2010 Wyoming Statutes
Title 40 - Trade And Commerce
Chapter 1 - Trademarks And Service Marks

CHAPTER 1 - TRADEMARKS AND SERVICE MARKS

 

40-1-101. Definitions.

 

(a) The term "trademark" as used in this act means any word, name, symbol, or device or any combination thereof adopted and 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) The term "service mark" as used in this act means any word, name, symbol or device or any combination thereof used by a person, to identify and distinguish the services of one (1) 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 they, or the programs, may advertise the goods of the sponsor.

 

(c) The term "mark" as used in this act includes any trademark or service mark entitled to registration under this act whether registered or not.

 

(d) The term "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, association, union or other organization or business entity capable of suing and being sued in a court of law.

 

(e) The term "applicant" as used in this act embraces the person filing an application for registration of a mark under this act, and the legal representatives, successors or assigns of such person.

 

(f) The term "registrant" as used in this act embraces the person to whom the registration of a mark under this act is issued and the legal representatives, successors or assigns of such person.

 

(g) The term "use" in this act 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 in this state:

 

(i) On goods when it is placed in any manner on the goods or other containers on 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

 

(ii) On services when it is used or displayed in the sale or advertising of services and the services are rendered in this state.

 

(h) A mark shall be deemed to be "abandoned" under this act when either of the following occurs:

 

(i) When its use has been discontinued with the intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two (2) consecutive years shall constitute prima facie evidence of abandonment;

 

(ii) 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) The term "dilution" as used in this act means the lessening of the capacity of a registrant's mark to identify and distinguish goods or services, regardless of the presence or absence of:

 

(i) Competition between the parties; or

 

(ii) Likelihood of confusion, mistake or deception.

 

(k) The term "secretary" as used in this act means the secretary of state or the designee of the secretary charged with the administration of this act.

 

(m) "This act" means W.S. 40-1-101 through 40-1-116.

 

40-1-102. Marks which cannot be registered.

 

(a) 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:

 

(i) Consists of or comprises immoral, deceptive or scandalous matter; or

 

(ii) 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

 

(iii) 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

 

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

 

(v) Consists of a mark which, (A) when used on or in connection with the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them, or (B) when used on or in connection with 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 paragraph 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 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 or elsewhere for the five (5) years before the date on which the claim of distinctiveness is made; or

 

(vi) Consists of or comprises a mark which is the same as, or deceptively similar to, a mark registered in this state, a trade name or the name of a juristic person, 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.

 

40-1-103. Application for registration; filing fee.

 

(a) Subject to the limitations set forth in this act, any person who uses a mark in this state may file in the office of the secretary, in a manner complying with the requirements of the secretary, an application for registration of that mark setting forth, but not limited to, the following information:

 

(i) The name and business address of the person applying for such registration; and, if a corporation, the state of incorporation, or if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary, or similar information for other juristic persons, as specified by the secretary;

 

(ii) 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;

 

(iii) 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;

 

(iv) 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 thereof or in such near resemblance 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; and

 

(v) If required by the secretary, a statement as to whether an application to register the mark, or portions or a composite, 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 including the filing date and serial number of each application, the status and, if any application was finally refused registration or has otherwise not resulted in a registration, the reasons therefor.

 

(b) 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.

 

(c) The application shall be accompanied by a specimen or facsimile of such mark in triplicate. The secretary may also require that a drawing of the mark, complying with requirements as the secretary may specify, accompany the application.

 

(d) The application for registration shall be accompanied by a filing fee, set in accordance with W.S. 40-1-116, but not to exceed three hundred dollars ($300.00) and payable to the secretary.

 

40-1-104. Examination of application; amendment 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 the 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 the 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 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 then be reexamined. This procedure may be repeated until (A) the secretary finally refuses registration of the mark or (B) the applicant fails to reply or amend within the specified period, whereupon the application shall be deemed to have been abandoned.

 

40-1-105. Term of registration; renewals.

 

(a) Registration of a mark is effective for a term of five (5) years from the date of registration and, upon application filed within six (6) months prior to the expiration of such term, in a manner complying with the requirements of the secretary, the registration may be renewed for a like term from the end of the expiring term. A renewal fee set in accordance with W.S. 40-1-116, but not to exceed one hundred fifty dollars ($150.00) and payable to the secretary, shall accompany the application for renewal of the registration.

 

(b) Renewal periods. - A mark registration may be renewed for successive periods of five (5) years in like manner. 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.

 

(c) Repealed By Laws 1997, ch. 112, 3.

 

(d) Existing registration. - Any registration in force on the date on which this act shall become effective shall continue in full force and effect for the unexpired term and may be renewed by filing an application for renewal with the secretary, complying with the requirements of the secretary, and paying the aforementioned renewal fee within six (6) months prior to the expiration of the registration.

 

(e) Repealed By Laws 1997, ch. 112, 3.

 

40-1-106. Assignment of marks and registration; change of name.

 

 

(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 by instruments in writing duly executed and may be recorded with the secretary upon the payment of a fee set in accordance with W.S. 40-1-116, but not to exceed seventy-five dollars ($75.00) and payable to the secretary. Upon recording of the assignment, the secretary 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 three (3) months after the date thereof 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 thereof.

 

(c) A photocopy or photograph of any instrument referred to in subsections (a) and (b) of this section shall be accepted for recording if it is certified by the applicant, or their successors, to be a true and correct copy of the original.

 

40-1-107. Public record of marks.

 

The secretary shall keep for public examination a record of all marks registered or renewed under this act.

 

40-1-108. Cancellation of registration.

 

(a) The secretary shall cancel from the register in whole or in part:

 

(i) Repealed By Laws 1997, ch. 112, 3.

 

(ii) Any registration concerning which the secretary shall receive a voluntary request for cancellation thereof from the registrant or the assignee of record and shall receive payment of a fee set in accordance with W.S. 40-1-116, but not to exceed thirty dollars ($30.00);

 

(iii) All registrations granted under this act and not renewed in accordance with the provisions hereof;

 

(iv) Any registration concerning which a court of competent jurisdiction shall find:

 

(A) That the registered mark has been abandoned;

 

(B) That the registrant is not the owner of the mark;

 

(C) That the registration was granted improperly;

 

(D) That the registration was obtained fraudulently;

 

(E) 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; provided, however, that should the registrant prove that the registrant is the owner of a concurrent registration of his mark in the United States patent and trademark office covering an area including this state, the registration hereunder shall not be cancelled;

 

(F) 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.

 

(v) When a court of competent jurisdiction shall order cancellation of a registration on any ground.

 

40-1-109. Classification of marks.

 

(a) Repealed By Laws 1997, ch. 112, 3.

 

(b) Repealed By Laws 1997, ch. 112, 3.

 

(c) The secretary shall by regulation establish a classification of goods and services for marks for the convenience of administration of this act, but not to limit or extend the applicant's or registrant's rights.

 

40-1-110. False or fraudulent representations or declarations; liability for damages sustained.

 

Any person who shall for himself, or on behalf of any other person, procure the filing or registration of any mark in the office of the secretary under the provisions of 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 such filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction.

 

40-1-111. Civil liability.

 

Subject to the provisions of W.S. 40-1-113 any person who shall (a) use, 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) reproduce, counterfeit, copy or colorably imitate any such mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in conjunction with the sale or other distribution in this state of such goods or services, shall be liable to a civil action by the owner of such registered mark for any or all of the remedies provided in W.S. 40-1-112, except that under subsection (b) hereof the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive.

 

40-1-112. Remedies.

 

 

(a) Any owner of a mark registered under this act may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display, or sale as may be by the said court deemed just and reasonable, and may require the defendants to pay to such owner all profits derived from and/or all damages suffered by reason of such wrongful manufacture, use, display or sale; and such court may also order that any such counterfeits or imitations in the possession 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 (3) times such profits and damages and reasonable attorneys' fees of the prevailing party 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 herein shall not affect a registrant's right to prosecute under any penal law of this state.

 

40-1-113. Marks acquired at common law.

 

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.

 

40-1-114. Inapplicable to livestock brands, marks or tags.

 

This act shall not be construed to apply to brands, marks or tags on livestock.

 

40-1-115. Injury to business reputation; dilution.

 

(a) The owner of a mark which is famous in this state shall be entitled, subject to the principles of equity, to an injunction against another's use of a mark, commencing after the owner's mark becomes famous, which causes dilution of the distinctive quality of the owner's mark, and to obtain such other relief as is provided in this section. In determining whether a mark is famous, a court may consider factors such as, but not limited to:

 

(i) The degree of inherent or acquired distinctiveness of the mark in this state;

 

(ii) The duration and extent of use of the mark in connection with the goods and services;

 

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

 

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

 

(v) The channels of trade for the goods or services with which the owner's mark is used;

 

(vi) The degree of recognition of the owner's mark in its and in the other's trading areas and channels of trade in this state; and

 

(vii) The nature and extent of use of the same or similar mark by third parties.

 

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

 

40-1-116. Powers of secretary of state; filing and other fees.

 

(a) The secretary has the power reasonably necessary to perform the duties required of him by this act including the promulgation of rules and regulations necessary to carry out the purposes of this act.

 

(b) The secretary shall set and collect filing, service and copying fees to recover the costs of providing those services and administering this act. Fees shall not exceed the costs of providing these services and administering this act.