secretary shall advise the applicant of the reasons. Theapplicant shall have a reasonable period of time specified by the secretary inwhich to reply or to amend the application, in which event the applicationshall then be reexamined. This procedure may be repeated until (A) thesecretary finally refuses registration of the mark or (B) the applicant failsto reply or amend within the specified period, whereupon the application shallbe deemed to have been abandoned.

 

40-1-105. Term of registration; renewals.

 

(a) Registration of a mark is effective for a term of five (5)years from the date of registration and, upon application filed within six (6)months prior to the expiration of such term, in a manner complying with therequirements of the secretary, the registration may be renewed for a like termfrom the end of the expiring term. A renewal fee set in accordance with W.S.40-1-116, but not to exceed one hundred fifty dollars ($150.00) and payable tothe secretary, shall accompany the application for renewal of the registration.

 

(b) Renewal periods. - A mark registration may be renewed forsuccessive periods of five (5) years in like manner. All applications forrenewal under this act, whether of registrations made under this act or ofregistrations effected under any prior act, shall include a verified statementthat the mark has been and is still in use and include a specimen showingactual use of the mark on or in connection with the goods or services.

 

(c) Repealed By Laws 1997, ch. 112, 3.

 

(d) Existing registration. - Any registration in force on thedate on which this act shall become effective shall continue in full force andeffect for the unexpired term and may be renewed by filing an application forrenewal with the secretary, complying with the requirements of the secretary,and paying the aforementioned renewal fee within six (6) months prior to theexpiration of the registration.

 

(e) Repealed By Laws 1997, ch. 112, 3.

 

40-1-106. Assignment of marks and registration; change of name.

 

 

(a) Any mark and its registration under this act shall beassignable with the goodwill of the business in which the mark is used, or withthat part of the goodwill of the business connected with the use of andsymbolized by the mark. Assignment shall be by instruments in writing dulyexecuted and may be recorded with the secretary upon the payment of a fee setin accordance with W.S. 40-1-116, but not to exceed seventy-five dollars($75.00) and payable to the secretary. Upon recording of the assignment, the secretaryshall issue in the name of the assignee a new certificate for the remainder ofthe term of the registration or of the last renewal thereof. An assignment ofany registration under this act shall be void as against any subsequentpurchaser for valuable consideration without notice, unless it is recorded withthe secretary within three (3) months after the date thereof or prior to suchsubsequent purchase.

 

(b) Any registrant or applicant effecting a change of the nameof the person to whom the mark was issued or for whom an application was filedmay record a certificate of change of name of the registrant or applicant withthe secretary upon the payment of the recording fee. The secretary may issuein the name of the assignee a certificate of registration of an assignedapplication. The secretary may issue in the name of the assignee, a newcertificate or registration for the remainder of the term of the registrationor last renewal thereof.

 

(c) A photocopy or photograph of any instrument referred to insubsections (a) and (b) of this section shall be accepted for recording if itis certified by the applicant, or their successors, to be a true and correctcopy of the original.

 

40-1-107. Public record of marks.

 

Thesecretary shall keep for public examination a record of all marks registered orrenewed under this act.

 

40-1-108. Cancellation of registration.

 

(a) The secretary shall cancel from the register in whole or inpart:

 

(i) Repealed By Laws 1997, ch. 112, 3.

 

(ii) Any registration concerning which the secretary shallreceive a voluntary request for cancellation thereof from the registrant or theassignee of record and shall receive payment of a fee set in accordance withW.S. 40-1-116, but not to exceed thirty dollars ($30.00);

 

(iii) All registrations granted under this act and not renewed inaccordance with the provisions hereof;

 

(iv) Any registration concerning which a court of competentjurisdiction shall find:

 

(A) That the registered mark has been abandoned;

 

(B) That the registrant is not the owner of the mark;

 

(C) That the registration was granted improperly;

 

(D) That the registration was obtained fraudulently;

 

(E) That the registered mark is so similar, as to be likely tocause confusion or mistake or to deceive, to a mark registered by anotherperson in the United States patent and trademark office, prior to the date ofthe filing of the application for registration by the registrant hereunder, andnot abandoned; provided, however, that should the registrant prove that theregistrant is the owner of a concurrent registration of his mark in the UnitedStates patent and trademark office covering an area including this state, theregistration hereunder shall not be cancelled;

 

(F) That the mark is or has become the generic name for thegoods or services, or a portion thereof, for which it has been registered.

 

(v) When a court of competent jurisdiction shall order cancellationof a registration on any ground.

 

40-1-109. Classification of marks.

 

(a) Repealed By Laws 1997, ch. 112, 3.

 

(b) Repealed By Laws 1997, ch. 112, 3.

 

(c) The secretary shall by regulation establish aclassification of goods and services for marks for the convenience ofadministration of this act, but not to limit or extend the applicant's orregistrant's rights.

 

40-1-110. False or fraudulent representations or declarations;liability for damages sustained.

 

Any person who shall for himself, or onbehalf of any other person, procure the filing or registration of any mark inthe office of the secretary under the provisions of this act, by knowinglymaking any false or fraudulent representation or declaration, orally or inwriting, or by any other fraudulent means, shall be liable to pay all damagessustained in consequence of such filing or registration, to be recovered by oron behalf of the party injured thereby in any court of competent jurisdiction.

 

40-1-111. Civil liability.

 

Subject to the provisions of W.S. 40-1-113any person who shall (a) use, without the consent of the registrant, anyreproduction, counterfeit, copy, or colorable imitation of a mark registeredunder this act in connection with the sale, distribution, offering for sale, oradvertising of any goods or services on or in connection with which such use islikely to cause confusion or mistake or to deceive as to the source of originof such goods or services, or (b) reproduce, counterfeit, copy or colorablyimitate any such mark and apply such reproduction, counterfeit, copy orcolorable imitation to labels, signs, prints, packages, wrappers, receptacles,or advertisements intended to be used upon or in conjunction with the sale orother distribution in this state of such goods or services, shall be liable toa civil action by the owner of such registered mark for any or all of theremedies provided in W.S. 40-1-112, except that under subsection (b) hereof theregistrant shall not be entitled to recover profits or damages unless the actshave been committed with knowledge that such mark is intended to be used tocause confusion or mistake or to deceive.

 

40-1-112. Remedies.

 

 

(a) Any owner of a mark registered under this act may proceedby suit to enjoin the manufacture, use, display or sale of any counterfeits orimitations thereof and any court of competent jurisdiction may grantinjunctions to restrain such manufacture, use, display, or sale as may be bythe said court deemed just and reasonable, and may require the defendants topay to such owner all profits derived from and/or all damages suffered byreason of such wrongful manufacture, use, display or sale; and such court may alsoorder that any such counterfeits or imitations in the possession or under thecontrol 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 enterjudgment for an amount not to exceed three (3) times such profits and damagesand reasonable attorneys' fees of the prevailing party in such cases where thecourt finds the other party committed such wrongful acts with knowledge or inbad faith or otherwise as according to the circumstances of the case.

 

(b) The enumeration of any right or remedy herein shall notaffect a registrant's right to prosecute under any penal law of this state.

 

40-1-113. Marks acquired at common law.

 

Nothing in this act shall adversely affectthe rights or the enforcement of rights in marks acquired in good faith at anytime at common law.

 

40-1-114. Inapplicable to livestock brands, marks or tags.

 

This act shall not be construed to apply tobrands, marks or tags on livestock.

 

40-1-115. Injury to business reputation; dilution.

 

(a) The owner of a mark which is famous in this state shall beentitled, subject to the principles of equity, to an injunction againstanother's use of a mark, commencing after the owner's mark becomes famous, whichcauses dilution of the distinctive quality of the owner's mark, and to obtainsuch other relief as is provided in this section. In determining whether amark is famous, a court may consider factors such as, but not limited to:

 

(i) The degree of inherent or acquired distinctiveness of themark in this state;

 

(ii) The duration and extent of use of the mark in connectionwith the goods and services;

 

(iii) The duration and extent of advertising and publicity of themark in this state;

 

(iv) The geographical extent of the trading area in which themark is used;

 

(v) The channels of trade for the goods or services with whichthe owner's mark is used;

 

(vi) The degree of recognition of the owner's mark in its and inthe other's trading areas and channels of trade in this state; and

 

(vii) The nature and extent of use of the same or similar mark bythird parties.

 

(b) The owner shall be entitled only to injunctive relief inthis state in an action brought under this section, unless the subsequent userwillfully intended to trade on the owner's reputation or to cause dilution ofthe owner's mark. If such willful intent is proven, the owner shall also beentitled to the remedies set forth in this act, subject to the discretion of thecourt and the principles of equity.

 

40-1-116. Powers of secretary of state; filing and other fees.

 

(a) The secretary has the power reasonably necessary to performthe duties required of him by this act including the promulgation of rules andregulations necessary to carry out the purposes of this act.

 

(b) The secretary shall set and collect filing, service andcopying fees to recover the costs of providing those services and administeringthis act. Fees shall not exceed the costs of providing these services andadministering this act.

 


State Codes and Statutes

State Codes and Statutes

Statutes > Wyoming > Title40 > Chapter1

CHAPTER 1 - TRADEMARKS AND SERVICE MARKS

 

40-1-101. Definitions.

 

(a) The term "trademark" as used in this act meansany word, name, symbol, or device or any combination thereof adopted and usedby a person to identify and distinguish the goods of such person, including aunique product, from those manufactured or sold by others, and to indicate thesource of the goods, even if that source is unknown.

 

(b) The term "service mark" as used in this act meansany word, name, symbol or device or any combination thereof used by a person,to identify and distinguish the services of one (1) person, including a uniqueservice, from the services of others and to indicate the source of theservices, even if that source is unknown. Titles, character names used by aperson and other distinctive features of radio or television programs may beregistered as service marks notwithstanding that they, or the programs, mayadvertise the goods of the sponsor.

 

(c) The term "mark" as used in this act includes anytrademark or service mark entitled to registration under this act whetherregistered or not.

 

(d) The term "person" and any other word or term usedto designate the applicant or other party entitled to a benefit or privilege orrendered liable under the provisions of this act includes a juristic person aswell as a natural person. The term "juristic person" includes afirm, partnership, corporation, association, union or other organization orbusiness entity capable of suing and being sued in a court of law.

 

(e) The term "applicant" as used in this act embracesthe person filing an application for registration of a mark under this act, andthe legal representatives, successors or assigns of such person.

 

(f) The term "registrant" as used in this actembraces the person to whom the registration of a mark under this act is issuedand the legal representatives, successors or assigns of such person.

 

(g) The term "use" in this act means the bona fideuse of a mark in the ordinary course of trade and not made merely to reserve aright in a mark. For the purposes of this act, a mark shall be deemed to be inuse in this state:

 

(i) On goods when it is placed in any manner on the goods orother containers on the displays associated therewith or on the tags or labelsaffixed thereto, or if the nature of the goods makes such placementimpracticable, then on documents associated with the goods or their sale, andthe goods are sold or transported in commerce in this state; and

 

(ii) On services when it is used or displayed in the sale oradvertising of services and the services are rendered in this state.

 

(h) A mark shall be deemed to be "abandoned" underthis act when either of the following occurs:

 

(i) When its use has been discontinued with the intent not toresume such use. Intent not to resume may be inferred from circumstances. Nonuse for two (2) consecutive years shall constitute prima facie evidence ofabandonment;

 

(ii) When any course of conduct of the owner, including acts ofomission as well as commission, causes the mark to lose its significance as amark.

 

(j) The term "dilution" as used in this act means thelessening of the capacity of a registrant's mark to identify and distinguishgoods or services, regardless of the presence or absence of:

 

(i) Competition between the parties; or

 

(ii) Likelihood of confusion, mistake or deception.

 

(k) The term "secretary" as used in this act meansthe secretary of state or the designee of the secretary charged with theadministration of this act.

 

(m) "This act" means W.S. 40-1-101 through 40-1-116.

 

40-1-102. Marks which cannot be registered.

 

(a) A mark by which the goods or services of any applicant forregistration may be distinguished from the goods or services of others shallnot be registered if it:

 

(i) Consists of or comprises immoral, deceptive or scandalousmatter; or

 

(ii) Consists of or comprises matter which may disparage orfalsely suggest a connection with persons, living or dead, institutions,beliefs, or national symbols, or bring them into contempt, or disrepute; or

 

(iii) Consists of or comprises the flag or coat of arms or otherinsignia of the United States, or of any state or municipality, or of anyforeign nation, or any simulation thereof; or

 

(iv) Consists of or comprises the name, signature or portraitidentifying a particular living individual, except by the individual's writtenconsent; or

 

(v) Consists of a mark which, (A) when used on or in connectionwith the goods or services of the applicant, is merely descriptive ordeceptively misdescriptive of them, or (B) when used on or in connection withthe goods or services of the applicant is primarily geographically descriptiveor deceptively misdescriptive of them, or (C) is primarily merely a surname;provided, however, that nothing in this paragraph shall prevent theregistration of a mark used in this state by the applicant which has becomedistinctive of the applicant's goods or services. The secretary may accept asevidence that the mark has become distinctive, as used on or in connection withthe applicant's goods or services, proof of continuous use thereof as a mark bythe applicant in this state or elsewhere for the five (5) years before the dateon which the claim of distinctiveness is made; or

 

(vi) Consists of or comprises a mark which is the same as, ordeceptively similar to, a mark registered in this state, a trade name or thename of a juristic person, or a mark or trade name previously used in thisstate by another and not abandoned, as to be likely, when applied to the goodsor services of the applicant, to cause confusion or mistake or to deceive.

 

40-1-103. Application for registration; filing fee.

 

(a) Subject to the limitations set forth in this act, anyperson who uses a mark in this state may file in the office of the secretary,in a manner complying with the requirements of the secretary, an applicationfor registration of that mark setting forth, but not limited to, the followinginformation:

 

(i) The name and business address of the person applying forsuch registration; and, if a corporation, the state of incorporation, or if apartnership, the state in which the partnership is organized and the names ofthe general partners, as specified by the secretary, or similar information forother juristic persons, as specified by the secretary;

 

(ii) The goods or services on or in connection with which themark is used and the mode or manner in which the mark is used on or inconnection with such goods or services and the class in which such goods orservices fall;

 

(iii) The date when the mark was first used anywhere and the datewhen it was first used in this state by the applicant or a predecessor ininterest;

 

(iv) 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 theapplication, no other person has registered, either federally or in this state,or has the right to use such mark either in the identical form thereof or insuch near resemblance as to be likely, when applied to the goods or services ofsuch other person, to cause confusion or to cause mistake or to deceive; and

 

(v) If required by the secretary, a statement as to whether anapplication to register the mark, or portions or a composite, has been filed bythe applicant or a predecessor in interest in the United States patent andtrademark office; and, if so, the applicant shall provide full particularsincluding the filing date and serial number of each application, the statusand, if any application was finally refused registration or has otherwise notresulted in a registration, the reasons therefor.

 

(b) The application shall be signed and verified by oath,affirmation or declaration subject to perjury laws by the applicant or by amember of the firm or an officer of the corporation or association applying.

 

(c) The application shall be accompanied by a specimen orfacsimile of such mark in triplicate. The secretary may also require that adrawing of the mark, complying with requirements as the secretary may specify,accompany the application.

 

(d) The application for registration shall be accompanied by afiling fee, set in accordance with W.S. 40-1-116, but not to exceed threehundred dollars ($300.00) and payable to the secretary.

 

40-1-104. Examination of application; amendment of application.

 

 

(a) Upon the filing of an application for registration andpayment of the application fee, the secretary may cause the application to beexamined for conformity with this act.

 

(b) The applicant shall provide any additional pertinentinformation requested by the secretary, including a description of a designmark and may make or authorize the secretary to make such amendments to theapplication as may be reasonably requested by the secretary or deemed by theapplicant to be advisable to respond to any rejection or objection.

 

(c) The secretary may require the applicant to disclaim anunregisterable component of a mark otherwise registerable and an applicant mayvoluntarily disclaim a component of a mark sought to be registered. Nodisclaimer shall prejudice or affect the applicant's or registrant's rightsthen existing or thereafter arising in the disclaimed matter, or theapplicant's or registrant's rights of registration on another application ifthe disclaimed matter be or shall have become distinctive of the applicant's orregistrant's goods or services.

 

(d) Amendments may be made by the secretary upon theapplication submitted by the applicant upon the applicant's agreement or afresh application may be required to be submitted.

 

(e) If the applicant is found not to be entitled toregistration, the secretary shall advise the applicant of the reasons. Theapplicant shall have a reasonable period of time specified by the secretary inwhich to reply or to amend the application, in which event the applicationshall then be reexamined. This procedure may be repeated until (A) thesecretary finally refuses registration of the mark or (B) the applicant failsto reply or amend within the specified period, whereupon the application shallbe deemed to have been abandoned.

 

40-1-105. Term of registration; renewals.

 

(a) Registration of a mark is effective for a term of five (5)years from the date of registration and, upon application filed within six (6)months prior to the expiration of such term, in a manner complying with therequirements of the secretary, the registration may be renewed for a like termfrom the end of the expiring term. A renewal fee set in accordance with W.S.40-1-116, but not to exceed one hundred fifty dollars ($150.00) and payable tothe secretary, shall accompany the application for renewal of the registration.

 

(b) Renewal periods. - A mark registration may be renewed forsuccessive periods of five (5) years in like manner. All applications forrenewal under this act, whether of registrations made under this act or ofregistrations effected under any prior act, shall include a verified statementthat the mark has been and is still in use and include a specimen showingactual use of the mark on or in connection with the goods or services.

 

(c) Repealed By Laws 1997, ch. 112, 3.

 

(d) Existing registration. - Any registration in force on thedate on which this act shall become effective shall continue in full force andeffect for the unexpired term and may be renewed by filing an application forrenewal with the secretary, complying with the requirements of the secretary,and paying the aforementioned renewal fee within six (6) months prior to theexpiration of the registration.

 

(e) Repealed By Laws 1997, ch. 112, 3.

 

40-1-106. Assignment of marks and registration; change of name.

 

 

(a) Any mark and its registration under this act shall beassignable with the goodwill of the business in which the mark is used, or withthat part of the goodwill of the business connected with the use of andsymbolized by the mark. Assignment shall be by instruments in writing dulyexecuted and may be recorded with the secretary upon the payment of a fee setin accordance with W.S. 40-1-116, but not to exceed seventy-five dollars($75.00) and payable to the secretary. Upon recording of the assignment, the secretaryshall issue in the name of the assignee a new certificate for the remainder ofthe term of the registration or of the last renewal thereof. An assignment ofany registration under this act shall be void as against any subsequentpurchaser for valuable consideration without notice, unless it is recorded withthe secretary within three (3) months after the date thereof or prior to suchsubsequent purchase.

 

(b) Any registrant or applicant effecting a change of the nameof the person to whom the mark was issued or for whom an application was filedmay record a certificate of change of name of the registrant or applicant withthe secretary upon the payment of the recording fee. The secretary may issuein the name of the assignee a certificate of registration of an assignedapplication. The secretary may issue in the name of the assignee, a newcertificate or registration for the remainder of the term of the registrationor last renewal thereof.

 

(c) A photocopy or photograph of any instrument referred to insubsections (a) and (b) of this section shall be accepted for recording if itis certified by the applicant, or their successors, to be a true and correctcopy of the original.

 

40-1-107. Public record of marks.

 

Thesecretary shall keep for public examination a record of all marks registered orrenewed under this act.

 

40-1-108. Cancellation of registration.

 

(a) The secretary shall cancel from the register in whole or inpart:

 

(i) Repealed By Laws 1997, ch. 112, 3.

 

(ii) Any registration concerning which the secretary shallreceive a voluntary request for cancellation thereof from the registrant or theassignee of record and shall receive payment of a fee set in accordance withW.S. 40-1-116, but not to exceed thirty dollars ($30.00);

 

(iii) All registrations granted under this act and not renewed inaccordance with the provisions hereof;

 

(iv) Any registration concerning which a court of competentjurisdiction shall find:

 

(A) That the registered mark has been abandoned;

 

(B) That the registrant is not the owner of the mark;

 

(C) That the registration was granted improperly;

 

(D) That the registration was obtained fraudulently;

 

(E) That the registered mark is so similar, as to be likely tocause confusion or mistake or to deceive, to a mark registered by anotherperson in the United States patent and trademark office, prior to the date ofthe filing of the application for registration by the registrant hereunder, andnot abandoned; provided, however, that should the registrant prove that theregistrant is the owner of a concurrent registration of his mark in the UnitedStates patent and trademark office covering an area including this state, theregistration hereunder shall not be cancelled;

 

(F) That the mark is or has become the generic name for thegoods or services, or a portion thereof, for which it has been registered.

 

(v) When a court of competent jurisdiction shall order cancellationof a registration on any ground.

 

40-1-109. Classification of marks.

 

(a) Repealed By Laws 1997, ch. 112, 3.

 

(b) Repealed By Laws 1997, ch. 112, 3.

 

(c) The secretary shall by regulation establish aclassification of goods and services for marks for the convenience ofadministration of this act, but not to limit or extend the applicant's orregistrant's rights.

 

40-1-110. False or fraudulent representations or declarations;liability for damages sustained.

 

Any person who shall for himself, or onbehalf of any other person, procure the filing or registration of any mark inthe office of the secretary under the provisions of this act, by knowinglymaking any false or fraudulent representation or declaration, orally or inwriting, or by any other fraudulent means, shall be liable to pay all damagessustained in consequence of such filing or registration, to be recovered by oron behalf of the party injured thereby in any court of competent jurisdiction.

 

40-1-111. Civil liability.

 

Subject to the provisions of W.S. 40-1-113any person who shall (a) use, without the consent of the registrant, anyreproduction, counterfeit, copy, or colorable imitation of a mark registeredunder this act in connection with the sale, distribution, offering for sale, oradvertising of any goods or services on or in connection with which such use islikely to cause confusion or mistake or to deceive as to the source of originof such goods or services, or (b) reproduce, counterfeit, copy or colorablyimitate any such mark and apply such reproduction, counterfeit, copy orcolorable imitation to labels, signs, prints, packages, wrappers, receptacles,or advertisements intended to be used upon or in conjunction with the sale orother distribution in this state of such goods or services, shall be liable toa civil action by the owner of such registered mark for any or all of theremedies provided in W.S. 40-1-112, except that under subsection (b) hereof theregistrant shall not be entitled to recover profits or damages unless the actshave been committed with knowledge that such mark is intended to be used tocause confusion or mistake or to deceive.

 

40-1-112. Remedies.

 

 

(a) Any owner of a mark registered under this act may proceedby suit to enjoin the manufacture, use, display or sale of any counterfeits orimitations thereof and any court of competent jurisdiction may grantinjunctions to restrain such manufacture, use, display, or sale as may be bythe said court deemed just and reasonable, and may require the defendants topay to such owner all profits derived from and/or all damages suffered byreason of such wrongful manufacture, use, display or sale; and such court may alsoorder that any such counterfeits or imitations in the possession or under thecontrol 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 enterjudgment for an amount not to exceed three (3) times such profits and damagesand reasonable attorneys' fees of the prevailing party in such cases where thecourt finds the other party committed such wrongful acts with knowledge or inbad faith or otherwise as according to the circumstances of the case.

 

(b) The enumeration of any right or remedy herein shall notaffect a registrant's right to prosecute under any penal law of this state.

 

40-1-113. Marks acquired at common law.

 

Nothing in this act shall adversely affectthe rights or the enforcement of rights in marks acquired in good faith at anytime at common law.

 

40-1-114. Inapplicable to livestock brands, marks or tags.

 

This act shall not be construed to apply tobrands, marks or tags on livestock.

 

40-1-115. Injury to business reputation; dilution.

 

(a) The owner of a mark which is famous in this state shall beentitled, subject to the principles of equity, to an injunction againstanother's use of a mark, commencing after the owner's mark becomes famous, whichcauses dilution of the distinctive quality of the owner's mark, and to obtainsuch other relief as is provided in this section. In determining whether amark is famous, a court may consider factors such as, but not limited to:

 

(i) The degree of inherent or acquired distinctiveness of themark in this state;

 

(ii) The duration and extent of use of the mark in connectionwith the goods and services;

 

(iii) The duration and extent of advertising and publicity of themark in this state;

 

(iv) The geographical extent of the trading area in which themark is used;

 

(v) The channels of trade for the goods or services with whichthe owner's mark is used;

 

(vi) The degree of recognition of the owner's mark in its and inthe other's trading areas and channels of trade in this state; and

 

(vii) The nature and extent of use of the same or similar mark bythird parties.

 

(b) The owner shall be entitled only to injunctive relief inthis state in an action brought under this section, unless the subsequent userwillfully intended to trade on the owner's reputation or to cause dilution ofthe owner's mark. If such willful intent is proven, the owner shall also beentitled to the remedies set forth in this act, subject to the discretion of thecourt and the principles of equity.

 

40-1-116. Powers of secretary of state; filing and other fees.

 

(a) The secretary has the power reasonably necessary to performthe duties required of him by this act including the promulgation of rules andregulations necessary to carry out the purposes of this act.

 

(b) The secretary shall set and collect filing, service andcopying fees to recover the costs of providing those services and administeringthis act. Fees shall not exceed the costs of providing these services andadministering this act.

 

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