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.
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).
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.
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.
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.
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.