CHAPTER 125

AN ACT to amend the Code of Virginia by adding in Title 59 thereof a
chapter numbered 12.1 containing sections numbered 59-189.2 through
59-189.18 to provide for registration and protection of trade marks and
service marks; and to repeal Chapter 12 of Title 59 of the Code of
Virginia consisting of §§ 59-177 through 59-189.1 relating to trade
marks, labels and names, generally. g

(S 77]

Approved February 27, 1958

Be it enacted by the General Assembly of Virginia:
1. That the Code of Virginia be amended by adding in Title 59 thereof
a chapter numbered 12.1 containing sections numbered 59-189.2 through
59-189.18, as follows:

Chapter 12.1

Registration and Protection of Trademarks and Service Marks

§ 59-189.2. This chapter shall be known as the “Virginia Trademark
and Service Mark Act”.

§ 59-189.3. When used in this chapter, unless a different meaning
clearly appears from the context:
(1) “Trademark” means any word, name, symbol, or device or any
combination thereof adopted and used by a person to identify goods made
or sold by him and to distinguish them from goods made or sold by others.

(2) “Service mark” means a mark used in the sale or advertising of
services to identify the services of one person and distinguish them from
the services of others, and includes, without being limited to, marks, names,
symbols, titles, designations, slogans, character names, and distinctive
features of radio or other advertising.

(3) “Person” means an individual, partnership, corporation, or un-
incorporated association.

(4) “Applicant” means a person filing an application for registration
of a trademark or service mark under this Act, and includes his legal repre-
sentatives, successors and assigns.

(5) “Registrant” means a person to whom the registration of a
trademark or service mark under this Act is issued, and includes his legal
representatives, successors and assigns.

(6) A trademark shall be deemed to be “used’’ in this State when it is
placed on goods or their containers or on tags or labels affixed thereto and
the goods are sold or otherwise distributed in this State.

(7) A service mark shall be deemed to be “used” in this State when it
identifies a service, whether or not the service be rendered in connection
with the sale or distribution of goods of the owner of the mark, rendered
or received in this State.

(8) “Commission” means the State Corporation Commission.

§ 59-189.4, A trademark by which the goods of an applicant may be
distinguished from the goods of others shall not be registered if it

(a) consists of or comprises immoral, deceptive or scandalous
matter; or

(b) consists of or comprises matter which may falsely suggest a con-
nection with persons, living or dead, institutions, beliefs, or national sym-
bols, or brings them into contempt, or disrepute; or

(c) 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 any simulation thereof; or

(d) consists of or comprises the name, signature or portrait of a
living individual, except with his written consent; or

(e) consists of a mark which, (1) when applied to the goods of the
applicant, is merely descriptive or deceptively misdescriptive of them, or
(2) when applied to the goods of the applicant, is primarily geographically
descriptive or deceptively misdescriptive of them, or (3) is primarily mere-
ly a surname; provided, however, that nothing in this section (e) shall pre-
vent the registration of a mark by the applicant which has become dis-
tinctive of the applicant’s goods used in this State. The Commission may
accept as evidence that the mark has become distinctive of the applicant’s
goods proof of continuous use thereof as a mark by the applicant in this
State or elsewhere for the five years next preceding the date of the filing
of the application for registration; or

(f) consists of or comprises a trademark which so resembles a trade-
mark currently registered in this State, or a trademark or trade name
previously used in this State by another and not abandoned, as to be likely,
when applied to the goods of the applicant, to cause confusion or mistake
or to deceive.

§ 59-189.5. Subject to the limitations set forth in this chapter, any
person who owns and uses a trademark in this State may file in the office
of the Commission, on a form to be furnished by it, an application for reg-
istration of that trademark setting forth the following information:
_ (a) the name and business address of the applicant; and, if a corpora-
tion, the state of incorporation,

. (b) the goods in connection with which the mark is used, the manner
in which the mark is used in connection with the goods, and the class in
which the goods fall,

(c) the date when the trademark was first used anywhere and the date
when it was first used in this State by the applicant or his predecessor in
business, and

(d) a statement that the applicant is the owner of the trademark and
that no other person has the right to use the trademark 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.

The application shall be signed by the applicant and sworn to by the
individual who signed the name of the applicant.

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

The application for registration shall be accompanied by a filing fee
of ten dollars payable to the Commission, which shall not be returned if
the application is not granted.

§ 59-189.6. Subject to the provisions relating to the registration of
trademarks, so far as they are applicable, service marks used in this State
shall be registrable, in the same manner and with the same effect as trade-
marks, and when registered they shall be entitled to the protection pro-
vided herein in the case of trademarks. Applications and procedure under
this section shall conform as nearly as practicable to those prescribed for
the registration and renewal of trademarks.

§ 59-189.7. Upon compliance by the applicant with the requirements
of this chapter, the Commission shall cause a certificate of registration to
be issued and delivered to the applicant. The certificate of registration
shall show the name and business address and, if a corporation, the state of
incorporation, of the person claiming ownership of the trademark or ser-
vice mark, the date claimed for the first use of the trademark or service
mark anywhere, and the date claimed for the first use of the trademark or
service mark in this State, the class of goods or services, and a description
of the goods or services on which the trademark or service mark is used, a
reproduction of the trademark or service mark, the registration date and
the term of the registration.

Any certificate of registration issued by the Commission or a copy
thereof duly certified by the Commission shall be admissible in evidence as
competent and sufficient proof of the registration of such trademark or
service mark in any action or proceeding in any court.

The fee for each certificate of registration or certified copy thereof
shall be five dollars.

§ 59-189.8. Registration of a trademark or service mark hereunder
shall be effective for a term of ten years from the date of registration and,
upon application filed within six months prior to the expiration of such
term, on a form to be furnished by the Commission, the registration may
be renewed for a like term. A renewal fee of ten dollars, payable to the
Commission shall accompany the application for renewal of the regis-
tration.

A trademark or service mark registration may be renewed for suc-
cessive periods of ten years in like manner.

Any registration in force on the effective date of this chapter shall
remain in force so long as it would have remained in force if this chapter
had not been enacted ; and may be renewed as provided in this section.

§ 59-189.9. Any trademark or service mark and its registration here-
under shall be assignable with the good will of the business in which the
trademark or service mark is used, or with that part of the good will of the
business connected with the use of and symbolized by the trademark or
service mark.

Assignment shall be by instrument in writing duly executed and may
be filed with the Commission upon the payment of a fee of ten dollars pay-
able to the Commission which, upon filing 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. The assignment of a regis-
tration under this chapter shall be void as against any subsequent pur-
chaser for value without notice, unless it is filed with the Commission with-
in three months after the date thereof or prior to such subsequent purchase.

§ 59-189.10. The Commission shall keep for public examination a
register of trademarks and service marks registered or renewed under this
ier until five years after the expiration thereof and all renewals

ereof.

§ 59-189.11. The Commission shall cancel from the register:

(1) Any registration concerning which the Commission shall receive
a noaent for cancellation thereof from the registrant or the assignee of
record;

(2) All registrations granted under this chapter and prior Acts, and
not renewed in accordance with the provisions hereof ;

(3) Any registration concerning which the Commission shall find on
its own motion, or on petition of any person who alleges that he is or will
be damaged by such registration,

(a) that the registered trademark or service mark has_ been
abandoned,

Ps that the registrant is not the owner of the trademark or service
mark,

(c) that the registration was granted improperly,

(d) that the registration was obtained fraudulently,

(e) that the registered trademark or service mark so resembles a
trademark or service mark, or trade name, previously used in this State by
another and not abandoned, as to be likely when applied to the goods or
services of the registrant to cause confusion or mistake, or to deceive.

§ 59-189.12. The following classes of goods and services are estab-
lished for convenience of administration of this chapter, but not to limit or
extend the applicant’s or registrant’s rights, and may be added to, deleted
from, or changed by order of the Commission.

A single application for registration of a trademark may include
any or all goods upon which the trademark is actually being used comprised
in a single class but may not include goods which fall within different
classes.

A single application for registration of a service mark may include
all services in connection with which the service mark is actually being
used comprised in a single class but may not include services which fall
within different classes.

The said classes are as follows:

GOODS
Class Title
Raw or partly prepared materials.
Receptacles.
Baggage, animal equipment, portfolios, and pocketbooks.
Abrasives and polishing materials.
Adhesives.
Chemicals and chemical compositions.
Cordage.
Smokers’ articles, not including tobacco products.

DONA WN
Explosives, firearms, equipment, and projectiles.
Fertilizers.
Inks and inking materials.
Construction materials. ; ;
Hardware and plumbing and steam-fitting supplies.
Metals and metal castings and forgings.
Oils and greases.
Protective and decorative coatings.
Tobacco products.
Medicines and pharmaceutical preparations.
Vehicles.
Linoleum and oiled cloth.
Electrical apparatus, machines, and supplies.
Games, toys, and sporting goods.
Cutlery, machinery, and tools, and parts thereof.
Laundry appliances and machines.
Locks and safes.
Measuring and scientific appliances.
Horological instruments.
Jewelry and precious-metal ware.
Brooms, brushes, and dusters.
Crockery, earthenware, and porcelain.
Filters and refrigerators.
Furniture and upholstery.
Glassware.
Heating, lighting, and ventilating apparatus.
Belting, hose, machinery packing, and nonmetallic tires.
Musical instruments and supplies.
Paper and stationery.
Prints and publications.
Clothing.
Fancy goods, furnishings, and notions.
Canes, parasols, and umbrellas.
Knitted, netted, and textile fabrics, and substitutes therefor. ©
Thread and yarn.
Dental, medical, and surgical appliances.
Soft drings and carbonated waters.
Foods and ingredients of foods.
Wines.
Malt beverages and liquors.
Distilled alcoholic liquors.
Merchandise not otherwise classified.
Cosmetics and toilet preparations.
Detergents and soaps.

SERVICES

Title

Services not otherwise classified.
Advertising.
Insurance and financial.
Construction and repair.
Communication.
Transportation and storage.
Material treatment.
Education and entertainment.

§ 59-189.13. Subject to the provisions of § 59-189.14, any person
who shall

(a) use, in this State, without the consent of the registrant, any re-

production, counterfeit, copy or colorable imitation of any registered trade-
mark or service mark in connection with the sale, offering for sale, or ad-
vertising of any goods or services in a manner likely to cause confusion
or mistake or to deceive purchasers as to the source or origin of such
goods or services; or

(b) reproduce, counterfeit, copy, or colorably imitate any such trade-
mark or service mark and apply 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,
shall be liable to civil action by the registrant for any or all of the remedies
hereinafter provided in § 59-189.14, except that under subsection (b)
hereof the registrant shall not be entitled to recover profits or damages
unless the acts have been committed with knowledge that such trademark
or service mark is intended to be used to cause confusion or mistake or to
deceive purchasers.

§ 59-189.14. Any owner of a trademark or service mark registered
under this chapter, or prior Acts, and in force and effect, may proceed by
suit in a circuit or corporation court, or court of equity jurisdiction, to
enjoin the manufacture, use, display or sale in this State of any counter-
feits or imitations thereof and the court may grant injunctions to restrain
such manufacture, use, display or sale as may be by the court deemed just
and reasonable, and may require the defendants to pay to such owner all
profits derived from and/or all damages suffered by reason of such wrong-
ful manufacture, use, display or sale; and the court may also order that
any such counterfeits or imitations in the possession or under the control
of any defendant in the case be delivered to an officer of the court, or to
the complainant, to be destroyed.

§ 59-189.15. Nothing herein shall adversely affect the enforcement
of common law rights in trademarks or service marks.

§ 59-189.16. In any proceeding before the Commission involving the
right to registration, or the cancellation of registration, in whole or in part,
the final judgment of a court of record involving the right to registration,
or ordering the cancellation of registration, in whole or in part, may be
offered in evidence to the Commission or filed with the Commission by
either party to the registration or cancellation proceeding before the
Commission. The Commission may consider the judgment of the court in
determining what action it should take with respect to the registration
or cancellation involved.

§ 59-189.17. From any final action of the Commission under the pro-
visions of this chapter an appeal shall lie of right to the Supreme Court of
snpeals in accordance with the provisions of § 12-63 of the Code of

irginia.

§ 59-189.18. This Act shall be effective July 1, 1958, but shall not

affect any suit, proceeding or appeal then pending.
2. Chapter 12 of Title 59 of the Code of Virginia consisting of §§ 59-177
through 59-189.1 is repealed, except insofar as, and so long as, such pro-
visions or any of them may be essential to give force and effect to regis-
trations effected thereunder pursuant to the last paragraph of § 59-189.8.