Effective 28 Aug 1995

417.016. Registration of trademark — application, contents — information required by secretary of state — fee, how payable — refusal to register mark, procedure. — 1. Subject to the limitations set forth in sections 417.005 to 417.066, any person who adopts and uses a mark in this state may file in the office of the secretary of state, on a form to be authorized or furnished by the secretary of state, 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;

(2) The goods or services 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 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 his predecessor in business; and

(4) A statement that the applicant is the owner of the mark and that 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 might be calculated to deceive or to be mistaken therefor.

2. The application shall be signed and verified by the applicant or by a member of the firm or an officer of the corporation or association applying.

3. The application shall be accompanied by a specimen or facsimile of such mark in triplicate.

4. The application for registration shall be accompanied by a fee of fifty dollars, payable to the director of revenue.

5. The secretary of state 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 thereof including the filing date and serial number of each application, the status thereof and, if any application was finally refused registration or has otherwise not resulted in a registration, the reasons therefor.

6. The secretary of state may also require that a drawing of the mark, complying with such requirements as the secretary of state may specify, accompany the application.

7. Upon the filing of an application for registration and payment of the application fee, the secretary of state may cause the application to be examined for conformity with sections 417.005 to 417.066.

8. The applicant shall provide any additional pertinent information requested by the secretary of state including a description of a design mark and may make, or authorize the secretary of state to make, such amendments to the application as may be reasonably requested by the secretary of state or deemed by the applicant to be advisable to respond to any rejection or objection.

9. The secretary of state may require the applicant to disclaim an unregisterable component of a mark otherwise registerable, and an applicant may voluntarily disclaim a component of a mark sought to be registered. No disclaimer shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter, or the applicant's or registrant's rights of registration on another application if the disclaimed matter be or shall have become distinctive of the applicant's or registrant's goods or services.

10. Amendments may be made by the secretary of state upon the application submitted by the applicant with the applicant's agreement; or a fresh application may be required to be submitted.

11. If the applicant is found not to be entitled to registration, the secretary of 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 state in which to reply or to amend the application, in which event the application shall then be reexamined. This procedure may be repeated until:

(1) The secretary of 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.

12. If the secretary of state finally refuses registration of the mark, the applicant may seek, in the circuit court of Cole County, an extraordinary writ to compel such registration. Such injunction may be granted, but without costs to the secretary of state, on proof that all the statements in the application are true and that the mark is otherwise entitled to registration.

13. In the instance of applications concurrently being processed by the secretary of state seeking registration of the same or confusingly similar marks for the same or related goods or services, the secretary of state 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 the provisions of section 417.041.

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(L. 1973 H.B. 281 § 3, A.L. 1995 S.B. 80 & 88)