History: L. 1999, ch. 85, § 1; July 1.
(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 manufactured 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 programs, may advertise the goods of the sponsor.
(c) "Mark" includes any trademark or service mark entitled to registration 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 applicant 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 assigns 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 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.
(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.
History: L. 1999, ch. 85, § 2; July 1.
(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 misdescriptive of them; or
(3) is primarily merely a surname, except that nothing in this subsection 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 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 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.
History: L. 1999, ch. 85, § 3; July 1.
(1) The name and business address of the person applying for such registration; if a corporation, limited liability company, limited partnership, 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 connection 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, complying 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 showing the mark as actually used.
(e) The application shall be accompanied by the application fee payable to the secretary of state.
History: L. 1999, ch. 85, § 4; July 1.
(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 new 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 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 applicant 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 K.S.A. 2007 Supp. 81-210 and amendments thereto.
History: L. 1999, ch. 85, § 5; July 1.
History: L. 1999, ch. 85, § 6; July 1.
(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 become 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 secretary 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 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 a specimen showing actual use of the mark on or in connection with the goods or services.
History: L. 1999, ch. 85, § 7; July 1.
(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 mortgages, may be recorded in the discretion of the secretary, if such instrument 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 secretary, 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.
History: L. 1999, ch. 85, § 8; July 1.
History: L. 1999, ch. 85, § 9; July 1.
(b) all registrations granted under this act and not renewed in accordance with the provisions of this act;
(c) any registration concerning which a court of competent jurisdiction 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 application 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 trademark office covering an area including this state, the registration hereunder 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.
History: L. 1999, ch. 85, § 10; July 1.
History: L. 1999, ch. 85, § 11; July 1.
History: L. 1999, ch. 85, § 12; July 1.
History: L. 1999, ch. 85, § 13; July 1.
(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 advertising 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.
History: L. 1999, ch. 85, § 14; July 1.
(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.
History: L. 1999, ch. 85, § 15; July 1.
(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.
History: L. 1999, ch. 85, § 16; July 1.
History: L. 1999, ch. 85, § 17; July 1.
History: L. 1999, ch. 85, § 18; July 1.
History: L. 1999, ch. 85, § 19; July 1.
(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.
History: L. 1999, ch. 85, § 20; July 1.