765 ILCS 1036/ Trademark Registration and Protection Act. - Illinois Statutes

(765 ILCS 1036/1)     Sec. 1. Short title. This Act may be cited as the Trademark Registration and Protection Act. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/5)     Sec. 5. Definitions. In this Act:     (a) A mark shall be deemed to be "abandoned" when either of the following occurs:         (1) When its use has been discontinued with intent

not to resume that use. Intent not to resume may be inferred from circumstances. Nonuse for 2 consecutive years shall constitute prima facie evidence of abandonment.

(2) When any course of conduct of the owner,

including acts of omission as well as commission, causes the mark to lose its significance as a mark.

(b) "Applicant" means the person filing an application for registration of a mark under this Act, and the legal representatives, successors, or assigns of that person.     (c) "Dilution" means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.     (d) "Mark" includes any trademark or servicemark entitled to registration under this Act whether registered or not.     (e) "Person" and any other word or term used to designate the applicant or other party entitled to benefit or privilege or rendered liable under the provisions of this Act means a natural person as well as a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.     (f) "Registrant" means the person to whom the registration of a mark is issued under this Act, and the legal representatives, successors, or assigns of that person.     (g) "Secretary" means the Secretary of State of Illinois or the designee of the Secretary charged with the administration of this Act.     (h) "Servicemark" means any word, name, symbol, or device or any combination thereof used by a person, to identify and distinguish the services of one person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown. Titles, character names used by a person, and other distinctive features of radio or television programs may be registered as servicemarks notwithstanding that they, or the programs, may advertise the goods of the sponsor.     (i) "Trademark" means any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the goods of the person, including a unique product, from those manufactured and sold by others, and to indicate the source of the goods, even if that source is unknown.     (j) "Tradename" means any name used by a person to identify a business or vocation of the person.     (k) "Use" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For the purposes of this Act, a mark shall be deemed to be in use (1) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce in this State, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in this State. (Source: P.A. 90‑231, eff. 1‑1‑98.)

    (765 ILCS 1036/10)
    Sec. 10. Registrability. A mark by which the goods or services of an applicant for registration may be distinguished from the goods or services of others shall not be registered if it:
    (a) consists of or comprises immoral, deceptive, or scandalous matter; or
    (b) 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; or
    (c) consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulation thereof; or
    (d) consists of or comprises the name, signature or portrait identifying a particular living individual, except by the individual's written consent; or
    (e) consists of a mark which: (1) when used on or in connection with the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, or (3) is primarily merely a surname; however, nothing in this subsection (e) shall prevent the registration of a mark used by the applicant which 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 5 years before the date on which the claim of distinctiveness is made; or
    (f) consists of or comprises a mark which so resembles a mark registered in this State of a mark of tradename 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; or
    (g) without the consent of the United States Olympic Committee:
        (1) contains or consists of the symbol of the

International Olympic Committee, consisting of 5 interlocking rings, or the symbol of the International Paralympic Committee;

(2) contains or consists of the terms "Olympic",

"Olympiad", "Paralympic", "Paralympiad", "Citius Altius Fortius", or "Chicago 2016"; or

(3) is substantially identical to any other mark or

trade name used by the International Olympic Committee, the International Paralympic Committee, the United States Olympic Committee, or Chicago 2016 or its successor organizing committee for the 2016 Olympic and Paralympic Games.

(Source: P.A. 96‑7, eff. 4‑3‑09.)

(765 ILCS 1036/15)     Sec. 15. Application for registration. Subject to the limitations set forth in this Act, any person who uses a mark may file in the office of the Secretary, on a form to be furnished by the Secretary, an application for registration of that mark setting forth, but not limited to the following information:     (a) the name and business address of the person applying for the registration; and, if a corporation, the state of incorporation, or if a partnership, the state in which the partnership is organized and name of one of the general partners, or if a limited liability company, the state in which the company is organized;     (b) an appointment of the Secretary of State as agent for service of process in any action relating only to the registration which may be issued, if the applicant be, or shall become a non‑resident individual, or foreign partnership, limited liability company, association, or corporation not licensed to do business in this State, or cannot be found in this State;     (c) the goods or services on or in connection with which the mark is used and the mode or manner in which the mark is used on or in connection with such goods or services and class in which such goods or services fall;     (d) the date when 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; and     (e) 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 the mark, either federally or in this State, or has the right to use the mark either in the identical form thereof or in such near resemblance thereto as to be likely, when applied to the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive.     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 in 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 therefor.     The Secretary may also require that a drawing of the mark, complying with such requirements as the Secretary may specify, accompany the application.     The application shall be signed and verified (by oath, affirmation, or declaration subject to perjury laws) by the applicant or by a member of the firm or an officer of the corporation or association applying.     The application shall be accompanied by 3 specimens showing the mark as actually used.     The application shall be accompanied by the application fee of $10 payable to the Secretary of State. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/20)     Sec. 20. Filing of application.     (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 Act.     (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, such amendments to the application as may be reasonably requested by the Secretary or deemed by applicant to be advisable to respond to any rejection or objection.     (c) The Secretary may require the applicant to disclaim an unregisterable component of a mark otherwise registerable, 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 be or shall have become distinctive of the applicant's or registrant's goods or services.     (d) Amendments may be made by the Secretary upon the application submitted by the applicant upon applicant's agreement; or a fresh application may be required to be submitted.     (e) If the applicant is found not to be entitled to registration, the Secretary shall advise the applicant thereof and of the reasons therefor. 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 then be reexamined. This procedure may be repeated until (1) the Secretary finally refuses registration of the mark or (2) the applicant fails to reply or amend within the specified period, whereupon the application shall be deemed to have been abandoned.     (f) All final decisions of the Secretary of State under this Act shall be deemed to be administrative decisions and subject to judicial review under the provisions of the Administrative Review Law and the rules adopted pursuant thereto.     (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 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 45 of this Act. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/25)     Sec. 25. Certificate of registration. Upon compliance by the applicant with the requirements of this Act, the Secretary shall cause a certificate of registration to be issued and delivered to the applicant. The certificate of registration shall be issued under the signature of the Secretary and the Seal of the State, and it shall show the name and business address and, if a corporation, the state of incorporation, or if a partnership, the state in which the partnership is organized and the name of one of the general partners, or if a limited liability company, the state in which the company is organized, of the person claiming ownership of the mark, the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in this State, the class of goods or services and a description of the goods or services on or in connection with which the mark is used, a reproduction of the mark, the registration date and the term of the registration.     Any certificate of registration issued by the Secretary under this Act or a copy thereof duly certified by the Secretary shall be admissible in evidence as competent and sufficient proof of the registration of a mark in any actions or judicial proceedings in any court of this State. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/30)     Sec. 30. Duration and renewal. A registration of a mark under this Act shall be effective for a term of 5 years from the date of registration and, upon application filed within 60 days before the expiration of the term, on a form furnished by the Secretary, the registration may be renewed for a like term from the end of the expiring term. A renewal fee of $5, payable to the Secretary, shall accompany the application for renewal of the registration.     A registration may be renewed for successive periods of 5 years in like manner.     Any registration in force on the effective date of this Act shall continue in full force and effect for the unexpired term of the registration and may be renewed by filing an application for renewal with the Secretary complying with the requirements of the Secretary and paying the renewal fee within 60 days before the expiration of the registration.     All applications for renewal under this Act, whether of registrations made under this Act or of registrations effected under any prior Act, shall include a verified statement that the mark has been and is still in use and include 3 specimens showing actual use of the mark on or in connection with the goods or services. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/35)     Sec. 35. Assignments, changes of name or address and other instruments.     (a) Any mark and its registration under this Act shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark. Assignment shall be on a form furnished by the Secretary and may be recorded with the Secretary upon the payment of a recording fee of $5 payable to the Secretary who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal thereof. An assignment of any registration under this Act shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the Secretary within 3 months after the date thereof or prior to such subsequent purchase.     (b) Any registrant or applicant effecting a change of the name or address of the person to whom the mark was issued or for whom an application was filed may record, on a form furnished by the Secretary, a certificate of change of name or address of the registrant or applicant with the Secretary upon the payment of a recording fee of $5. The Secretary may issue in the name of the assignee a certificate of registration of an assigned application. The Secretary may issue in the name of the assignee, a new certificate of registration for the remainder of the term of the registration or last renewal thereof.     (c) Other instruments which relate to a mark registered or application pending pursuant to this Act, such as, by way of example, licenses, security interests, or mortgages, may be recorded in the discretion of the Secretary, provided that instrument is in writing and duly executed.     (d) Acknowledgement shall be prima facie evidence of the execution of an assignment or other instrument and when recorded by the Secretary, the record shall be prima facie evidence of execution. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/40)     Sec. 40. Records. The Secretary shall keep for public examination a record of all marks registered or renewed under this Act, as well as a record of all documents recorded pursuant to Section 35.     The Secretary will provide a certified copy of any single registration, or portion thereof, upon receiving a request in writing for the copy and payment of a $5 fee, payable to the Secretary. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/45)     Sec. 45. Cancellation. The Secretary shall cancel from the register, in whole or in part:         (a) any registration concerning which the Secretary

shall receive a voluntary request for cancellation thereof from the registrant or the assignee of record;

(b) all registrations granted under this Act and not

renewed in accordance with this Act;

(c) any registration concerning which the circuit

court shall find:

(1) that the registered mark has been abandoned,             (2) that the registrant is not the owner of the

mark,

(3) that the registration was granted improperly,             (4) that the registration was obtained

fraudulently,

(5) that the mark is or has become the generic

name for the goods or services, or a portion thereof, for which it has been registered, or

(6) that the registered mark is so similar, as

to be likely to cause confusion or mistake or to deceive, to a mark registered by another person in the United States Patent and Trademark Office prior to the date of the filing of the application for registration by the registrant hereunder, and not abandoned; however, should the registrant prove that the registrant is the owner of a concurrent registration of a mark in the United States Patent and Trademark Office covering an area including this State, the registration hereunder shall not be cancelled for such area of the State; or

(d) a registration when the circuit court shall

order its cancellation on any ground.

The clerk of the court ordering the cancellation or making any of the findings specified in subdivision (c)(3) shall, when such judgment becomes final, transmit a certified copy of the judgment to the Secretary of State. (Source: P.A. 90‑231, eff. 1‑1‑98; 91‑357, eff. 7‑29‑99.)

(765 ILCS 1036/50)     Sec. 50. Classification. The Secretary shall by rule establish a classification of goods and services for convenience of administration of this Act, but not to limit or extend the applicant's or registrant's rights, and a single application for registration of a mark may include any or all goods upon which, or services with which, the mark is actually being used and which are comprised in a single class. In no event shall a single application include goods or services upon which the mark is being used and which fall within different classes. To the extent practical, the classification of goods and services should conform to the classification adopted by the United States Patent and Trademark Office. Classification of Goods Class Title 1 Chemicals 2 Paints 3 Cosmetics and cleaning preparations 4 Lubricants and fuels 5 Pharmaceuticals 6 Metal goods 7 Machinery 8 Hand tools 9 Electrical and scientific apparatus 10 Medical apparatus 11 Environmental control apparatus 12 Vehicles 13 Firearms 14 Jewelry 15 Musical Instruments 16 Paper goods and printed matter 17 Rubber goods 18 Leather goods 19 Non‑metallic building materials 20 Furniture and articles not otherwise classified 21 Housewares and glass 22 Cordage and fibers 23 Yarns and threads 24 Fabrics 25 Clothing 26 Fancy goods 27 Floor coverings 28 Toys and sporting goods 29 Meats and processed foods 30 Staple foods 31 Natural agricultural products 32 Light beverages 33 Wine and spirits 34 Smoker's articles 35 Advertising and business 36 Insurance and financial 37 Building construction and repair 38 Telecommunications 39 Transportation and storage 40 Treatment of materials 41 Education and entertainment 42 Scientific, technological, or legal 43 Restaurants, hotels, motels, and boarding 44 Medical, veterinary, beauty care, and forestry 45 Personal, social, and security (Source: P.A. 93‑59, eff. 7‑1‑03.)

(765 ILCS 1036/55)     Sec. 55. Fraudulent registration. Any person who shall for himself or herself, or on behalf of any other person, procure the filing or registration of any mark in the office of the Secretary under this Act, by knowingly making any false or fraudulent representation or declaration, orally or in writing, or by any other fraudulent means, shall be liable to pay all damages sustained in consequence of the filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction. (Source: P.A. 90‑231, eff. 1‑1‑98.)

(765 ILCS 1036/60)     Sec. 60. Infringement. Subject to the provisions of Section 80 of this Act, a person shall be liable in a civil action by the registrant for any and all of the remedies provided in Section 70 of this Act if the person:     (a) uses, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this Act in connection with the sale, distribution, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or     (b) reproduces, counterfeits, copies, or colorably imitates any such mark and applies such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this State of such goods or services. The registrant shall not be entitled to recover profits or damages under this subdivision (b) unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive. (Source: P.A. 90‑231, eff. 1‑1‑98.)

    (765 ILCS 1036/62)
    Sec. 62. Infringement of Olympic marks. Notwithstanding any other Section of this Act:
    (a) The United States Olympic Committee has the exclusive right to use, and license for use, in this State any of the following:
        (1) any mark to which the United States Olympic

Committee has exclusive rights under 36 U.S.C. 220506;

(2) the designations "Chicago 2016", "CHICOG",

"Chicago Organizing Committee for the 2016 Olympic and Paralympic Games", "Chicago Olympic Committee" and "Chicago Paralympic Committee";

(3) the emblem of Chicago 2016, featuring a stylized

design of a 6‑pointed star superimposed over vertical stripes, and any other official emblem adopted by Chicago 2016;

(4) the slogan "Stir the Soul" and any other official

slogan adopted by Chicago 2016;

(5) any official mascot or mascots adopted by Chicago

2016; and

(6) the phrases "Chicago Olympic Games", "Chicago

Olympics", "Chicago Paralympic Games", and "Chicago Paralympics" and any other official phrase adopted by Chicago 2016.

(b) The United States Olympic Committee, Chicago 2016 as designee of the United States Olympic Committee, or both, may file a civil action in the Circuit Court of Cook County, or any other circuit court in the State of Illinois permitted by law, against any person for the remedies provided under Section 70 of this Act if the person, without the consent of the United States Olympic Committee or Chicago 2016, uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition:         (1) any mark registered in Illinois to the United

States Olympic Committee or Chicago 2016;

(2) any mark referenced in subsection (a) of this

Section; or

(3) any word, symbol, design, graphic, or image, or

combination thereof, tending to cause confusion or mistake, to deceive, or to falsely suggest a connection or association with, or authorization by, the International Olympic Committee, the International Paralympic Committee, the United States Olympic Committee, Chicago 2016, or any Olympic or Paralympic activity.

(c) If any provision of this Section or the application thereof to any person or circumstance is held invalid, the invalidity shall not affect other provisions or applications of this Section which can be given effect without the invalid provision, and to this end the provisions of this Section are severable.     (d) For the purposes of this Section, references to Chicago 2016 include the Illinois not‑for‑profit corporation of that name and its successor organizing committee for the 2016 Olympic and Paralympic Games.     (e) Nothing in this Section is intended to limit any rights or remedies provided under the Counterfeit Trademark Act. (Source: P.A. 96‑7, eff. 4‑3‑09.)

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