Illinois Compiled Statutes
Chapter 765 - PROPERTY
765 ILCS 1036/ - Trademark Registration and Protection Act.

(765 ILCS 1036/1)
Sec. 1.
Short title.
This Act may be cited as the Trademark Registration and Protection Act.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/5)
Sec. 5.
Definitions.
In this Act:
(a) A mark shall be deemed to be "abandoned" when either of
the following occurs:
(b) "Applicant" means the person filing an application for
registration of a mark under this Act, and the legal
representatives, successors, or assigns of that
person.
(c) "Dilution" means the lessening of the
capacity of a famous mark to identify and distinguish goods or
services, regardless of the presence or absence of (1) competition
between the
owner of the famous mark and other
parties, or (2) likelihood of confusion, mistake, or
deception.
(d) "Mark" includes any trademark or
servicemark entitled to registration under this Act whether
registered or not.
(e) "Person" and any other word or term used to designate the
applicant or other party entitled to benefit or privilege or
rendered liable under the provisions of this Act means a natural
person as well as a firm, partnership, corporation, union,
association, or other organization capable of suing and being sued
in a court of law.
(f) "Registrant" means the person to whom the
registration of a mark is issued under this Act, and the legal
representatives, successors, or assigns of that person.
(g) "Secretary" means the Secretary of State
of Illinois or the designee of the Secretary charged with the
administration of this Act.
(h) "Servicemark" means any word, name,
symbol, or device or any combination thereof used by a person, to
identify and distinguish the services of one person, including a
unique service, from the services of others, and to indicate the
source of the services, even if that source is
unknown. Titles, character names used by a person, and other
distinctive features of radio or television programs may be
registered as servicemarks notwithstanding that they, or the
programs, may advertise the goods of the sponsor.
(i) "Trademark" means any word, name, symbol,
or device or any combination thereof used by a person to identify
and distinguish the goods of the person, including a unique
product, from those manufactured and sold by others, and to
indicate the source of the goods, even if that source is unknown.
(j) "Tradename" means any name used by a person to identify
a business or vocation of the person.
(k) "Use" means the bona fide use of a mark in the ordinary
course of trade, and not made merely to reserve a right in a mark.
For the purposes of this Act, a mark shall be deemed to be in use
(1) on goods when it is placed in any manner on the goods or their
containers or the displays associated therewith or on the tags or
labels affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with the
goods or their sale, and the goods are sold or transported in
commerce in this State, and (2) on services when it is used or
displayed in the sale or advertising of services and the services
are rendered in this State.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/10)
Sec. 10. Registrability. A mark by which the goods or services of an applicant for
registration may be distinguished from the goods or services of
others shall not be registered if it:
(a) consists of or comprises immoral, deceptive, or
scandalous matter; or
(b) consists of or comprises matter that may disparage
or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them into
contempt, or disrepute; or
(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;
or
(d) consists of or comprises the name, signature or
portrait identifying a particular living individual, except by the
individual's written consent; or
(e) consists of a mark which: (1) when used on or in
connection with the goods or services of the applicant, is merely
descriptive or deceptively misdescriptive of them, or (2) when used
on or in connection with the goods or services of the applicant is
primarily geographically descriptive or deceptively misdescriptive
of them, or (3) is primarily merely a surname; however,
nothing in this subsection (e) shall prevent the registration
of a mark used by the applicant which has become distinctive of the
applicant's goods or services. The Secretary may accept as
evidence that the mark has become distinctive, as used on or in
connection with the applicant's goods or services, proof of
continuous use thereof as a mark by the applicant in this State for
the 5 years before the date on which the claim of
distinctiveness is made; or
(f) consists of or comprises a mark which so resembles
a mark registered in this State of a mark of tradename previously
used by another and not abandoned, as to be likely, when used on or
in connection with the goods or services of the applicant, to cause
confusion or mistake or to deceive; or
(g) without the consent of the United States Olympic Committee:
 
(765 ILCS 1036/15)
Sec. 15.
Application for registration.
Subject to the limitations set forth in this Act, any person
who uses a mark may file in the office of the Secretary, on a form
to be furnished by the Secretary, 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, or if a partnership, the state in which the
partnership is organized and name of one of the general partners,
or if a limited liability company, the state in which the company
is organized;
(b) an appointment of the Secretary of State as agent
for service of process in any action relating only to the
registration which may be issued, if the applicant be, or shall
become a non-resident individual, or foreign partnership, limited
liability company, association, or corporation not licensed to do
business in this State, or cannot be found in this State;
(c) the goods or services on or in connection with
which the mark is used and the mode or manner in which the mark is
used on or in connection with such goods or services and class in
which such goods or services fall;
(d) the date when the mark was first used anywhere and
the date when it was first used in this State by the applicant or
a predecessor in interest; and
(e) a statement that the applicant is the owner of the
mark, that the mark is in use, and that to the knowledge of the
person verifying the application, no other person has registered
the mark, either federally or in this State, or has the right to
use the mark either in the identical form thereof or in such near
resemblance thereto as to be likely, when applied to the goods or
services of such other person, to cause confusion, or to cause
mistake, or to deceive.
The Secretary may also require a statement as to whether
an application to register the mark, or portions or a composite
thereof, has been filed by the applicant or a predecessor in
interest in the United States Patent and Trademark Office; and, if
so, the applicant shall provide full particulars with respect
thereto including the filing date and serial number of each
application, the status thereof and, if any application was finally
refused registration or has otherwise not resulted in a
registration, the reasons therefor.
The Secretary may also require that a drawing of the
mark, complying with such requirements as the Secretary may
specify, accompany the application.
The application shall be signed and verified (by oath,
affirmation, or declaration subject to perjury laws) by the
applicant or by a member of the firm or an officer of the
corporation or association applying.
The application shall be accompanied by 3 specimens
showing the mark as actually used.
The application shall be accompanied by the application fee of
$10 payable to the Secretary of State.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/20)
Sec. 20.
Filing of application.
(a) Upon the filing of an application for registration
and payment of the application fee, the Secretary may cause the
application to be examined for conformity with this Act.
(b) The applicant shall provide any additional pertinent
information requested by the Secretary including a description of
a design mark and may make, or authorize the Secretary to make,
such amendments to the application as may be reasonably requested
by the Secretary or deemed by applicant to be advisable to respond
to any rejection or objection.
(c) The Secretary may require the applicant to disclaim
an unregisterable component of a mark otherwise registerable, and
an applicant may voluntarily disclaim a component of a mark sought
to be registered. No disclaimer shall prejudice or affect the
applicant's or registrant's rights then existing or thereafter
arising in the disclaimed matter, or the applicant's or
registrant's rights of registration on another application if the
disclaimed matter be or shall have become distinctive of the
applicant's or registrant's goods or services.
(d) Amendments may be made by the Secretary upon the
application submitted by the applicant upon applicant's agreement;
or a fresh application may be required to be submitted.
(e) If the applicant is found not to be entitled to
registration, the Secretary shall advise the applicant thereof and
of the reasons therefor. The applicant shall have a reasonable
period of time specified by the Secretary in which to reply or to
amend the application, in which event the application shall then be
reexamined. This procedure may be repeated until (1) the Secretary
finally refuses registration of the mark or (2) the applicant fails
to reply or amend within the specified period, whereupon the
application shall be deemed to have been abandoned.
(f) All final decisions of the Secretary of State
under this Act shall be deemed to be administrative decisions and
subject to judicial review under the provisions of the
Administrative Review Law
and the rules adopted pursuant thereto.
(g) In the instance of applications concurrently being
processed by the Secretary seeking 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 prior-filed application is granted a
registration, the other application or applications shall then be
rejected. Any rejected applicant may bring an action for
cancellation of the registration upon grounds of prior or superior
rights to the mark, in accordance with the provisions of Section 45
of this Act.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/25)
Sec. 25.
Certificate of registration.
Upon compliance by the applicant with the requirements of this
Act, the Secretary shall cause a certificate of registration to be
issued and delivered to the applicant. The certificate of
registration shall be issued under the signature of the Secretary
and the Seal of the State, and it shall show the name and business
address and, if a corporation, the state of incorporation, or if a
partnership, the state in which the partnership is organized and
the name of one of the general partners, or if a limited liability
company, the state in which the company is organized, of the person
claiming ownership of the mark, the date claimed for the first use
of the mark anywhere and the date claimed for the first use of the
mark in this State, the class of goods or services and a
description of the goods or services on or in connection with which
the mark is used, a reproduction of the mark, the registration date
and the term of the registration.
Any certificate of registration issued by the Secretary under
this Act or a copy thereof duly certified by the
Secretary shall be admissible in evidence as competent and
sufficient proof of the registration of a mark in any actions or
judicial proceedings in any court of this State.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/30)
Sec. 30.
Duration and renewal.
A registration of a mark under this Act shall be effective for a term
of 5 years from the date of registration and, upon application
filed within 60 days before the expiration of the term, on a
form furnished by the Secretary, the registration may be
renewed for a like term from the end of the expiring term. A
renewal fee of $5, payable to the Secretary, shall accompany the
application for renewal of the registration.
A registration may be renewed for successive periods of 5
years in like manner.
Any registration in force on the effective date of this Act
shall continue in full force and effect for the
unexpired term of the registration and may be renewed by filing an application
for renewal with the Secretary complying with the requirements of
the Secretary and paying the renewal fee
within 60 days before the expiration of the registration.
All applications for renewal under this Act, whether of
registrations made under this Act or of registrations effected
under any prior Act, shall include a verified statement that the
mark has been and is still in use and include 3 specimens showing
actual use of the mark on or in connection with the goods or
services.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/35)
Sec. 35.

Assignments, changes of name or address and other
instruments.
(a) Any mark and its registration under this Act shall be
assignable with the goodwill of the business in which the mark
is used, or with that part of the goodwill of the business
connected with the use of and symbolized by the mark. Assignment
shall be on a form furnished by the Secretary and may be recorded
with the Secretary upon the payment of a recording fee of $5
payable to the Secretary who, upon recording of the assignment,
shall issue in the name of the assignee a new certificate for the
remainder of the term of the registration or of the last renewal
thereof. An assignment of any registration under this Act shall be
void as against any subsequent purchaser for valuable consideration
without notice, unless it is recorded with the Secretary within
3 months after the date thereof or prior to such subsequent
purchase.
(b) Any registrant or applicant effecting a change of the name
or address of the person to whom the mark was issued or for whom an
application was filed may record, on a form furnished by the
Secretary, a certificate of change of name or address of the
registrant or applicant with the Secretary upon the payment of a
recording fee of $5. The Secretary may issue in the name of the
assignee a certificate of registration of an assigned application.
The Secretary may issue in the name of the assignee, a new
certificate of registration for the remainder of the term of the
registration or last renewal thereof.
(c) Other instruments which relate to a mark registered or
application pending pursuant to this Act, such as, by way of
example, licenses, security interests, or mortgages, may be recorded
in the discretion of the Secretary, provided that instrument
is in writing and duly executed.
(d) Acknowledgement shall be prima facie evidence of the
execution of an assignment or other instrument and when recorded by
the Secretary, the record shall be prima facie evidence of
execution.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/40)
Sec. 40.
Records.
The Secretary shall keep for public examination a record of
all marks registered or renewed under this Act, as well as a record
of all documents recorded pursuant to Section 35.
The Secretary will provide a certified copy of any single
registration, or portion thereof, upon receiving a request in
writing for the copy and payment of a $5 fee, payable to the
Secretary.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/45)
Sec. 45.
Cancellation.
The Secretary shall cancel from the register, in
whole or in part:
The clerk of the court ordering the cancellation or making any
of the findings specified in subdivision (c)(3) shall, when
such judgment becomes final, transmit a certified copy of the judgment
to the Secretary of State.

(Source: P.A. 90-231, eff. 1-1-98; 91-357, eff. 7-29-99.)
 
(765 ILCS 1036/50)
Sec. 50.
Classification.
The Secretary shall by rule establish a classification
of goods and services for convenience of administration of this
Act, but not to limit or extend the applicant's or registrant's
rights, and a single application for registration of a mark may
include any or all goods upon which, or services with which, the
mark is actually being used and which are comprised in a single
class. In no event shall a single application include goods or
services upon which the mark is being used and which fall within
different classes. To the extent practical, the classification of
goods and services should conform to the classification adopted by
the United States Patent and Trademark Office.


1 Chemicals

2 Paints

3 Cosmetics and cleaning preparations

4 Lubricants and fuels

5 Pharmaceuticals

6 Metal goods

7 Machinery

8 Hand tools

9 Electrical and scientific apparatus

10 Medical apparatus

11 Environmental control apparatus

12 Vehicles

13 Firearms

14 Jewelry

15 Musical Instruments

16 Paper goods and printed matter

17 Rubber goods

18 Leather goods

19 Non-metallic building materials

20 Furniture and articles not otherwise classified

21 Housewares and glass

22 Cordage and fibers

23 Yarns and threads

24 Fabrics

25 Clothing

26 Fancy goods

27 Floor coverings

28 Toys and sporting goods

29 Meats and processed foods

30 Staple foods

31 Natural agricultural products

32 Light beverages

33 Wine and spirits

34 Smoker's articles

35 Advertising and business

36 Insurance and financial

37 Building construction and repair

38 Telecommunications

39 Transportation and storage

40 Treatment of materials

41 Education and entertainment

42 Scientific, technological, or legal

43 Restaurants, hotels, motels, and boarding

44 Medical, veterinary, beauty care, and forestry

45 Personal, social, and security

(Source: P.A. 93-59, eff. 7-1-03.)
 
(765 ILCS 1036/55)
Sec. 55.
Fraudulent registration.
Any person who shall for himself or herself, or on behalf of
any other person, procure the filing or registration of any mark in
the office of the Secretary under this Act, by
knowingly making any false or fraudulent representation or
declaration, orally or in writing, or by any other fraudulent
means, shall be liable to pay all damages sustained in consequence
of the filing or registration, to be recovered by or on behalf of
the party injured thereby in any court of competent jurisdiction.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/60)
Sec. 60.
Infringement.
Subject to the provisions of Section 80 of this Act, a person shall be liable
in a civil action by the registrant for any and all of the remedies provided in
Section 70 of this Act if the person:
(a) uses, without the consent of the registrant, any
reproduction, counterfeit, copy, or colorable imitation of a mark
registered under this Act in connection with the sale,
distribution, offering for sale, or advertising of any goods or
services on or in connection with which such use is likely to cause
confusion or mistake or to deceive as to the source of origin of
such goods or services; or
(b) reproduces, counterfeits, copies, or colorably imitates
any such mark and applies such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles, or advertisements intended to be used upon or in
connection with the sale or other distribution in this State of
such goods or services.
The registrant shall not be entitled to
recover profits or damages under this subdivision (b) unless the acts have been
committed with knowledge that such imitation is intended to be used to cause
confusion, or to cause mistake, or to deceive.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/62)
Sec. 62. Infringement of Olympic marks. Notwithstanding any other Section of this Act:
(a) The United States Olympic Committee has the exclusive right to use, and license for use, in this State any of the following:
(b) The United States Olympic Committee, Chicago 2016 as designee of the United States Olympic Committee, or both, may file a civil action in the Circuit Court of Cook County, or any other circuit court in the State of Illinois permitted by law, against any person for the remedies provided under Section 70 of this Act if the person, without the consent of the United States Olympic Committee or Chicago 2016, uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition:
(c) If any provision of this Section or the application thereof to any person or circumstance is held invalid, the invalidity shall not affect other provisions or applications of this Section which can be given effect without the invalid provision, and to this end the provisions of this Section are severable.
(d) For the purposes of this Section, references to Chicago 2016 include the Illinois not-for-profit corporation of that name and its successor organizing committee for the 2016 Olympic and Paralympic Games.
(e) Nothing in this Section is intended to limit any rights or remedies provided under the Counterfeit Trademark Act.

(Source: P.A. 96-7, eff. 4-3-09.)
 
(765 ILCS 1036/65)
Sec. 65.
Injury to business reputation; dilution.
(a) The owner of a mark which is famous in this State shall be
entitled, subject to the principles of equity
and upon such terms as the court deems reasonable,
to an injunction
against another person's commercial use of a mark
or tradename,
if the use begins after the
mark has become famous and causes dilution of the distinctive quality of
the mark, and to obtain such other relief as is provided in
this Section. In determining whether a mark is distinctive and famous, a court
may consider factors such as, but not limited to:
In an action brought under this Section, the owner of a famous mark
shall be entitled only to injunctive relief in this
State, unless the person against whom injunctive relief is sought
willfully intended to trade on the owner's
reputation or to cause dilution of the famous mark. If such
willful intent is proven, the owner shall also be entitled to the
remedies set forth in this Act, subject to the discretion of
the court and the principles of equity.
(b) The following are not actionable under this Section:
(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/70)
Sec. 70.
Remedies.
Any owner of a mark registered under this Act may proceed by
suit to enjoin the manufacture, use, display or sale of any
counterfeits or imitations thereof and any court of competent
jurisdiction may grant injunctions to restrain such manufacture,
use, display, or sale as may be by the court deemed just and
reasonable, and may require the defendants to pay to such owner all
profits derived from or all damages suffered by reason of such
wrongful manufacture, use, display, or sale or both; and the court may also
order that any such counterfeits or imitations in the possession or
under the control of any defendant in the case be delivered to an
officer of the court, or to the complainant, to be destroyed. The
court in its discretion, may enter judgment for an amount not to
exceed 3 times the profits and damages or reasonable
attorneys' fees of the prevailing party, or both, in those cases in which the
court finds the other party committed the wrongful acts with
knowledge or in bad faith or otherwise as according to the
circumstances of the case.
The enumeration of any right or remedy in this Act shall not affect
a registrant's right to prosecute under any penal law of this
State.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/75)
Sec. 75.

Forum for actions regarding registration; service
on out of state registrants.
(a) Actions to require cancellation of a mark registered
under this Act shall be brought in the circuit court. In an
action for cancellation, the Secretary shall not be made a party to
the proceeding but shall be notified of the filing of the complaint
by the clerk of the court in which it is filed and shall be given
the right to intervene in the action.
(b) Any action under this Section may be brought by any person
who believes he is or will be damaged by the registration
complained of. Such action shall be brought in the circuit court
for the county in which the registrant resides or has a regular and
established place of business, or has appointed an agent to receive
service, or if the registrant is a non-resident individual, or
foreign partnership, limited liability company, association or a
corporation not licensed to do business in this State, or cannot be
found in this State, in the Circuit Court that sits in the City of
Springfield and the County of Sangamon.
(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/80)
Sec. 80.
Common law rights.
Nothing in this Act shall adversely affect the rights or the
enforcement of rights in marks acquired in good faith at any time
at common law.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/85)
Sec. 85.
Severability.
The provisions of the Act are severable under
Section 1.31 of the Statute on Statutes.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/90)
Sec. 90.

Time of taking effect; conflicts with prior Acts;
intent of Act. This Act shall not affect any application, suit, proceeding, or
appeal then pending on its effective date. Except in the case of an
application, suit, proceeding, or appeal pending on its effective date,
this Act shall control in any conflict between the provisions of this Act and
the provisions of any other Act relating to marks or any other Act that
conflicts with this Act. Any application, suit, proceeding, or appeal pending
at the time this Act takes effect shall continue under the law under which that
application, suit, or appeal was initiated until final determination.
The intent of this Act is to provide a system of State
trademark registration and protection substantially consistent with
the federal system of trademark registration and protection under
the Trademark Act of 1946, as amended. To that end, the
construction given the federal Act shall be examined as persuasive
authority for interpreting and construing this Act.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/905)
Sec. 905.
Repeal.
The Trademark Registration Act is repealed.

(Source: P.A. 90-231, eff. 1-1-98.)
 
(765 ILCS 1036/910)
Sec. 910.
(Amendatory provisions; text omitted).

(Source: P.A. 90-231, eff. 1-1-98; text omitted.)
 
(765 ILCS 1036/999)
Sec. 999.
Effective date.
This Act takes effect January 1, 1998.

(Source: P.A. 90-231, eff. 1-1-98.)

Structure Illinois Compiled Statutes