An Act To Prevent Fraudulent Trademark Registration
Maine Legislature, Session 126, LD 0974
Committee: Judiciary
Sponsors: NEWENDYKE, BURNS, DAVIS, DUNPHY, LOCKMAN
Amends: 10 MRSA §1522, 10 MRSA §1528, 10 MRSA §1531

Legislative Document 
No. 974 
H.P. 688 
House of Representatives, March 12, 2013 
An Act To Prevent Fraudulent Trademark Registration 
Reference to the Committee on Judiciary suggested and ordered printed. 
MILLICENT M. MacFARLAND 
Clerk 
Presented by Representative NEWENDYKE of Litchfield. 
Cosponsored by Senator BURNS of Washington and 
Representatives: DAVIS of Sangerville, DUNPHY of Embden, LOCKMAN of Amherst, 
MacDONALD of Old Orchard Beach. 
Be it enacted by the People of the State of Maine as follows: 
Sec. 1.  10 MRSA §1522, sub-§1, as amended by PL 2005, c. 543, Pt. D, §§7 to 9 
and affected by §18, is further amended to read: 
1.  Registrability. A mark shall may not be registered if it:  
A.  Consists of or comprises deceptive matter; 
B.  Consists of or comprises matter which that may falsely suggest a connection with 
persons, living or dead, or institutions; 
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; 
D.  Consists of or comprises the name, signature or portrait of any living individual, 
except with that individual's written consent, which shall must be filed together with 
the application for registration under this section; 
E.  Consists of a mark that, when applied to the goods or services of the applicant, is 
merely descriptive or deceptively misdescriptive of them or, when applied to the 
goods or services of the applicant, is primarily geographically descriptive or 
deceptively misdescriptive of them, except as indications of regional origin may be 
registrable under subsection 3, or is primarily merely a surname, provided except that 
nothing in this paragraph may prevent the registration of a mark used in this State by 
the applicant that has become distinctive of the applicant's goods or services. The 
Secretary of State may accept as evidence that the mark has become distinctive, as 
applied to the applicant's goods or services, proof of continuous use thereof as a mark 
by the applicant in this State or elsewhere for the 5 years next preceding the date of 
the filing of the application for registration; 
F.  Consists of or comprises a mark that so resembles a mark used or registered in this 
State or a 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 applicant, to 
cause confusion or mistake or to deceive, unless the registered owner or holder of the 
other mark executes and files with the Secretary of State proof of authorization of the 
use of a similar mark by the applicant seeking to use the similar mark; 
G.  Is not distinguishable from the real, assumed, fictitious, reserved or registered 
name of a corporation, limited liability company, limited liability partnership, limited 
partnership or limited liability limited partnership, unless the corporation, limited 
liability company, limited liability partnership, limited partnership or limited liability 
limited partnership executes and files with the Secretary of State proof of 
authorization of the use of a mark similar to the real, assumed, fictitious, reserved or 
registered name of a corporation, limited liability company, limited liability 
partnership, limited partnership or limited liability limited partnership by the 
applicant seeking to use the mark; 
H.  Consists of or comprises language that is obscene, contemptuous, profane or 
prejudicial; 
I.  Inappropriately promotes abusive or unlawful activity; or 
J.  Notwithstanding paragraph G, is identical to a corporate, limited liability 
company, limited liability partnership, limited partnership or limited liability limited 
partnership name, unless the corporation, limited liability company, limited liability 
partnership, limited partnership or limited liability limited partnership is the same 
entity as the applicant that is seeking to register the mark and files proof of ownership 
with the Secretary of State. 
The Secretary of State shall make the final determination regarding the availability of a 
mark for filing after performing a brief search on the Internet to determine that the 
information provided on an application under subsection 2 is accurate. 
Sec. 2.  10 MRSA §1522, sub-§2, as amended by PL 2003, c. 673, Pt. WWW, §1 
and affected by §37, is further amended to read: 
2.  Application for registration. Subject to the limitations set forth in this chapter, 
any person who adopts and uses a mark in this State may file in the office of the Secretary 
of State, on a form to be furnished by the Secretary of State, an application for 
registration of that mark setting forth, but not limited to, the following information: 
A.  The name and business address of the person applying for the registration and, if 
a corporation, the state of incorporation; 
B.  The goods or services in connection with which the mark is used and the mode or 
manner in which the mark is used in connection with the goods or services and the 
class in which the goods or services fall; 
C.  The date when, to the best of the applicant's knowledge and belief, the mark was 
first used anywhere and the date when it was first used in this State by the applicant 
or the applicant's predecessor in business; and 
D.  A statement that to the best of the applicant's knowledge and belief, the applicant 
is the owner of the mark and that no other person has the right to use the mark in this 
State as a mark or as a trade name or as a corporate name either in the identical form 
thereof or in such near resemblance thereto as to be likely, when applied to the goods 
or services of the other person, to cause confusion or to cause mistake or to deceive. 
The application must be signed and verified by the applicant or by a member of the firm 
or an officer of the corporation or association applying. 
The execution of an application containing false statements constitutes unsworn 
falsification under Title 17-A, section 453. 
The application must be accompanied by a specimen or facsimile of the mark in 
triplicate. 
The application for registration must be accompanied by a filing fee of $60 for the first 
class and $10 for each additional class, payable to the Treasurer of State. 
Sec. 3.  10 MRSA §1528, as enacted by PL 1979, c. 572, §2, is repealed and the 
following enacted in its place: 
§1528.  Fraudulent registration 
A person who knowingly makes a fraudulent representation in registering a mark 
under this chapter is liable for all damages, including costs and attorney's fees under 
section 1531, subsection 3, to a person injured as a result of the fraudulent filing. The 
execution of an application under section 1522, subsection 2 containing false statements 
constitutes unsworn falsification under Title 17-A, section 453. 
Sec. 4.  10 MRSA §1531, sub-§3, as corrected by RR 1991, c. 2, §33, is amended 
to read: 
3.  Attorney's fees and costs. The Superior Court shall award the prevailing party 
costs and, in exceptional or fraudulent representation cases only, may award the 
prevailing party reasonable attorney's fees. 
Sec. 5.  10 MRSA §1531, sub-§4, as enacted by PL 1979, c. 572, §2, is amended 
to read: 
4.  Criminal prosecution. The enumeration of any right or remedy shall does not 
affect a registrant's right to prosecute under any penal law of this State.  The Attorney 
General shall prosecute a crime under section 1528 and seek all legal remedies, including 
equitable relief, available by law. 
SUMMARY 
This bill prohibits the filing of a trademark if the trademark is in use in the State by 
another and directs the Secretary of State to conduct a brief search on the Internet to 
determine if the information provided on a trademark application is correct.  This bill also 
requires a person making a fraudulent registration of a trademark to pay all damages to a 
person injured by the registration, including court costs and attorney's fees, and directs 
the Attorney General to prosecute the crime as an unsworn falsification and seek all legal 
remedies, including equitable relief, from the court.