Indiana Intellectual Property Law News
In addition to protection under federal trademark law, trademarks can be protected under the state law of Indiana.
What does the Indiana Trademark Act protect?
The Indiana Trademark Act (I.C. §24-2) protects words, phrases, symbols or designs, or any combinations thereof when they are used to distinguish the source of the goods or services rendered by one party from the goods or services of another party. Marks are checked against other marks registered in Indiana, but not against corporate, fictitious, or assumed names. It is the duty of the applicant to perform these searches.
How do trademark rights originate?
Trademark rights arise from actual use of the mark in commerce. A mark cannot be registered until it has been used in Indiana. Indiana defines a mark being “used” when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto, or when it is used to identify the services of one person and distinguish them from the services of others, and such goods or services are sold, otherwise distributed, or rendered in this state.
Are trade names registered with the Indiana Secretary of State?
Trade names are not registered with the Indiana Secretary of State; they are registered in the respective County Recorder’s office in the county where the business office of the company seeking filing is located.
Who may file an application for a trademark?
The application must be filed in the name of the owner of the mark, which is usually an individual, corporation or partnership. Trademark protection may be sought by an individual, corporation, association, partnership, or any other entity. Forms are available from the Indiana Secretary of State or from an Indiana intellectual property lawyer.
What is the trademark registration fee for a registration with the State of Indiana?
There is a $10.00 filing fee for each registered mark. The fee is payable by check or money order to the Secretary of State of Indiana. This fee is non-refundable.
What are the required specimens?
Three specimens are required in order to register a mark. The specimen must be an actual sample of how the mark is currently being used in commerce. The specimens may be identical or they may be examples of three different uses showing the same mark. If the mark is used on goods, examples of acceptable specimens are tags or labels which are attached to the goods, displays associated with the goods, or photographs of the goods showing the use of the mark on the goods themselves. If the mark is used for services, the specimens must show the mark and include some clear reference to the type of services rendered under the mark. Examples of acceptable specimens are signs, brochures about the services, advertisements, business cards or stationery, and photographs which show the mark as it is used either in the rendering or advertising of the services.
What does it mean to disclaim something?
An entity cannot claim exclusive ownership of certain words, phrases, or pictorial features. This information contained in the mark must be disclaimed.
What should be disclaimed on an application for registration?
Any words, phrases, and pictorial features that are merely descriptive of the goods or services are primarily geographic should be disclaimed. The names of cities, states, any reference to a person living or dead and designation of corporate status should also be disclaimed (e.g., Inc., company, Indiana).
How long is a trademark registration valid?
A registration is valid for five years, and the Indiana Secretary of State will notify the registrant at the last known address six months prior to the renewal date.
Who is the trademark contact person at the Indiana Secretary of State’s Office?
You may call (317) 232-6540 or write:
Indiana Secretary of State
Trademarks Deputy
302 W. Washington St., Rm E-018
What do I do if someone is using my mark?
You should seek advice from an Indiana attorney specializing in trademark or intellectual property law. A general rule of thumb is first in use, first in right.
What are assignments?
An assignment transfers the ownership of a mark along with all the goodwill associated with the mark to a new owner. Assignments must be recorded with the Indiana Secretary of State. Once the assignment has been filed, a new registration is valid until the end of the five-year term, and it is renewable in the same way the original would have been.
Do press releases count as usage?
No, these are usually not considered bona fide uses of the mark. No sale of goods or services has been made.
Is there an intent-to-use provision?
Unlike federal trademark law, Indiana law does not have a provision for reservation of marks with the intent to use the mark in the future.
Can I use the website to search for trademarks?
A search for trademarks registered in Indiana is available at www.in.gov/apps/sos/trademarks/.
If you have further questions, you should contact an Indiana trademark lawyer.
The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an Indiana intellectual property attorney.