Any person shall be liable in a civil action by the registrant for any and all of the remedies provided in Section 16 [57-3B-16 NMSA 1978] of the Trademark Act, who shall:

A. use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under the Trademark Act in connection with the sale, distribution, offering for sale or advertising of any goods or services on or in connection with which the use is likely to cause confusion or mistake or to deceive as to the source of origin of the goods or services; or

B. reproduce, counterfeit, copy or colorably imitate any such mark and apply the 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 these goods or services.

The registrant shall not be entitled to recover profits or damages under Subsection B of this section unless the acts have been committed with the intent to cause confusion or mistake or to deceive.

History: Laws 1997, ch. 197, § 14.

Within state, federal registrant inferior to prior state registrant. — When plaintiff, doing business solely in the Northeast, applied for federal registration in the United States patent office in 1968 and received registration in 1969, and defendant, doing business solely in New Mexico, applied for the same trademark under this act and received it in 1968, since defendant did not learn of plaintiff until 1971, and defendant did not adopt plaintiff's name to benefit from plaintiff's reputation, and there were no customers in common, plaintiff did not have exclusive nationwide rights, and in New Mexico defendant had the superior right to the mark. Value House v. Phillips Mercantile Co., 523 F.2d 424 (10th Cir. 1975).

Am. Jur. 2d, A.L.R. and C.J.S. references. — 74 Am. Jur. 2d Trademarks and Tradenames §§ 84 to 144.

Right to protection against simulation of physical appearance or arrangement of place of business, or vehicle, 17 A.L.R. 784, 28 A.L.R. 114.

Territory of operation: right to protection against use of trademark or tradename beyond the territory in which plaintiff operates, 36 A.L.R. 922.

Protection of business or trading corporation against use of same or similar name by another corporation, 66 A.L.R. 948, 115 A.L.R. 1241, 72 A.L.R.3d 8.

Actual competition as necessary element of trademark infringement or unfair competition, 148 A.L.R. 12.

Conflict of laws, with respect to trademark infringement or unfair competition, including the area of conflict between federal and state law, 148 A.L.R. 139.

Unfair competition by imitation in sign or design of business place, 86 A.L.R.3d 884.

Liability of better business bureau or similar organization in tort, 50 A.L.R.4th 745.

Name appropriation by employer or former employer, 52 A.L.R.4th 156.

World wide web domain as violating state trademark protection statute or state unfair trade practices act, 96 A.L.R.5th 1.

Application of secondary meaning test in action for trade dress infringement under § 43(a) of the Lanham Act (15 USC § 1125(a)), 87 A.L.R. Fed. 15.

Parody as trademark or tradename infringement, 92 A.L.R. Fed. 25.

Admissibility and weight of consumer survey in litigation under trademark opposition, trademark infringement, and false designation of origin provisions of Lanham Act (15 USC §§ 1063, 1114, and 1125), 98 A.L.R. Fed. 20.

"Post-sale confusion" in trademark or trade dress infringement actions under § 43 of the Lanham Trade-Mark Act (15 USCA § 11125), 145 A.L.R. Fed. 407.

Liability as vicarious or contributory infringer under Lanham Act - modern cases, 152 A.L.R. Fed. 573.

When is trade dress "inherently distinctive" for purposes of trade dress infringement actions under § 43(a) of Lanham Act (15 U.S.C.A. § 1125(a)) - Cases after Two Pesos, 161 A.L.R. Fed. 327.

Parody as trademark or tradename dilution or infringement, 179 A.L.R. Fed. 181.

87 C.J.S. Trademarks, Tradenames and Unfair Competition §§ 64 to 86, 135.