FIRST REGULAR SESSION
HOUSE BILL NO. 585
94TH GENERAL ASSEMBLY
INTRODUCED BY REPRESENTATIVES JOHNSON (Sponsor), WALSH, HARRIS (23), WHORTON,
YAEGER, WRIGHT-JONES AND SCHNEIDER (Co-sponsors).
Read 1st time January 24, 2007 and copies ordered printed.
D. ADAM CRUMBLISS, Chief Clerk
1442L.01I
AN ACT
To repeal sections 417.011, 417.016, 417.018, 417.026, 417.031, and 417.046, RSMo, and to
enact in lieu thereof seven new sections relating to trademark registrations.
Be it enacted by the General Assembly of the state of Missouri, as follows:
Section A. Sections 417.011, 417.016, 417.018, 417.026, 417.031, and 417.046, RSMo,
are repealed and seven new sections enacted in lieu thereof, to be known as sections 417.011,
417.016, 417.018, 417.026, 417.031, 417.046, and 417.049, to read as follows:
417.011. 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:
(1) Consists of or comprises immoral, deceptive or scandalous matter; or
(2) 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; or
(3) 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
(4) Consists of or comprises the name, signature or portrait of any living individual,
except with the written consent; or
(5) Consists of a mark which, (a) when applied to the goods or services of the applicant,
is merely descriptive or deceptively misdescriptive of them, or (b) when applied to the goods or
services of the applicant, is primarily geographically descriptive or deceptively misdescriptive
of them, or (c) is primarily merely a surname; provided, however, that nothing in this section
shall prevent the registration of a mark used in this state by the applicant which has become
distinctive of the applicant's goods or services. The secretary of state may accept as evidence
that the mark has become distinctive, as applied to the applicant's goods or services, proof of
continuous use thereof as a mark by the applicant in the state or elsewhere for the five years next
preceding the date of the filing of the application for registration; or
(6) Consists of or comprises a mark which so resembles a mark registered in this state,
or a mark or trade name previously used in this state by another and not abandoned, as to be
likely, when applied to the goods or services of the applicant, to cause confusion or mistake or
to deceive. The duty of the secretary of state under this subsection shall be limited to
examination of its registration records.
417.016. 1. Subject to the limitations set forth in sections 417.005 to 417.066, any
person who adopts and uses a mark in this state may file in the office of the secretary of state,
on a form to be authorized or furnished by the secretary of state, 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 such registration; and, if
a corporation, the state of incorporation;
(2) The goods or services in connection with which the mark is used and the mode or
manner in which the mark is used 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 his predecessor in business, unless an application is filed under
subsection 2 of this section; and
(4) A statement that the applicant is the owner of the mark and that no other person has
the right to use such mark in this state either in the identical form thereof or in such near
resemblance thereto as might be calculated to deceive or to be mistaken therefor.
2. An application for registration may be filed under this section if the applicant
provides a signed statement providing that it has a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the application. If the
statement is not filed with the initial application, the statement shall allege that the
applicant had a bona fide intention to use the mark in commerce on or in connection with
the goods or services listed in the application as of the filing date of the application.
3. The application shall be signed [and verified] by the applicant or by a member of the
firm or an officer of the corporation or association applying.
[3.] 4. The application shall be accompanied by a specimen or facsimile of such mark,
in triplicate, for each class of goods or services in which the applicant would like to register
the mark. A trademark specimen is a label, tag, or container for the goods, or a display
associated with the goods. The secretary of state may accept another document related to
the goods or the sale of the goods when it is not possible to place the mark on the goods or
packaging for the goods. A service mark specimen shall show the mark as actually used
in the sale or advertising of the services.
[4.] 5. The application for registration shall be accompanied by a fee of [fifty] seventy-five dollars for each class for which the applicant would like to register the mark, payable
to the director of revenue.
[5.] 6. The secretary of state 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 thereof 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.
[6.] 7. The secretary of state may also require that a drawing of the mark, complying with
such requirements as the secretary of state may specify, accompany the application.
[7.] 8. Upon the filing of an application for registration and payment of the application
fee, the secretary of state may cause the application to be examined for conformity with sections
417.005 to 417.066.
[8.] 9. The applicant shall provide [any additional pertinent information requested by the]
to the secretary of state [including] a written description of a design mark and may make, or
authorize the secretary of state to make, such amendments to the application as may be
reasonably requested by the secretary of state or deemed by the applicant to be advisable to
respond to any rejection or objection.
[9.] 10. The secretary of state 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.
[10.] 11. Amendments may be made by the secretary of state upon the application
submitted by the applicant with the applicant's agreement; or a fresh application may be required
to be submitted.
[11.] 12. If the applicant is found not to be entitled to registration, the secretary of state
shall advise the applicant thereof and of the reasons therefor. The applicant shall have a
reasonable period of time specified by the secretary of state 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 of state 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.
[12.] 13. If the secretary of state finally refuses registration of the mark, the applicant
may seek, in the circuit court of Cole County, an extraordinary writ to compel such registration.
Such injunction may be granted, but without costs to the secretary of state, on proof that all the
statements in the application are true and that the mark is otherwise entitled to registration.
[13.] 14. In the instance of applications concurrently being processed by the secretary
of state seeking registration of the same or confusingly similar marks for the same or related
goods or services, the secretary of state 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
417.041.
417.018. The secretary of state may collect an additional fee of five dollars on each and
every fee required in this chapter. If a filing pertains to multiple classes, the secretary of state
may collect a fee of five dollars for each class so provided. All fees collected as provided in
this section shall be deposited in the state treasury and credited to the secretary of state's
technology trust fund account. The provisions of this section shall expire on December 31, 2009.
417.026. 1. Registration of a mark hereunder shall be effective for a term of ten years
from the date of registration and, upon application filed within six months prior to the expiration
of such term, on a form to be authorized or furnished by the secretary of state, the registration
may be renewed for a like term. A renewal fee of [ten] twenty dollars, payable to the director
of revenue, shall accompany the application for renewal of the registration. A mark registration
may be renewed for successive periods of ten years in like manner.
2. The secretary of state shall notify registrants of marks hereunder of the necessity of
renewal within the year next preceding the expiration of the ten years from the date of
registration, by writing to the last known address of the registrants.
3. Any registration in force on September 28, 1973, shall expire ten years from the date
of the registration or of the last renewal thereof or September 28, 1974, whichever is later, and
may be renewed by filing an application with the secretary of state on a form authorized or
furnished by him and paying the aforementioned renewal fee therefor within six months prior
to the expiration of the registration.
4. All applications for renewals under sections 417.005 to 417.066 whether of
registrations made under sections 417.005 to 417.066 or of registrations effected under any prior
act, shall include a statement that the mark is still in use in this state.
5. The secretary of state shall within six months after September 28, 1973, notify all
registrants of marks under previous acts of the date of expiration of such registrations unless
renewed in accordance with the provisions of sections 417.005 to 417.066, by writing to the last
known address of the registrants.
417.031. 1. Any mark and its registration hereunder 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 in writing
upon transmittal forms authorized or furnished by the secretary of state and may be recorded with
the secretary of state upon the payment of a fee of [fifty] seventy-five dollars payable to the
director of revenue 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 sections 417.005 to 417.066 shall be void as
against any subsequent purchaser for valuable consideration without notice, unless it is recorded
with the secretary of state within three months after the date thereof or prior to such subsequent
purchase.
2. 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, upon a transmittal form
authorized or furnished by the secretary of state, a certificate of change of name of the registrant
or applicant with the secretary of state upon the payment of the recording fee of seventy-five
dollars. The secretary of state may issue in the name of the assignee a certificate of registration
of an assigned application. The secretary of state 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 thereof.
3. Acknowledgment shall be prima facie evidence of the execution of an assignment or
other instrument and, when recorded by the secretary of state, the record shall be prima facie
evidence of execution.
417.046. 1. The general classes of goods and services as provided in this section are
established for convenience of administration of sections 417.005 to 417.066, 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
comprised in a single class, but in no event shall a single application include goods or services
upon which the mark is being used which fall within different classes of goods or services].
Applications for registration of a mark may include any or all goods upon which, or
services with which, the mark is actually being used, or in which the applicant has a bona
fide intention to use.
2. In a single application, an applicant may apply to register the same mark for
goods or services in multiple classes. The applicant shall:
(1) Specifically identify the goods or services in each class;
(2) Submit an application filing fee for each class as provided in this chapter; and
(3) Include either dates of use and one specimen for each class, or shall allege that
the applicant has a bona fide intention to use the mark in commerce on or in connection
with the goods or services listed in the application.
3. The classes of goods and services are as follows:
GOODS
(1) Chemicals used in industry, science, and photography, as well as in agriculture,
horticulture, and forestry; unprocessed artificial resins; unprocessed plastics; manures;
fire extinguishing compositions; tempering and soldering preparations; chemical
substances for preserving foodstuffs; tanning substances; adhesives used in industry;
(2) Paints, varnishes, and lacquers; preservatives against rust and against
deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder
form for painters, decorators, printers, and artists;
(3) [Cosmetics and cleaning preparations] Bleaching preparations and other
substances for laundry use; cleaning, polishing, scouring, and abrasive preparations;
soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices;
(4) [Lubricants and fuels] Industrial oils and greases; lubricants; dust absorbing,
wetting, and binding compositions; fuels, including motor spirit; illuminants; candles;
wicks;
(5) Pharmaceuticals, veterinary, and sanitary preparations; dietetic substances
adapted for medical use; food for babies; plasters; material for dressings; material for
stopping teeth; dental wax; disinfectants; preparations for destroying vermin; fungicides;
herbicides;
(6) [Metal goods] Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway tracks; nonelectric cables
and wires of common metal; ironmongery; small items of metal hardware; pipes and tubes
of metal; safes; goods of common metal not included in other classes; ores;
(7) [Machinery] Machines and machine tools; motors and engines, except for land
vehicles; machine coupling and transmission components, except for land vehicles;
agricultural implements not hand-operated; incubators for eggs;
(8) Hand tools and hand-operated implements; cutlery; side arms; razors;
(9) [Electrical and scientific apparatus] Scientific, nautical, surveying, electric,
photographic, cinematographic, optical, weighing, measuring, signaling, checking
(supervision), life-saving, and teaching apparatus and instruments; apparatus for
recording, transmission, or reproduction of sound or images; magnetic data carriers;
recording discs; automatic vending machines and mechanisms for coin-operated
apparatus; cash registers; calculating machines; data processing equipment and
computers; fire extinguishing apparatus;
(10) [Medical apparatus] Surgical, medical, dental, and veterinary apparatus and
instruments; artificial limbs, eyes, and teeth; orthopedic articles; suture materials;
(11) [Environmental control apparatus] Apparatus for lighting, heating, steam
generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary
purposes;
(12) Vehicles and apparatus for locomotion by land, air, or water;
(13) Firearms; ammunition and projectiles; explosives; fireworks;
(14) [Jewelry] Precious metals and their alloys and goods in precious metals or
coated therewith, not included in other classes; jewelry and precious stones; horological
and chronometric instruments;
(15) Musical instruments;
(16) [Paper goods and printed matter] Paper, cardboard, and goods made from these
materials, not included in other classes; printed matter; bookbinding material;
photographs; stationery; adhesives for stationery or household purposes; artists' materials;
paint brushes; typewriters and office requisites, except furniture; instructional and
teaching material, except apparatus; plastic materials for packaging, not included in other
classes; playing cards; printers' type; printing blocks;
(17) Rubber [goods] , gutta-percha, gum, asbestos, mica, and goods made from these
materials and not included in other classes; plastics in extruded form for use in
manufacture; packing, stopping, and insulating materials; flexible pipes, not of metal;
(18) Leather [goods] , imitations of leather, and goods made of these materials and
not included in other classes; animal skins and hides; trunks and traveling bags;
umbrellas, parasols, and walking sticks; whips, harnesses, and saddlery;
(19) Nonmetallic building materials; nonmetallic rigid pipes for building; asphalt,
pitch, and bitumen; nonmetallic transportable buildings; monuments, not of metal;
(20) Furniture [and articles not otherwise classified] , mirrors, and picture frames;
goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber,
mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics;
(21) [Housewares and glass] Household or kitchen utensils and containers not of
precious metal or coated therewith; combs and sponges; brushes, except paint brushes;
brush-making material; articles for cleaning purposes; steel wool; unworked or semi-worked glass, except glass used in building; glassware, porcelain, and earthenware not
included in other classes;
(22) [Cordage and fibers] Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks,
and bags not included in other classes; padding and stuffing materials, except of rubber
or plastics; raw fibrous textile materials;
(23) Yarns and threads for textile use;
(24) [Fabrics] Textiles and textile goods, not included in other classes; beds and
table covers;
(25) Clothing, footwear, and headgear;
(26) [Fancy goods] Lace and embroidery; ribbons and braid; buttons, hooks, and
eyes; pins and needles; artificial flowers;
(27) [Floor coverings] Carpets, rugs, mats, and matting; linoleum and other
materials for covering existing floors; nontextile wall hangings;
(28) [Toys and sporting goods] Games and playthings; gymnastics and sporting
articles not included in other classes; decorations for Christmas trees;
(29) [Meats and processed foods] Meat, fish, poultry, and game; meat extracts;
preserved, dried, and cooked fruits and vegetables; jellies, jams, and fruit sauces; eggs,
milk, and milk products; edible oils and fats;
(30) [Staple foods] Coffee, tea, cocoa, sugar, rice, tapioca, sago, and artificial coffee;
flour and preparations made from cereals, bread, pastry and confectionary; ices; honey;
treacle; yeast; baking powder; salt; mustard; vinegar; sauces (condiments); spices;
(31) [Natural agricultural products] Agricultural, horticultural, and forestry products
and grains not included in other classes; live animals; fresh fruits and vegetables; seeds,
natural plants, and flowers; foodstuffs for animals; malt;
(32) [Light beverages] Beers; mineral and aerated waters and other nonalcoholic
drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages;
(33) [Wines and spirits] Alcoholic beverages, except beer; and
(34) [Smokers' articles] Tobacco; smokers' articles; matches.
SERVICES
(35) [Advertising and business] Advertising; business management; business
administration; office functions;
(36) [Insurance and financial] Insurance; financial affairs; monetary affairs; real
estate affairs;
(37) [Construction and repair] Building construction; repair; installation services;
(38) [Communications] Telecommunications;
(39) [Transportation and storage] Transport; packaging and storage of goods; travel
arrangement;
(40) [Material treatment] Treatment of materials;
(41) Education [and entertainment and] ; providing of training; entertainment;
sporting and cultural activities;
(42) [Miscellaneous] Scientific and technological services, research, and design
relating thereto; industrial analysis and research services; design and development of
computer hardware; legal services;
(43) Services for providing food and drink; temporary accommodations;
(44) Medical services; veterinary services; hygenic and beauty care for human
beings or animals; agriculture, horticulture, and forestry services; and
(45) Personal and social services rendered by others to meet the needs of
individuals; security services for the protection of property and individuals.
417.049. The secretary of state shall promulgate rules to implement the provisions
of this chapter. Any rule or portion of a rule, as that term is defined in section 536.010,
RSMo, that is created under the authority delegated in this section shall become effective
only if it complies with and is subject to all of the provisions of chapter 536, RSMo, and,
if applicable, section 536.028, RSMo. This chapter and chapter 536, RSMo, are
nonseverable and if any of the powers vested with the general assembly pursuant to
chapter 536, RSMo, to review, to delay the effective date, or to disapprove and annul a rule
are subsequently held unconstitutional, then the grant of rulemaking authority and any
rule proposed or adopted after August 28, 2007, shall be invalid and void.
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