Kansas Session Laws Chapter 85

CHAPTER 85 SENATE BILL No. 130 An Act enacting the revised Kansas trademark act; repealing K.S.A. 81-111 through 81-123. Be it enacted by the Legislature of the State of Kansas:

Section 1. This act shall be known and may be cited as the revised
Kansas trademark act.

Sec. 2. As used in sections 1 through 20:

(a) ``Trademark'' means any word, name, symbol, or device or any
combination thereof used by a person to identify and distinguish the
goods of such person, including a unique product, from those manufac-
tured or sold by others, and to indicate the source of the goods, even if
that source is unknown.

(b) ``Service mark'' 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 service
marks notwithstanding that, such titles, names or features, or the pro-
grams, may advertise the goods of the sponsor.

(c) ``Mark'' includes any trademark or service mark entitled to reg-
istration under this act whether registered or not.

(d) ``Trade name'' means any name used by a person to identify a
business or vocation of such person.

(e) ``Person'' and any other word or term used to designate the ap-
plicant or other party entitled to a benefit or privilege or rendered liable
under the provisions of this act includes a juristic person as well as a
natural person. The term ``juristic person'' includes a firm, partnership,
corporation, union, association, or other organization capable of suing and
being sued in a court of law.

(f) ``Applicant'' means the person filing an application for registration
of a mark under this act, and the legal representatives, successors, or
assigns of such person.

(g) ``Registrant'' means the person to whom the registration of a mark
under this act is issued, and the legal representatives, successors, or as-
signs of such person.

(h) ``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 other containers or the
displays associated with such goods or containers or on the tags or labels
affixed to such goods or containers, or if the nature of the goods makes
such placement impracticable, then on documents associated with the
goods or the good's sale, and the goods are sold or transported in com-
merce 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.

(i) A mark shall be deemed to be ``abandoned'' when either of the
following occurs: (1) When the mark's use has been discontinued with
intent not to resume such use. Intent not to resume may be inferred from
circumstances. Nonuse for two consecutive years shall constitute prima
facie evidence of abandonment; or (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.

(j) ``Secretary'' means the secretary of state.

(k) ``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.

Sec. 3. 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 such mark: (a) Consists of or comprises immoral,
deceptive or scandalous matter;

(b) consists of or comprises matter which 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) 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;

(d) consists of or comprises the name, signature or portrait identifying
a particular living individual, except by the individual's written consent;

(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;

(2) when used on or in connection with the goods or services of the
applicant is primarily geographically descriptive or deceptively misdes-
criptive of them; or

(3) is primarily merely a surname, except that nothing in this subsec-
tion 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 contin-
uous 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; or

(f) consists of or comprises a mark which so resembles a mark reg-
istered 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.

Sec. 4. (a) Subject to the limitations set forth in this act, any person
who uses a mark may file in the office of the secretary, in a manner
complying with the requirements of the secretary, an application for reg-
istration of that mark setting forth, but not limited to, the following in-
formation:

(1) The name and business address of the person applying for such
registration; if a corporation, limited liability company, limited partner-
ship, limited liability partnership or other business entity, the state of
organization; and if a partnership, 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 and the mode or manner in which the mark is used on or in con-
nection with such goods or services and the class in which such goods or
services fall;

(3) 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

(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, either federally or in this
state, or has the right to use such mark either in the identical form or in
such near resemblance to such mark 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
of such mark, has been filed by the applicant or a predecessor in interest
in the United States patent and trademark office. If such application has
been filed in the United States patent and trademark office, the applicant
shall provide full particulars with respect to such filing including the filing
date and serial number of each application, the status of such filing and,
if any application was finally refused registration or has otherwise not
resulted in a registration, the reasons for such refusal.

(b) The secretary may also require that a drawing of the mark, com-
plying with such requirements as the secretary may specify, accompany
the application.

(c) 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.

(d) The application shall be accompanied by three specimens show-
ing the mark as actually used.

(e) The application shall be accompanied by the application fee pay-
able to the secretary of state.

Sec. 5. (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 unregis-
terable 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 appli-
cant'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 new appli-
cation may be required to be submitted.

(e) If the applicant is found not to be entitled to registration, the
secretary shall advise the applicant and state the reasons of such refusal.
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) If the secretary finally refuses registration of the mark, the appli-
cant may seek a writ of mandamus to compel such registration. Such writ
may be granted, but without costs to the secretary, on proof that all the
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 order of filing. If a prior-filed application is granted
a registration, the other application or applications shall 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 10 and amendments thereto.

Sec. 6. 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
such certificate shall show the name and business address 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 the provisions of
this section or a copy of such certificate duly certified by the secretary
shall be admissible in evidence as competent and sufficient proof of the
registration of such mark in any actions or judicial proceedings in any
court of this state.

Sec. 7. (a) A registration of a mark as provided in this act shall be
effective for a term of five years from the date of registration and, upon
application filed within six months prior to the expiration of such term,
in a manner complying with the requirements of the secretary, the reg-
istration may be renewed for a like term from the end of the expiring
term. A renewal fee, payable to the secretary, shall accompany the ap-
plication for renewal of the registration.

(b) A registration may be renewed for successive periods of five years
in like manner.

(c) Any registration in force on the date on which this act shall be-
come effective shall and continue in full force and effect for the unexpired
term of such registration and may be renewed by filing an application for
renewal with the secretary complying with the requirements of the sec-
retary and paying the renewal fee as provided in this section within six
months prior to the expiration of the registration.

(d) All applications for renewal under this act, whether of registra-
tions 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 a specimen showing actual use of the mark on or in
connection with the goods or services.

Sec. 8. (a) Any mark and registration as provided in this act shall be
assignable with the good will of the business in which the mark is used,
or with that part of the good will of the business connected with the use
of and symbolized by the mark. Assignment shall be by instruments in
writing duly executed and may be recorded with the secretary upon the
payment of the recording fee payable to the secretary who, upon record-
ing 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 of the registration. An assignment of any registration under this
act shall be void as against any subsequent purchaser for valuable consid-
eration without notice, unless it is recorded with the secretary within
three months after the date of assignment or prior to such subsequent
purchase.

(b) Any registrant or applicant effecting a change of the name of the
person to whom the mark was issued or for whom an application was filed
may record a certificate of change of name of the registrant or applicant
with the secretary upon the payment of the recording fee. 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 or registration for the remainder of the term of the
registration or last renewal of the registration.

(c) Other instruments which relate to a mark registered or application
pending pursuant to this act, such as, licenses, security interests or mort-
gages, may be recorded in the discretion of the secretary, if such instru-
ment is in writing and duly executed.

(d) Acknowledgment shall be prima facie evidence of the execution
of an assignment or other instrument and, when recorded by the secre-
tary, the record shall be prima facie evidence of execution.

(e) A photocopy of any instrument referred to in subsection (a),(b)
or (c) above shall be accepted for recording if it is certified by any of the
parties to the instrument, or their successors, to be a true and correct
copy of the original.

Sec. 9. 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 8 and amendments thereto.

Sec. 10. The secretary shall cancel from the register, in whole or in
part: (a) Any registration which the secretary receives 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 ac-
cordance with the provisions of this act;

(c) any registration concerning which a court of competent jurisdic-
tion finds that: (1) The registered mark has been abandoned; (2) the
registrant is not the owner of the mark; (3) the registration was granted
improperly; (4) the registration was obtained fraudulently; (5) the mark
is or has become the generic name for the goods or services, or a portion
of the goods or services, for which it has been registered; or (6) 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 appli-
cation for registration by the registrant hereunder, and not abandoned,
except that should the registrant prove that the registrant is the owner of
a concurrent registration of a mark in the United States patent and trade-
mark office covering an area including this state, the registration here-
under shall not be canceled for such area of the state; or

(d) when a court of competent jurisdiction orders cancellation of a
registration on any ground.

Sec. 11. The secretary shall by regulation 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 appli-
cation for registration of a mark may include any or all goods upon which,
or services with which, the mark is actually being used indicating the
appropriate class or classes of goods or services. When a single application
includes goods or services which fall within multiple classes, the secretary
may require payment of a fee for each class. To the extent practical, the
classification of goods and services should conform to the classification
adopted by the United States patent and trademark office.

Sec. 12. Any person who for such person's own behalf, or on behalf
of any other person, procures the filing or registration of any mark in the
office of the secretary under the provisions of this act, by knowingly mak-
ing any false or fraudulent representation or declaration, orally or in writ-
ing, or by any other fraudulent means, shall be liable to pay all damages
sustained in consequence of such filing or registration, to be recovered
by or on behalf of the party injured by such person's finding in any court
of competent jurisdiction.

Sec. 13. Subject to the provisions of section 17 and amendments
thereto, any person who: (a) Uses, without the consent of the registrant,
any reproduction, counterfeit, copy, or colorable imitation of a mark reg-
istered 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, coun-
terfeits, copies, or colorably imitates any such mark and applies such re-
production, 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; shall be liable in a civil action by the registrant
for any and all of the remedies provided in section 15 and amendments
thereto, except that under subsection (b) the registrant shall not be en-
titled to recover profits or damages unless the acts have been committed
with the intent to cause confusion or mistake or to deceive.

Sec. 14. (a) The owner of a mark which is famous in this state shall
be entitled, subject to the principles of equity and upon such terms as
the court seems reasonable, to an injunction against another person's
commercial use of a mark or trade name, if such use begins after the
mark has become famous and causes dilution of the distinctive quality of
the mark, and to obtain such other relief as is provided in this section. In
determining whether a mark is distinctive and famous, a court may con-
sider factors such as, but not limited to: (1) The degree of inherent or
acquired distinctiveness of the mark in this state;

(2) the duration and extent of use of the mark in connection with the
goods and services with which the mark is used;

(3) the duration and extent of advertising and publicity of the mark
in this state;

(4) the geographical extent of the trading area in which the mark is
used;

(5) the channels of trade for the goods or services with which the
mark is used;

(6) the degree of recognition of the mark in the trading areas and
channels of trade in this state used by the mark's owner and the person
against whom the injunction is sought;

(7) the nature and extent of use of the same or similar mark by third
parties; and

(8) whether the mark is the subject of a state registration in this state,
or a federal registration under the act of March 3, 1881, or under the act
of February 20, 1905, or on the principal register.

(b) In an action brought under this section, the owner of a famous
mark shall be entitled only to injunctive relief in this state, unless the
person against whom the injunctive relief is sought willfully intended to
trade on the owner's reputation or to cause dilution of the famous mark.
If such willful intent is proven, the owner also shall be entitled to the
remedies set forth in this act, subject to the discretion of the court and
the principles of equity.

(c) The following shall not be actionable under this section: (1) Fair
use of a famous mark by another person in comparative commercial ad-
vertising or promotion to identify the competing goods or services of the
owner of the famous mark; (2) noncommercial use of the mark; and (3)
all forms of news reporting and news commentary.

Sec. 15. (a) Any owner of a mark registered under this act may pro-
ceed by suit to enjoin the manufacture, use, display or sale of any coun-
terfeits or imitations of such mark and any court of competent jurisdiction
may grant injunctions to restrain such manufacture, use, display or sale
as the court deems just and reasonable, and may require the defendants
to pay to such owner all profits derived from or all damages suffered by
reason of such wrongful manufacture, use, display or sale, or both. Such
court also may order that any such counterfeits or imitations in the pos-
session or under the control 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 enter judgment for an amount not to exceed
three times such profits and damages or reasonable attorney fees of the
prevailing party, or both, in such cases where the court finds the other
party committed such wrongful acts with knowledge or in bad faith or
otherwise as according to the circumstances of the case.

(b) The enumeration of any right or remedy in this section shall not
affect a registrant's right to prosecute under any criminal law of this state.

Sec. 16. (a) Actions to require cancellation of a mark registered
pursuant to this act or in mandamus to compel registration of a mark
pursuant to this act shall be brought in the district court. In an action in
mandamus, the proceeding shall be based solely upon the record before
the secretary. In an action for cancellation, the secretary shall not be made
a party to the proceeding but shall be notified of the filing of the com-
plaint by the clerk of the court in which it is filed and shall be given the
right to intervene in the action.

(b) In any action brought against a nonresident registrant, service may
be effected upon the secretary as agent for service in accordance with
the procedures established for service upon foreign corporations under
K.S.A. 60-304 and amendments thereto.

Sec. 17. Nothing in this act shall adversely affect the rights or the
enforcement of rights in marks acquired in good faith at any time at
common law.

Sec. 18. The application for registration of a mark and any renewal
application shall be accompanied by a filing fee of $25. All other docu-
ments filed pursuant to this act shall be accompanied by a filing fee of
$5. All fees shall be payable to the secretary of state.

Sec. 19. If any provision of this act, or the application of such pro-
vision to any person or circumstance is held invalid or unconstitutional,
it shall be conclusively presumed that the legislature would have enacted
the remainder of this act without such invalid or unconstitutional provi-
sion.

Sec. 20. (a) The provisions of this act shall not affect any suit, pro-
ceeding or appeal pending on the effective date of this act. The provisions
of this act are controlling as to all acts relating to marks and parts that
are inconsistent with this act, except that as to any application, suit, pro-
ceeding or appeal, and for that purpose only, pending on the effective
date of this act the provisions of this act shall be deemed not to be effec-
tive until final determination of such pending application, suit, proceeding
or appeal.

(b) The intent of this act is to provide a system of state trademark
registration and protection substantially consistent with the federal system
of trademark registration and protection under the trademark act of 1946,
as amended. To that end, the construction given the federal act should
be examined as persuasive authority for interpreting and construing this
act.

Sec. 21. K.S.A. 81-111 through 81-123 are hereby repealed.

Sec. 22. This act shall take effect and be in force from and after its
publication in the statute book.

Approved April 9, 1999.
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