STATE817 - Intellectual Property Law

1 MINNESOTA CONTRIBUTOR: John A. Clifford Merchant & Gould Minneapolis, MN Copyright 1989-2012 International trademark Association, 655 Third Avenue, 10th Floor, New York, NY 10017-5617 USA t: +1 (212) 768-9887 | f: +1 (212) 768-7796 | | State trademark and Unfair Competition Law, provides a singular comprehensive source for facts, commentary and analysis on state trademark and unfair competition law.

2 Topics covered in profiles of each of the 50 states and Puerto Rico include: registration statute, dilution, unfair business practices, deceptive trade practices, trademark counterfeiting, false advertising, corporate name reservation prior to incorporation, trade name registration, fictitious name statutes, unfair competition or passing off, personal name statutes, right of publicity, trade disparagement and franchising or business opportunity statutes. Also included are a comprehensive bibliography and quick reference charts. Last Updated:June 2012 MinnesotaMerchant & Gould *Minneapolis, MNA.

3 State trademark Registration Statute1. Code SectionRegistration of a trademark in Minnesota is governed by All Minnesota trademark statutes are available online at: Model Act ProvisionsThe Minnesota State trademark statute closely follows the Model principal deviations are: (1) the definition of a service mark alsoincludes, without limitation, the marks, names, symbols, titles,designations, slogans, character names, and distinctive features ofradio or other advertising, ; (2) certification and collective marks are also included, , subd. 1 (c) and(d), , subd. 2; (3) a certificate of registration constitutes primafacie proof of the registrant s ownership and exclusive right to use themark on or in connection with the goods or services described in thecertificate, , subd.

4 2; (4) in addition to cancellationbased on prior confusingly similar federal registration, cancellationmay be based on prior confusingly similar Minnesota state registra-tion, , subd. 1(4)(vi); (5) prior use in an area coveringthe state is a defense to cancellation based on prior state or federalregistration, , subd. 1(4)(vi); (6) the cancellation sectioncontains a five-year incontestability provision, , subd. 2;(7) the classification of goods and services is periodically amended to* Merchant & Gould is engaged exclusively in the practice of intellectualproperty law, including patent, trademark , copyright, unfair competition, trade secret,advertising, and computer law.

5 The firm consists of over 100 attorneys and has officeslocated in Minneapolis, Minnesota; Denver, Colorado; Seattle, Washington; Atlanta,Georgia; Washington, ; Madison, Wisconsin; Omaha, Nebraska; New York, NewYork; and Knoxville, Tennessee. Approximately half of the firm s practice involvesintellectual Property litigation in jurisdictions throughout the United States. The otherhalf of the practice involves securing, maintaining, licensing, and counseling relative tointellectual Property matters both nationally and internationally. Attorney John participated in the preparation of this trademark to changes in the federal classification system, ; (8) the language defining an infringing mark reads identicalto or so similar to cause confusion or mistake.

6 Or to deceive, ; (9) the statute contains an anti-dilutionsection at AdministratorMinnesota Secretary of StateBusiness ServicesRetirement Systems of Minnesota Building60 Empire Drive, Suite 100St. Paul, Minnesota 55103 Phone: 651-296-2803 or 1-877-551-6767 Email: 651-297-7067 Website: Procedure for Applying for RegistrationAn application accompanied by the required fee and specimens mustbe filed with the Secretary of State. Trademarks,service marks, certification marks and collective marks are allregistered using the official form provided. Only one class may becovered in one FormsUse of a state form is required.

7 Forms are available at: Number of CopiesOne original application is FeeThe registration fee is $50. , subd. 4., as SpecimensOne actual specimen or facsimile is DrawingNo special drawing is Intent to Use ProvisionThe Minnesota statute does not include a provision for the reservationof a mark based on intent to use. However, a corporate name may bereserved based on intended future use. ClassificationThe classification system in Minnesota is based on and made in the Patent and trademark Office classificationsystem. Multiple class applications are not Search Prior to ApplicationThe Secretary of State s Office will conduct a cursory search prior tothe filing of an application for registration if Search Prior to RegistrationThere is no requirement under the Minnesota statute that the stateconduct a search for similar marks prior to registration.

8 However, theprocedure of the Office is to conduct a cursory search prior toregistration. The search includes all state-registered trademarks,corporate names, and assumed business names, but is limited to analphabetical search based on first word only of the Doing Business RequirementThere is no doing business requirement. Adoption and use of thetrademark are Types of Marks RegistrableTrademarks, service marks, collective marks, and certification marksare registrable. , subd. enumerates certain types of marks which may not beregistered. This section is quite similar to Section 2 of the Model Actand sets forth the same prohibited terms and designs ( , immoral,deceptive, flag-related, personal names, etc.)

9 In addition, the useof Aquatennial, Portorama, and Minnesota Zoological Garden are specifically limited by Use in StateUse in the state is required prior to filing an application Term of RegistrationRegistration is granted for a period of ten years from the date ofregistration. , subd. RenewalAn application for renewal may be filed with the Secretary of State sixmonths prior to the expiration date. , subd. of the renewal date is sent to the registrant at theMN-3 STATE trademark s last known address. , subd. 2. Specimensare not Renewal FormsSeparate application and renewal forms are provided by the Secretaryof State s Office.

10 See the website given above in Section 4a for Other FormsIn addition to application and renewal forms, assignment forms arealso available Post-Registration FormsUse of the provided forms is not Fees After RegistrationAdditional fees required by statute are renewal fee, $25, , subd. 1; fee for recording the conveyance of marks, $15,which includes the issue of a new certificate in the name of theassignee, Use Requirement for RenewalUse is a requirement of renewal. , subd. 1. There is noprovision for excusable Presumptionsa. In Favor of provides that the certificate of registration shall beadmissible in evidence as competent and sufficient proof of theregistration of the mark, in any action or judicial proceedings in anycourt of this state and shall be prima facie evidence of the registrant sownership and exclusive right to use the mark on or in connectionwith the goods or services described in the certificate.