CHAPTER 622a*
COLLECTIVE AND CERTIFICATION MARKS

*See also chapter 620a.

Table of Contents

Sec. 35-18a. Definitions.
Sec. 35-18b. Disqualification of marks for registration.
Sec. 35-18c. Application for registration.
Sec. 35-18d. Examination and amendment of application. Disclaimer. Refusal of registration.
Sec. 35-18e. Certificate of registration. Effective period. Renewal; fee. Record of marks.
Sec. 35-18f. Assignment of mark and registration. Change of name. Recording of other instruments.
Sec. 35-18g. Cancellation of registration.
Sec. 35-18h. Illegal use of mark. Remedies.
Sec. 35-18i. Fraudulent registration.
Sec. 35-18j. Common law rights not affected.


Sec. 35-18a. Definitions. As used in this chapter:
(1) The term "collective mark" means a trademark or service mark used by the members of a cooperative, an association or other collective group or organization and includes marks used to indicate membership in a union, an association or other organization.
(2) The term "certification mark" means a mark used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
(3) The term "mark" means any word, name, symbol or device, or any combination thereof used to identify and includes any certification mark or collective mark entitled to registration under this chapter whether registered or not.
(4) The term "person" means any individual, firm, partnership, corporation, limited liability company, association, union, governmental body or agency or other organization.
(5) The term "applicant" includes the person filing an application for registration of a mark under this chapter, and the legal representatives, successors or assigns of such person.
(6) The term "registrant" includes the person to whom the registration of a mark under this chapter is issued, and the legal representatives, successors or assigns of such person.
(7) The term "use" means the bona fide use of a mark in the ordinary course of business activity and not made merely to reserve a right in a mark. For the purposes of this chapter, a certification mark shall be deemed to be in use in commerce (A) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods make such placement impracticable, then on documents associated with the goods or their sale, and such goods are sold or otherwise distributed in this state, and (B) on services when it is used or displayed in the sale or advertising of services and the services are rendered in this state.
(8) A collective mark is deemed used in this state when used in public or in commerce in the state by one or more members.
(9) A mark shall be deemed to be abandoned (A) when its use has been discontinued with intent not to resume. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment; (B) when any course of conduct of the registrant, including acts of omission as well as commission, causes the mark to lose its significance as an indication of the registrant and persons belonging to or affiliated with the registrant, or operating in accordance with conditions prescribed by the registrant.
(1967, P.A. 689, S. 1; P.A. 93-152, S. 12; P.A. 95-79, S. 132, 189.)
History: P.A. 93-152 replaced alphabetic with numeric Subdiv. indicators, amended the definition of "person" to include any "governmental body or agency", amended definitions of "applicant" and "registrant" to delete the "predecessors" of the person, replaced the definition of when a certification mark shall be deemed to be used in this state with a definition of the term "use" and a provision specifying when a certification mark shall be deemed to be in use in commerce on goods and on services and amended Subdiv. (9) to replace numeric with alphabetic Subpara. indicators; P.A. 95-79 redefined "person" to include a limited liability company, effective May 31, 1995.

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Sec. 35-18b. Disqualification of marks for registration. A mark in use in Connecticut by which the applicant for registration may be distinguished from others shall be registered unless 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 of the United Nations, or any simulation thereof, except with the written consent thereof; or (4) consists of or comprises the name, signature or portrait identifying a particular living individual, except with the individual's written consent; or (5) consists of a mark which, (A) when used on or in connection with the goods or services of the applicant, is deceptively misdescriptive or so descriptive as to be incapable of distinguishing the applicant or members thereof, or (B) is primarily merely a surname, provided nothing in this subsection shall prevent the registration of a mark used in this state by the applicant which has become distinctive of the applicant. The Secretary of the State may accept as evidence that the mark has become distinctive, as applied to the goods or services certified by the applicant, or to the membership of the applicant, proof of substantially exclusive and continuous use thereof as a mark by the applicant in this state 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 used in this state by another prior to the use by the applicant and not abandoned, as to be likely, when used by the applicant, to cause confusion or mistake, or to deceive the public; or (7) consists of or comprises a mark which so resembles a mark previously registered in the United States Patent and Trademark Office by another and not abandoned, as to be likely, when used by the applicant, to cause confusion or to cause mistake or to deceive, unless the applicant commenced use of the mark in this state prior to the granting of the federal registration.
(1967, P.A. 689, S. 2; P.A. 93-152, S. 13.)
History: P.A. 93-152 amended Subdiv. (4) to replace "the name, signature or portrait of any living individual" with "the name, signature or portrait identifying a particular living individual", amended Subdiv. (5) to replace in Subpara. (A) "when applied to the applicant" with "when used on or in connection with the goods or services of the applicant" and replace in Subpara. (B) "as applied to the applicant's goods or services, or membership" with "as applied to the goods or services certified by the applicant, or to the membership of the applicant", amended Subdiv. (6) to replace "previously used in this state by another" with "used in this state by another prior to the use by the applicant" and added Subdiv. (7) re resemblance of a mark to a mark previously federally registered.

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Sec. 35-18c. Application for registration. (a) Subject to the limitations set forth in this chapter, any person who adopts and uses a mark in this state may file in the office of the Secretary of the State, 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: (1) 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 of the State; (2) in the instance of a certification mark, 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 in connection with such goods or services, or in the instance of a collective mark, the goods or services of the members of the applicant or membership in the applicant as applicable; (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 interest, or by a person acting under authority of the applicant, who shall be named; (4) a statement that the applicant is the owner of the mark and that to the knowledge of the person verifying the application, 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 to be likely, when applied to the goods or services of such other person or to membership in such other person, to cause confusion, or to cause mistake, or to so deceive the public; (5) a statement as to whether an application to register the mark, or portions or composites thereof, has been filed by the applicant in 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, or the issue date and registration number of any issued registration, the status thereof, the identification of any marks cited during the pendency of the application and, if any mark was refused registration, the reasons therefor, and (6) a statement that, to the knowledge of the person verifying the application, the mark is not known to be the subject matter of an existing federal registration granted to another. The Secretary of the State may also require that a drawing of the mark, complying with such requirements as the secretary may specify, be submitted; and (7) in the instance of a certification mark, statements that (A) the applicant is not engaged in the production or marketing of any goods or services to which the mark is applied and (B) identify that which is certified, i.e., regional or other origin, material, mode of manufacture, quality, accuracy or other characteristic of the goods or services; or that the work or labor on the goods or in the performance of the services was performed by members of the applicant.
(b) The application shall be signed subject to the penalties for false statement 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 three specimens or photographs showing the mark as actually used in commerce in this state.
(d) The application for registration shall be accompanied by a filing fee of fifty dollars, payable to the Secretary of the State, which fee shall not be refundable.
(1967, P.A. 689, S. 3; P.A. 93-152, S. 14; P.A. 96-180, S. 114, 166.)
History: P.A. 93-152 amended Subsec. (a) to replace "on a form to be furnished by said secretary" with "in a manner complying with the requirements of the secretary", add in Subdiv. (1) "or, if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary of the state", replace in Subdiv. (3) "predecessor in business" with "predecessor in interest", add in Subdiv. (4) "to the knowledge of the person verifying the application", require in Subdiv. (5) that if any mark was refused registration the applicant provide the reasons therefor and insert a new Subdiv. (6) requiring the applicant to include a statement that the mark is not known to be the subject matter of an existing federal registration granted to another and authorizing the secretary of the state to require a drawing of the mark be submitted and renumbering the remaining Subdiv. accordingly, amended Subsec. (b) to require the application to be signed "subject to the penalties for false statement" rather than "verified", amended Subsec. (c) to require the application to be accompanied by "three specimens or photographs showing the mark as actually used in commerce in this state" rather than "a specimen or facsimile of such mark in quadruplicate" and amended Subsec. (d) to increase the filing fee from fifteen to fifty dollars and provide that the fee shall not be refundable; P.A. 96-180 made technical change in Subsec. (a) to correct reference to U.S. Patent and Trademark Office, effective June 3, 1996.

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Sec. 35-18d. Examination and amendment of application. Disclaimer. Refusal of registration. (a) Upon the filing of an application for registration and payment of the fee herein provided, the Secretary of the State shall cause the application to be examined to ensure conformity with sections 35-18a to 35-18e, inclusive.
(b) The applicant shall provide any additional pertinent information requested by the Secretary of the State including a description of a design mark, and the applicant 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 of the State may require the applicant to disclaim an unregistrable component of a mark otherwise registrable, and applicant may voluntarily disclaim a component of a mark sought to be registered.
(d) No disclaimer shall prejudice or affect the applicant's or registrant's rights of registration on another application if the disclaimed matter is or becomes distinctive of the applicant's or registrant's goods or services.
(e) If the applicant is found not to be entitled to registration, the Secretary of the 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 the State in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the Secretary of the 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.
(f) If the Secretary of the State 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 of the State, on proof that all the statements in the application are true and that the mark is otherwise entitled to registration.
(1967, P.A. 689, S. 4; P.A. 93-152, S. 15.)
History: P.A. 93-152 inserted a new Subsec. (b) to require the applicant to provide any additional pertinent information requested by the secretary of the state, formerly part of Subsec. (a), require the applicant to include a description of a design mark when requested and authorize amendments to the application to respond to any rejection or objection, inserted a new Subsec. (c) re disclaimer of a component of a mark, inserted Subsec. (d) re effect of a disclaimer on another application, relettered the remaining Subsecs. accordingly and amended Subsec. (e) to replace alphabetic with numeric Subdiv. indicators and add "or amend" in Subdiv. (2).

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Sec. 35-18e. Certificate of registration. Effective period. Renewal; fee. Record of marks. (a) Upon compliance by the applicant with the requirements of this chapter, the Secretary of the State shall cause a certificate of registration to be issued and delivered to the applicant. The certificate of registration shall be issued under the signature of the Secretary of the State and the seal of the state, and it shall show the name and business address 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 of the State, of the person claiming ownership of the mark, the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in this state, and a description of the goods or services, or a statement of the membership, with or by which the mark is used, a reproduction of the mark, the registration date and the term of the registration. Any certificate of registration issued by the Secretary of the State or a copy thereof certified by the Secretary of the State shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action or judicial proceedings in any court of this state.
(b) (1) Registration of a mark under this chapter shall be effective for a term of five years from the date of registration and, upon application filed within six months prior to the expiration of such term, in a manner complying with the requirements of the Secretary of the State, the registration may be renewed for a like term from the end of the expiring term. A fee for the application for renewal of fifty dollars, payable to the Secretary of the State, shall accompany the application for renewal of the registration. A registration of a mark may be renewed for successive periods of five years in like manner. (2) Any registration in force on October 1, 1993, shall expire five years from the date of the registration or of the last renewal thereof and may be renewed by filing an application with the Secretary of the State as provided in subdivision (1) of this subsection.
(c) All applications for renewal under this chapter shall include a verified statement that the mark has been in use and is still in use in this state, and include three specimens showing actual use of the mark in commerce in the state upon or in connection with the goods or services.
(d) The Secretary of the State shall keep for public examination a record of all marks registered or renewed under this chapter.
(1967, P.A. 689, S. 5; P.A. 93-152, S. 16.)
History: P.A. 93-152 amended Subsec. (a) to require the certificate to show "if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary of the state", amended Subdiv. (1) of Subsec. (b) to rephrase provisions, reduce from ten to five years the term of a registration and renewal and replace a "renewal fee of fifteen dollars" with a "fee for the application for renewal of fifty dollars", amended Subdiv. (2) of Subsec. (b) to replace obsolete provision re expiration and renewal of registrations in force on October 1, 1967, with provision re expiration and renewal of registrations in force on October 1, 1993, deleted as obsolete former Subsec. (c) requiring notification by the secretary of the state of all registrants within six months of October 1, 1967, of the expiration dates of such registrations and inserted new Subsec. (c) to require all renewal applications to include verified statement re use of the mark and three specimens showing actual use of the mark.

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Sec. 35-18f. Assignment of mark and registration. Change of name. Recording of other instruments. (a) Any mark and its registration under this chapter shall be assignable with the good will of the business or organization in which the mark is used, or with that part of the good will of the business or organization 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 of the State upon the payment of a recording fee of twenty-five dollars, payable to the Secretary of the State, 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 this chapter shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the Secretary of the State within three 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 registration was issued or by whom an application was filed may record a certificate of change of name of the registrant or applicant with the Secretary of the State upon the payment of the recording fee of twenty-five dollars for each registration.
(c) Other instruments which relate to a mark registered or application pending pursuant to this chapter including, but not limited to, licenses, security interests or mortgages, may be recorded in the discretion of the Secretary of the State, provided such instrument is in writing and duly executed. A grant of a security interest shall be by instrument in writing duly executed. Such other instruments shall be recorded by the Secretary of the State upon the payment of the recording fee of twenty-five dollars.
(d) Acknowledgment shall be prima facie evidence of the execution of an assignment or other instrument and, when recorded by the Secretary of the State, the record shall be prima facie evidence of execution.
(e) A photocopy of any instrument referred to in subsection (a), (b), (c) or (d) of this section shall be accepted for recording if it is certified by any of the parties thereto, or their successors, to be a true and correct copy of the original.
(f) The Secretary of the State shall keep for public examination a record of all documents recorded pursuant to this section.
(1967, P.A. 689, S. 6; P.A. 93-152, S. 17.)
History: P.A. 93-152 designated existing provisions as Subsec. (a) and amended said Subsec. to replace "a fee of fifteen dollars" with "a recording fee of twenty-five dollars", added Subsec. (b) to authorize a registrant or applicant to record a certificate of change of name upon payment of the recording fee of twenty-five dollars, added Subsec. (c) to authorize the recording of other related instruments that are in writing and duly executed, require a grant of a security interest to be by instrument in writing duly executed and require such other instruments to be recorded upon the payment of the recording fee of twenty-five dollars, added Subsec. (d) re prima facie evidence of execution, added Subsec. (e) re recording of a certified photocopy of certain instruments and added Subsec. (f) to require the secretary of the state to keep for public examination a record of all documents recorded pursuant to this section.

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Sec. 35-18g. Cancellation of registration. The Secretary of the State shall cancel from the register, in whole or in part, (1) any registration concerning which the Secretary of the State receives a voluntary request for cancellation thereof from the registrant or the assignee of record, accompanied by a recording fee of twenty-five dollars; (2) all registrations granted under this chapter and not renewed in accordance with the provisions hereof; (3) any registrations concerning which a court of competent jurisdiction orders cancellation after finding (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 contrary to the provisions of section 35-18b; (D) that the registration was obtained fraudulently or in bad faith; (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 first use in Connecticut by the registrant hereunder, and used in Connecticut and not abandoned, provided if the registrant proves that the registrant is the owner of concurrent registration of a mark in the United States Patent and Trademark Office covering an area including this state, the registration under this chapter shall not be cancelled for such area of the state; (F) that the registered mark has become so descriptive as to be incapable of distinguishing the registrant; (G) that another person has rights in the state of Connecticut superior to those of the registrant; or (H) in the case of a certification mark, that the registrant (i) does not control, or is not able legitimately to exercise control over, the use of such mark, or (ii) engages in the production or marketing of any goods or services to which the mark is applied, or (iii) permits the use of the certification mark for purposes other than to certify, or (iv) discriminately refuses to certify or continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies; or (4) any registration concerning which a court of competent jurisdiction orders cancellation on any other ground.
(1967, P.A. 689, S. 7; P.A. 93-152, S. 18; P.A. 96-180, S. 115, 166.)
History: P.A. 93-152 deleted as obsolete former Subdiv. (1) requiring cancellation after October 1, 1968, of registrations more than ten years old and not renewed and renumbered the remaining Subdivs. accordingly, authorized the secretary to cancel a registration "in whole or in part", amended Subdiv. (1) to require a voluntary request for cancellation to be "accompanied by a recording fee of twenty-five dollars", amended Subdiv. (3) to insert Subpara. indicators and amend Subpara. (E) to reposition language and add proviso prohibiting cancellation for an area of the state when the registrant is the owner of concurrent federal registration covering an area including this state, and added Subdiv. (4) to require cancellation of any registration concerning which a court orders cancellation on any other ground; P.A. 96-180 made technical change to correct reference to U.S. Patent and Trademark Office, effective June 3, 1996.

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Sec. 35-18h. Illegal use of mark. Remedies. (a) Subject to the provisions of section 35-18j, any person who (1) uses in Connecticut, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under this chapter in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake or to deceive as to the source or origin of such goods or services; or (2) reproduces, counterfeits, copies or colorably imitates any such mark and applies such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution or advertising of goods or services on or in connection with which such use is likely to cause confusion or to cause mistake or to deceive the public, shall be liable in a civil action by the registrant for any or all the remedies provided in subsection (b) of this section, except that under subdivision (2) of this subsection the registrant shall not be entitled to recover profits or damages unless the acts have been committed with intent to cause confusion or mistake or to deceive.
(b) Any registrant of a mark registered under this chapter may proceed by suit to enjoin the wrongful manufacture, use, display or sale of any reproduction, counterfeit or imitation thereof, and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as may be deemed just and reasonable, and may require the defendants to pay to such registrant all profits derived from, or all damages suffered by reason of, such wrongful manufacture, use, display or sale, or both such profits and damages; and such court may also order that any such reproduction, counterfeit or imitation in the possession or under the control of any defendant be delivered to an officer of the court to be destroyed, or to the complainant. The court, in its discretion, may enter judgment for an amount not to exceed three times such profits and damages and a reasonable attorney's fee 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. The enumeration of any right or remedy herein shall not affect a registrant's right to prosecute under any penal law of this state.
(c) In all cases where the registrant is an association, union or other organization which is not incorporated, an action under this section may be commenced and prosecuted by any officer or member of such association, union or other organization, in behalf of such association, union or other organization.
(1967, P.A. 689, S. 8; P.A. 93-152, S. 19.)
History: P.A. 93-152 amended Subsec. (a) to replace "likely to cause confusion or to cause mistake or to deceive the public" with "likely to cause confusion or to cause mistake or to deceive as to the source or origin of such goods or services", replace "owner of such registered mark" with "registrant" and replace "committed with knowledge that such imitation is intended to be used to cause confusion or mistake or to deceive the public" with "committed with intent to cause confusion or mistake or to deceive" and amended Subsec. (b) to replace "owner" with "registrant", rephrase provision re granting of injunctions and add provision authorizing the court to enter judgment for an amount not to exceed three times such profits and damages and a reasonable attorney's fee when the court makes certain findings.
See Sec. 53-347a (c) re penalties for illegal use of mark.

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Sec. 35-18i. Fraudulent registration. Any person who, for himself or on behalf of any other person, procures the filing or registration of any mark in the office of the Secretary of the State under the provisions hereof, by knowingly making any false or fraudulent representation or declaration, verbally 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.
(1967, P.A. 689, S. 9.)

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Sec. 35-18j. Common law rights not affected. Nothing herein shall adversely affect the rights or the enforcement of rights in marks or trade names acquired in good faith at any time at common law.
(1967, P.A. 689, S. 10.)

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