Current through Register Vol. 50, No. 9, March 1, 2024
RELATES TO:
KRS
365.571,
365.573,
365.593
NECESSITY, FUNCTION, AND CONFORMITY:
KRS
365.571(1) requires the
Secretary of State to promulgate an administrative regulation establishing
application requirements for registration of trademarks and service marks. This
administrative regulation establishes application requirements for registration
of trademarks and service marks.
Section
1. Requirements for Application for Registration of a Trademark or
Service Mark.
(1) Application for registration
of a trademark or service mark shall be made to the Secretary of State,
pursuant to
KRS
365.571(1), by submitting:
(a) A completed and notarized
Trademark/Service Mark Application;
(b) The registration fee required by
KRS
365.571(6);
(c) The mark specimens required by
KRS
365.571(5); and
(d) A drawing of the
mark.
(2) The application
shall not be accepted for filing unless the requirements of subsection (1) of
this section have been met.
(3) The
application shall be in English.
Section 2. Application that Includes Multiple
Classes. An application may be filed that includes goods or services falling
into multiple classes if:
(1) The goods or
services are specifically identified;
(2) An application fee of ten (10) dollars
for each classification is submitted; and
(3) The application includes the dates of
use, a drawing of the mark, and three (3) specimens for each class.
Section 3. Specimens.
(1) An application for registration shall
comply with
KRS
365.571(5).
(2)
(a) A
trademark specimen shall be:
1. A label, tag,
or container bearing the trademark;
2. A point of sale display associated with
the goods; or
3. If the nature of
the goods or the nature of the mark makes the use of the mark on goods
impractical, other documents related to the goods or the sale of the
goods.
(b) A photocopy or
photograph of a specimen established in paragraph (a) of this subsection may be
submitted.
(3) Service
mark specimens shall show the mark as actually used in the sale or advertising
of the services recited in the application.
(a) A service mark specimen shall be:
1. A newspaper or magazine advertisement,
other form of advertisement, brochure, or restaurant menu; or
2. Business documents such as letterhead,
business cards, or invoices, if the document shows the mark and refers to the
relevant services.
(b)
Printer's proofs for advertisements or words typed, printed, or written on
plain paper shall not be acceptable as specimens of the
mark.
Section
4. Period of Response.
(1)
Within thirty (30) days of notice of the secretary's determination that an
applicant is not entitled to registration, an applicant shall submit:
(a) A reply to the secretary's determination;
or
(b) An amended application
conforming to the secretary's determination.
(2) After review of an applicant's reply or
amended application, the secretary shall:
(a)
Make a final determination on the application; or
(b) Allow the applicant to submit another
amended application.
Section 5. Classifications.
(1) The system of classification of goods and
services established in
30
KAR 3:030 shall apply to trademark and service mark
applications filed with the Secretary of State and to registrations issued on
the basis of the applications.
(2)
Renewals filed on registrations issued under a prior classification system
shall be processed on the basis of the classification system in effect at the
time the renewal application is filed.
Section 6. Incorporation by Reference.
(1) The "Trademark/Service Mark Application",
December 2021, is incorporated by reference.
(2) This material may be inspected, copied,
or obtained, subject to applicable copyright law, at the Secretary of State's
Office, 700 Capital Avenue, Suite 152, Frankfort, Kentucky, Monday through
Friday, 8 a.m. to 4:30 p.m. or may be obtained at www.sos.ky.gov.
STATUTORY AUTHORITY:
KRS
365.571(1),
365.573(5)
