SECTIONS 14205-14209 - California Statutes

BUSINESS AND PROFESSIONS CODE

SECTION 14205-14209

14205. A mark by which the goods or services of any applicant for
registration may be distinguished from the goods or services of
others shall not be registered if it meets any of the following
criteria:
(a) It consists of or comprises immoral, deceptive, or scandalous
matter.
(b) It consists of or comprises matter that may disparage or
falsely suggest a connection with persons living or dead,
institutions, beliefs, or national symbols, or bring them into
contempt or disrepute.
(c) It consists of or comprises the flag or coat of arms or other
insignia of the United States of America, of any state or
municipality, or of any foreign nation, or any simulation thereof.
(d) It consists of or comprises the name, signature, or a portrait
identifying a particular living individual, except by the individual'
s written consent.
(e) It consists of a mark that is any of the following:
(1) When used on or in connection with the goods or services of
the applicant, is merely descriptive or deceptively misdescriptive of
them.
(2) When used on or in connection with the goods or services of
the applicant, is primarily geographically descriptive or deceptively
misdescriptive of them.
(3) Is primarily merely a surname, provided, however, that nothing
in this paragraph shall prevent the registration of a mark used by
the applicant that has become distinctive of the applicant's goods or
services. The secretary may accept as evidence that the mark has
become distinctive, as used on or in connection with the applicant's
goods or services, proof of continuous use thereof as a mark by the
applicant in this state for the five years before the date on which
the claim of distinctiveness is made.
(f) It consists of or comprises a mark that so resembles a mark
registered in this state or a mark or trade name previously used by
another and not abandoned, as to be likely, when used on or in
connection with the goods or services of the applicant, to cause
confusion or mistake, or to deceive.

14207. (a) Subject to the limitations set forth in this chapter, a
person who uses a mark may file with the secretary, on a form
prescribed by the secretary, an application for registration of that
mark setting forth, but not limited to, the following information:
(1) The name and business address of the person applying for the
registration and, if that person is a corporation or partnership, the
state of incorporation or the state in which the partnership is
organized and the names of the general partners, as specified by the
secretary.
(2) The goods or services on or in connection with which the mark
is used, the mode or manner in which the mark is used on or in
connection with the goods or services, and the class in which the
goods or services fall.
(3) The date on which the mark was first used anywhere and the
date when it was first used in this state by the applicant or a
predecessor in interest.
(4) 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 the application, no other person has registered in this
state or has the right to use the mark, either in the identical form
or in such near resemblance as to be likely, when applied to the
goods or services of the other person, to cause confusion, to cause
mistake, or to deceive.
(b) The secretary may also require a statement as to whether an
application to register the mark, or portions or a composite thereof,
has been filed by the applicant or a predecessor in interest with
the United States Patent and Trademark Office and, if so, the
applicant shall provide full particulars with respect thereto,
including the filing date and serial number of each application, the
status thereof, and, if any application was finally refused
registration or has otherwise not resulted in a registration, the
reasons for the refusal or result.
(c) The secretary may also require that a drawing of the mark,
complying with requirements specified by the secretary, accompany the
application.
(d) The application shall include a declaration of accuracy signed
by the applicant, by a member of the firm or an officer of the
corporation or association making application, or by a general
partner of the partnership making application. If the person signing
the declaration willfully states as true in the declaration a
material fact that he or she knows to be false, he or she shall be
subject to a civil penalty of not more than ten thousand dollars
($10,000). An action for that penalty may be brought by a public
prosecutor. The person signing the declaration shall be informed of
this penalty in writing.
(e) The application shall be accompanied by three specimens
showing the mark as actually used.
(f) The application shall be accompanied by the application fee
payable to the secretary as set forth in subdivision (a) of Section
12193 of the Government Code.
(g) If the mark or any part of the mark is in any language other
than English, the application shall be accompanied by a certified
translation in English.

14209. (a) Upon the filing of an application for registration and
payment of the application fee, the secretary may cause the
application to be examined for conformity with this chapter.
(b) The applicant shall provide any additional pertinent
information requested by the secretary, including a description of a
design mark, and may make, or authorize the secretary to make,
amendments to the application as may be reasonably requested by the
secretary or deemed by the applicant to be advisable in order to
respond to any rejection or objection.
(c) The secretary may require the applicant to disclaim an
unregisterable component of an otherwise registerable mark, and an
applicant may voluntarily disclaim a component of a mark sought to be
registered. No disclaimer shall prejudice or affect the applicant's
or registrant's rights, then existing or thereafter arising, in the
disclaimed matter, or the applicant's or registrant's rights of
registration on another application if the disclaimed matter is or
has become distinctive of the applicant's or registrant's goods or
services.
(d) The secretary may make amendments to the application submitted
by the applicant upon the applicant's agreement, or may require the
submission of a new application.
(e) If an applicant is found not to be entitled to registration,
the secretary shall so advise the applicant and shall advise the
applicant of the reasons. The applicant shall have a reasonable
period of time specified by the secretary in which to reply or to
amend the application, in which event the application shall be
reexamined. This procedure may be repeated until the secretary
finally refuses registration of the mark or the applicant fails to
reply or amend within the specified period, whereupon the application
shall be deemed to have been abandoned.
(f) If the secretary finally refuses registration of the mark, the
applicant may seek a writ of mandamus to compel registration. A writ
may be granted, but without costs to the secretary, on proof that
all statements in the application are true and that the mark is
otherwise entitled to registration.
(g) In the instance of applications concurrently being processed
by the secretary seeking registration of the same or confusingly
similar marks for the same or related goods or services, the
secretary shall grant priority to the applications in the order of
filing. If a prior-filed application is granted a registration, the
other application or applications shall then be rejected. Any
rejected applicant may bring an action for cancellation of the
registration upon grounds of prior or superior rights to the mark, in
accordance with the provisions of Section 14230.