Code Section Group

Business and Professions Code - BPC

DIVISION 6. BUSINESS RIGHTS [14000 - 14704]

  ( Division 6 added by Stats. 1941, Ch. 56. )

CHAPTER 2. Model State Trademark Law [14200 - 14272]

  ( Chapter 2 repealed and added by Stats. 2007, Ch. 711, Sec. 2. )

ARTICLE 2. Application for Registration [14205 - 14209]
  ( Article 2 added by Stats. 2007, Ch. 711, Sec. 2. )

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.

(Repealed and added by Stats. 2007, Ch. 711, Sec. 2. Effective January 1, 2008.)

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.

(Amended by Stats. 2008, Ch. 179, Sec. 20. Effective January 1, 2009.)

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.

(Repealed and added by Stats. 2007, Ch. 711, Sec. 2. Effective January 1, 2008.)

BPCBusiness and Professions Code - BPC2.