§ 24-2-1-4.5 — Examination; amended electronic application; component of mark not eligible for registration; reexamination; concurrent applications; civil action

Indiana § 24-2-1-4.5

• Jurisdiction: Indiana
• Art. 2: TRADEMARKS, TRADE NAMES, AND TRADE
• Ch. 1: Trademark Act

Text

5. (a) If a person files an electronic application
for registration of a mark and pays the appropriate application fee
described in section 15.3 of this chapter, the secretary may examine the
electronic application for conformity with this chapter.
(b) An applicant must provide additional information requested by
the secretary, including a description of a design mark.
(c) An applicant may make or authorize the secretary to make
reasonable amendments to an electronic application that are requested
by the secretary or are considered by the applicant to be advisable to
respond to a rejection or an objection.
(d) The secretary may require an applicant to submit a new
electronic application if the secretary determines amendments to the
electronic application are necessary and the applicant does not make or
authorize the secretary to make amendments under subsection (c).
(e) The secretary may require an applicant to disclaim a component
of a mark that is not eligible for registration, and an applicant may
voluntarily disclaim a component of a mark for which registration is
sought. A disclaimer does not prejudice or affect the applicant's rights:
(1) existing at the time of application or arising after application
is made in the disclaimed matter; or
(2) on another application if the disclaimed matter is or becomes
distinctive of the applicant's goods or services.
(f) If an applicant is not entitled to registration of a mark under this
chapter, the secretary shall advise the applicant of the reason the
applicant is not entitled to registration of the mark. The applicant has
a reasonable time specified by the secretary:
(1) to reply to the reason the applicant is not entitled to
registration; or
(2) to amend the electronic application.
If the applicant replies to the secretary or amends the electronic
application within the reasonable time, the secretary shall reexamine
the electronic application.
(g) The procedure under subsection (f) may be repeated until:
(1) the secretary finally refuses registration of the mark; or
(2) the applicant fails to reply or amend the electronic application
within the time specified by the secretary, at which time the
secretary shall consider the application to have been withdrawn.
(h) If the secretary issues a final order refusing the registration of a
mark, an applicant may bring a civil action in a court with jurisdiction
to compel the registration of the mark. A court may order the secretary
to register a mark, without costs to the secretary, on proof that all
statements in the electronic application are true and the mark is entitled
to registration.
(i) If two (2) or more applications are concurrently processed by the
secretary for registration of the same or confusingly similar marks for
the same or related goods or services, the secretary shall grant priority
to the applications in order of filing. If a previously filed application is
granted a registration, the other application or applications must be
rejected. A rejected applicant may bring an action for cancellation of
the previously registered mark based upon previous or superior rights
to the mark under section 10 of this chapter.

Legislative History

As added by P.L.135-2006, SEC.5. Amended by P.L.128-2017, SEC.6; P.L.59-2018, SEC.2.