2004 Nebraska State Statutes
Trademark Registration
Contact: Nebraska Secretary of State - Corporate Division
State Capitol - Room 1301
Lincoln, NE 68509-4608
Phone: (402) 471-4079
Fax: (402) 471-3666
E-mail: corporate_inquiries@sos.ne.gov
Nebraska Trademark Application Form
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Act, how cited.
87-126. Sections 87-126 to 87-144 shall be known and
may be cited as the Trademark Registration Act.
Intent.
87-127. It is the intent of the Legislature that the
Trademark Registration Act provide a system of state trademark
registration and protection substantially consistent with the
federal system of trademark registration and protection under the
federal Trademark Act of 1946, as amended. To that end, the
construction given the federal act should be examined as
persuasive authority for interpreting and construing the
Trademark Registration Act.
Terms, defined.
87-128. For purposes of the Trademark Registration
Act:
(1) Abandoned mark means that either of the following
has occurred:
(a) When its use has been discontinued with intent not
to resume such use. Intent not to resume may be inferred from
circumstances. Nonuse for two consecutive years shall constitute
prima facie evidence of abandonment; or
(b) 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;
(2) Applicant means the person filing an application
for registration of a mark under the act and the legal
representatives, successors, or assigns of such person;
(3) Dilution means the lessening of the capacity of a
famous mark to identify and distinguish goods or services,
regardless of the presence or absence of (a) competition between
the owner of the famous mark and other parties or (b) likelihood
of confusion, mistake, or deception;
(4) Mark includes any trademark or service mark,
entitled to registration under the act, whether registered or
not;
(5) 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 act includes an individual, a firm,
a partnership, a limited liability company, a corporation, a
union, an association, or another organization capable of suing
and being sued in a court of law;
(6) Registrant means the person to whom the
registration of a mark under the act is issued and the legal
representatives, successors, or assigns of such person;
(7) Secretary means the Secretary of State or the
designee of the secretary charged with the administration of the
act;
(8) Service mark means any word, name, symbol, or
device or any combination thereof used by a person, to identify
and distinguish the services of one 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;
(9) Trade name means any name used by a person to
identify a business or vocation of such person;
(10) Trademark means any word, name, symbol, or device
or any combination thereof 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; and
(11) Use 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. A mark shall be deemed to be in use:
(a) On goods when it is placed in any manner on the
goods or other containers, associated displays, or tags or labels
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
(b) On services when it is used or displayed in the
sale or advertising of services and the services are rendered in
this state.
Mark; not registered; when.
87-129. 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:
(1) Consists of or comprises immoral, deceptive, or
scandalous matter;
(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;
(3) Consists of or comprises the flag or coat of arms
or other insignia of the United States, of any state or
municipality, or of any foreign nation, or any simulation
thereof;
(4) Consists of or comprises the name, signature, or
portrait identifying a particular living individual, except by
the individual's written consent;
(5) 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;
(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, except that nothing
in subdivision (5) of this section shall prevent the registration
of a mark used 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
for the five years before the date on which the claim of
distinctiveness is made; or
(6) Consists of or comprises a mark which so resembles
a mark registered in this state or a mark 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.
Application for registration; contents.
87-130. Subject to the limitations set forth in the
Trademark Registration Act, any person who uses a mark 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 including, 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;
(2) 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;
(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
a predecessor in interest; and
(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,
either federally or in this state, or has the right to use such
mark either in the identical form or in such near resemblance as
to be likely, when applied to the goods or services of such other
person, to cause confusion or mistake or to deceive.
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 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, the status of each application, and if any
application was finally refused registration or has otherwise not
resulted in a registration, the reasons for the refusal or
rejection. The secretary may also require that a drawing of the
mark, complying with such requirements as the secretary may
specify, accompany the application. 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. The
application shall be submitted in duplicate and shall be
accompanied by three specimens showing the mark as actually used
and by the application fee of one hundred dollars payable to the
secretary.
Application; fee; examination; disclaimer; amendments;
reapplication; application priorities.
87-131. (1) 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 the
Trademark Registration Act.
(2) 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.
(3) 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 is or becomes distinctive of the applicant's or
registrant's goods or services.
(4) Amendments may be made by the secretary upon the
application submitted by the applicant upon the applicant's
agreement, or a new application may be required to be submitted.
(5) If the applicant is found not to be entitled to
registration, the secretary shall advise the applicant thereof
and of the reasons therefor. 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 considered
abandoned.
(6) If the secretary 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, on proof that all the statements in the
application are true and that the mark is otherwise entitled to
registration.
(7) 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 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 section 87-136.
Certificate of registration; contents; how treated.
87-132. Upon compliance by the applicant with the
requirements of the Trademark Registration Act, the secretary
shall return the duplicate copy of the application stamped with
the filing date to the applicant. The certificate of
registration shall be issued under the signature of the secretary
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 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, the class of goods or services and a description of
the goods or services on or in connection with which the mark is
used, a reproduction of the mark, the registration date, and the
term of the registration. An original, a duplicate original, or
a certified copy of an application for trademark which has the
file stamp and date of the secretary shall be admissible in
evidence as competent and sufficient proof of the registration of
such mark in any actions or judicial proceedings in any court of
this state. Registration of a mark with the secretary shall be
prima facie evidence of the right to use the mark shown in the
registration on or in connection with the class or classes of
goods or services designated in the registration.
Registration; term; renewal; renewal fee; prior registration and
proceedings.
87-133. (1) A registration of a mark under the
Trademark Registration Act is effective for ten years after the
date of registration and, upon application filed within six
months prior to the expiration, 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
of one hundred dollars, payable to the secretary, shall accompany
the application for renewal of the registration. A registration
may be renewed for successive periods of ten years in like
manner.
(2) Any registration in force under sections 87-111 to
87-125 on July 13, 2000, as such sections existed prior to such
date, is effective and shall continue in full force and effect
for the unexpired term of such registration. Such registration
may be renewed by filing an application for renewal with the
secretary complying with the requirements of the secretary and
paying the renewal fee within six months prior to the expiration
of the registration.
(3) Any suit, proceeding, or appeal pending on July 13,
2000, shall be decided according to sections 87-111 to 87-125 as
such sections existed prior to July 13, 2000.
(4) All applications for renewal under the 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.
Registration; assignment; change of name; other recordings.
87-134. (1) Any mark and its registration under the
Trademark Registration Act is assignable with the good will of
the business in which the mark is used or with that part of the
good will 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 the recording fee payable to the secretary 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 the Trademark Registration Act is void as
against any subsequent purchaser for valuable consideration
without notice unless it is recorded with the secretary within
three months after the date of the assignment or prior to such
subsequent purchase.
(2) 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 of registration for the remainder of the term
of the registration or last renewal of the registration.
(3) Other instruments which relate to a mark registered
or application pending pursuant to the act, such as licenses,
security interests, or mortgages, may be recorded in the
discretion of the secretary if the instrument is in writing and
duly executed.
(4) Acknowledgment shall be prima facie evidence of the
execution of an assignment or other instrument and, when recorded
by the secretary, the record shall be prima facie evidence of
execution.
(5) A photocopy of any instrument referred to in this
section shall be accepted for recording if it is certified by any
of the parties to the instrument, or their successors, to be a
true and correct copy of the original.
Public records.
87-135. The secretary shall keep for public
examination a record of all marks registered or renewed under the
Trademark Registration Act, as well as a record of all documents
recorded pursuant to section 87-134.
Cancellation from register.
87-136. The secretary shall cancel from the register,
in whole or in part:
(1) Any registration concerning which the secretary
receives a voluntary request for cancellation thereof from the
registrant or the assignee of record;
(2) All registrations granted under the Trademark
Registration Act and not renewed in accordance with the act;
(3) Any registration concerning which a court of
competent jurisdiction finds that:
(a) The registered mark has been abandoned;
(b) The registrant is not the owner of the mark;
(c) The registration was granted improperly;
(d) The registration was obtained fraudulently;
(e) The mark is or has become the generic name for the
goods or services, or a portion thereof, for which it has been
registered; or
(f) 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 filing of the application for
registration by the registrant under the act, and not abandoned.
If the registrant proves that the registrant is the owner of a
concurrent registration of a mark in the United States Patent and
Trademark Office covering an area including this state, the
registration under the act shall not be canceled for such area of
the state; or
(4) A court of competent jurisdiction has ordered the
cancellation of a registration on any ground.
Classification of goods and services; rules and regulations.
87-137. The secretary shall adopt and promulgate rules
and regulations which establish a classification of goods and
services for convenience of administration of the Trademark
Registration Act, but such rules and regulations shall not limit
or extend the applicant's or registrant's rights and a single
application for registration of a mark may include any or all
goods upon which, or services with which, the mark is actually
being used indicating the appropriate class or classes of goods
or services. When a single application includes goods or
services which fall within multiple classes, the secretary may
require payment of a fee for each class. To the extent
practicable, the classification of goods and services should
conform to the classification adopted by the United States Patent
and Trademark Office.
Fraudulent representation; liability.
87-138. Any person who for himself or herself, or on
behalf of any other person, procures the filing or registration
of any mark in the office of the secretary under the Trademark
Registration Act by knowingly making any false or fraudulent
representation or declaration, orally or in writing, or by any
other fraudulent means, is liable for all damages sustained in
consequence of such filing or registration, to be recovered by or
on behalf of the party in any court of competent jurisdiction.
Unauthorized use; liability.
87-139. Subject to section 87-143, any person who (1)
uses, without the consent of the registrant, any reproduction,
counterfeit, copy, or colorable imitation of a mark registered
under the Trademark Registration 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 (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 upon or in connection with the
sale or other distribution in this state of such goods or
services, is liable in a civil action by the registrant for any
and all of the remedies provided in section 87-141, except that
under subdivision (2) of this section, the registrant is not
entitled to recover profits or damages unless the acts have been
committed with the intent to cause confusion or mistake or to
deceive.
Famous mark; factors; remedies.
87-140. (1) The owner of a mark which is famous in
this state is entitled, subject to the principles of equity and
upon such terms as the court seems reasonable, to an injunction
against another person's commercial use of a mark or trade name,
if such use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark, and to obtain
such other relief as is provided in this section. In determining
whether a mark is distinctive and famous, a court may consider
factors such as, but not limited to:
(a) The degree of inherent or acquired distinctiveness
of the mark in this state;
(b) The duration and extent of use of the mark in
connection with the goods and services with which the mark is
used;
(c) The duration and extent of advertising and
publicity of the mark in this state;
(d) The geographical extent of the trading area in
which the mark is used;
(e) The channels of trade for the goods or services
with which the mark is used;
(f) The degree of recognition of the mark in the
trading areas and channels of trade in this state used by the
mark's owner and the person against whom the injunction is
sought;
(g) The nature and extent of use of the same or similar
mark by third parties; and
(h) Whether the mark is the subject of a state
registration in this state or a federal registration under the
Act of March 3, 1881, or under the Act of February 20, 1905, or
on the federal principal register.
(2) In an action brought under this section, the owner
of a famous mark is entitled only to injunctive relief in this
state, unless the person against whom the injunctive relief is
sought willfully intended to trade on the owner's reputation or
to cause dilution of the famous mark. If such willful intent is
proven, the owner is also entitled to the remedies under the
Trademark Registration Act, subject to the discretion of the
court and the principles of equity.
(3) The following are not actionable under this
section:
(a) Fair use of a famous mark by another person in
comparative commercial advertising or promotion to identify the
competing goods or services of the owner of the famous mark;
(b) Noncommercial use of the mark; or
(c) All forms of news reporting and news commentary.
Injunction; damages; attorney's fees.
87-141. Any owner of a mark registered under the
Trademark Registration Act may enjoin the manufacture, use,
display, or sale of any counterfeits or imitations of the mark
and any court of competent jurisdiction may grant injunctions to
restrain such manufacture, use, display, or sale as the court
determines to be just and reasonable. A defendant may be
required to pay to the owner all profits derived from and all
damages suffered by reason of the wrongful manufacture, use,
display, or sale. The court may also order that any such
counterfeits or imitations in the possession or under the control
of any defendant 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 such profits and
damages and reasonable attorney's 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. The enumeration of
any right or remedy under the act does not affect a registrant's
right to prosecute under any penal law of this state.
Cancellation or registration of mark; action; procedure.
87-142. (1) Actions to require cancellation of a mark
registered pursuant to the Trademark Registration Act or in
mandamus to compel registration of a mark pursuant to the act
shall be brought in the district court of Lancaster County. In
an action in mandamus, the proceeding shall be based solely upon
the record before the secretary. In an action for cancellation,
the secretary shall not be made a party to the proceeding but
shall be notified of the filing of the complaint by the clerk of
the court in which it is filed and shall be given the right to
intervene in the action.
(2) In any action brought against a nonresident
registrant, service may be effected upon the secretary as agent
for service of the registrant in accordance with the procedures
established for service upon nonresident corporations and
business entities under section 25-509.01.
Common law; construction of act.
87-143. Nothing in the Trademark Registration Act
shall adversely affect the rights or the enforcement of rights in
marks acquired in good faith at any time at common law.
Fees; not refundable.
87-144. Unless specified by the secretary, the fees
payable under the Trademark Registration Act are not refundable.
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