Massachusetts recently adopted the International Trademark Association’s Revised Model State Trademark Bill. The new law, G.L. c.110H, became effective October 29, 2006. It updates and expands existing registration and protection provisions to reflect federal trademark law and to provide more consistency from state to state. Some of the bill’s more important provisions and the Division’s practices and procedures are summarized below:
A “trademark is any word, name, symbol or device, or combination of these, used by a person (individual, partnership, corporation or association) to identify his goods and to distinguish them from the goods manufactured or sold by others. Trademarks indicate the source of goods, even if that source is unknown. Some examples of well-known trademarks are: Kodak, Coca-Cola, GE, Life-Savers and McDonalds (with golden arches).
A “service mark” identifies and distinguishes a person’s services and is given the same protection as a trademark. “Citibank” (Service mark for Citibank), “Greyhound” (service mark Greyhound Bus Lines), and “Hilltop” (service mark for the Hilltop Restaurant) are a few better-known examples of service marks.
A “trade name” is a name used by a person to identify a business or vocation of that person. A trade name may be registered as a trademark or service mark only if it also functions as a trademark or service mark.
A person may register a trademark or service with the Division if the mark is used in the Commonwealth. The use must be bona fide and not merely to reserve a right in the mark. A trademark is considered in use when it is placed on the goods or containers and tags, labels, displays or documents associated with the goods and sold or transported in the Commonwealth. A service mark is used in the Commonwealth when it is used or displayed in the sale or advertising of services rendered in the Commonwealth.
Registration in Massachusetts can result in material advantages to the owner of the mark. Registered trademarks and service marks are indexed on the Division’s website and provide notice to the public of the owner’s property interest in the mark. Registration also establishes a date of first use in the state and may be helpful in obtaining federal registration. Further, registration may allow for additional remedies in cases involving infringement. Specifically, the court may order treble damages and attorney fees if it finds the infringer acted in bad faith, with knowledge of the wrongfulness of his conduct or where other circumstances warrant the imposition of additional damages.
A person who uses a mark in the Commonwealth may register with the Division an application containing the following information:
The application must be signed under penalty of perjury.
The term of registration is five (5) years. Forms may be obtained from the Division website at www.sec.state.ma.us/cor.
Classification of goods are as follows:
Chemicals used in industry, science, photography, as well as in agriculture, horticulture, forestry; unprocessed resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry.
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants, mordants; raw natural resins; metals in foil and powder form for painters and decorators, printers and artists.
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Industrial oils and greases; lubricants; dust absorbing; wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; plasters; materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
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.
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Hand tools and implements (hand operated); cutlery; side arms; razors.
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; 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.
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Vehicles; apparatus for locomotion by land, air or water.
Firearms, ammunition and projectiles; explosives; fireworks.
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones, horological and other chronometric instruments.
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); printers’ type; Printing blocks.
Rubber, 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.
Leather and imitations of leather, and goods made from these materials and not included in other classes; animal skins, hides; trunks and traveling bags, umbrellas, parasols and walking sticks; whips, harness and saddlery.
Building materials (nonmetallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.
Furniture, mirrors, picture frames, goods (not included in other classes) 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.
Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass(except glass used in building); glassware, porcelain and earthenware, not included in other classes.
Ropes, string, 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.
Yarns and threads for textile use.
Textiles and textile goods, not included in other classes; bed and table covers.
Clothing, footwear and headgear.
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Carpets, rugs, mats and matting; linoleum and other materials for covering floors; wall hangings (non-textile).
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour, and preparations made from cereals, bread, , pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt.
Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Alcoholic beverages (except beers).
Tobacco; smokers’ articles; matches.
Classification of services are:
Advertising; business management; business administration; office functions.
Insurance; financial affairs; monetary affairs; real estate affairs.
Building construction; repair; installation services.
Transportation and storage of goods; travel arrangement.
Treatment of Materials.
Education; providing of training; entertainment; sporting and cultural activities.
Computer, scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
Services for providing food and drink; temporary accommodations.
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
The Secretary may refuse to register a mark for a variety of substantive and procedural reasons. G.L. c.110H § 2 provides that a mark may not be registered if it
Trademark applications may also be rejected because of errors in the application process, such as:
If the Secretary finds that an application does not comply with law or contain the information required by 950 CMR 62.00, the Division shall notify the applicant in writing and specify the reasons for refusal. The notice may be posted on the Division’s website, sent by mail, postage pre-paid, to the address provided by applicant, or if the applicant has provided the Division with an electronic mail address, to such address. The applicant shall have a reasonable period of time specified by Secretary in which to reply or amend the application, in which event the application shall be re-examined. If the applicant fails to reply or amend within the specified period, the application shall be considered abandoned. This procedure may be repeated until the Secretary notifies applicant of his intent to finally refuse registration of the mark. Applicant may, within twenty (20) days of the date of the notice, request to be heard at an adjudicatory proceeding before the Division subject to the provisions of M.G.L. c.30A, the State Administrative Procedure Act. The proceedings shall be governed by and conducted in accordance with 950 CMR 101, the Rules and Regulations for the Conduct of Adjudicatory Proceedings before the Corporations Division.
Upon the expiration of the twenty (20) day period or conclusion of the adjudicatory proceedings, if applicable, the Secretary shall issue a notice of final refusal to register.
Upon such notice, applicant may seek a writ of mandamus to compel registration.
An assignment of a mark is transfer of all ownership rights associated with the mark. Assignment must be made by a duly executed writing and may be recorded with the Division. Assignment forms are available on the Division’s website at www.sec.state.ma.us/cor. An assignment is void against a subsequent purchaser for value without notice of assignment unless the assignment is recorded with the Division within three (3) months of the date of the assignment or before the purchase.
If the name or other information pertaining to the registrant changes, the registrant may file an amendment to the registration evidencing such change. Amendment forms are available on the Division’s website at www.sec.state.ma.us/cor.
Renewal Registration of a mark is effective for a term of five (5) years from the date of registration. A mark may be renewed for an additional five-year period by application filed within six months before the expiration of the expiring term. Renewal forms are available on the Division’s website at www.sec.state.ma.us/cor. An application for renewal must include a verified statement that the mark is still in use and include the required specimen.
The Division shall cancel a mark where:
a. that the mark has been abandoned;
b. the registrant is not the owner of the mark;
c. the registration was granted improperly or fraudulently;
d. the mark has become generic for the goods or services for which it was registered;
e. the mark is so similar as to cause confusion or be mistaken for a mark registered by another person in the U.S. Patent and Trademark Office prior to the date of filing the application for registration and has not been abandoned; or
f. other grounds sufficient to warrant cancellation exist.
No fee is required.
The fees for filing documents are as follows:
|Trademark/Service Mark Application||$50.00 per class|
|Renewal||$50.00 per class|
|Assignment||$50.00 per class|
|Registrant Name or Address Amendment||$50.00 per class|
The fee for a document filed by facsimile is $45.00 per class for Applications, Renewals and Assignments and $45.00 for a Registrant Name or Address Amendment. Facsimile transactions will be subject to an additional expedited service fee assessed by a third party vendor.
Other fees, including the fee for copies of documents are set forth in 801 CMR 4.00 Rates, issued by the Executive Office for Administration and Finance.
Fees may be paid for by the following methods:
Personal checks, cashier’s check and money orders must be made payable to the Commonwealth of Massachusetts. The drawer must be acceptable to the filing office. Each check must be for an amount equal to the cost of service and be drawn on a bank acceptable to the filing office.
Payment by MasterCard, VISA or debit card shall be accepted by the filing office for facsimile transactions. Remitters shall provide the Division with the following information:
Payment by electronic funds transfer under National Automated Clearing House Association (NACHA) Rules from remitters who have entered into appropriate NACHA approved arrangements for those transfers, and who authorize the relevant transfer pursuant to 950 CMR 62.00 will be accepted only for facsimile transactions.
Payment will not be deemed tendered until the issuer or agent has confirmed to the filing office that payment will be forthcoming.