Senate Bill No. 45–Committee on Judiciary

 

Prefiled January 24, 2001

 

(On Behalf of Encouraging Businesses to Organize and
Conduct Business in Nevada (SCR 19))

 

____________

 

Referred to Committee on Commerce and Labor

 

SUMMARY—Provides remedy for dilution of marks. (BDR 52‑256)

 

FISCAL NOTE:            Effect on Local Government: No.

                                    Effect on the State: No.

 

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EXPLANATION – Matter in bolded italics is new; matter between brackets [omitted material] is material to be omitted.

Green numbers along left margin indicate location on the printed bill (e.g., 5-15 indicates page 5, line 15).

 

AN ACT relating to marks; providing remedies to the owner of a mark for the dilution of the mark; and providing other matters properly relating thereto.

 

THE PEOPLE OF THE STATE OF NEVADA, REPRESENTED IN

SENATE AND ASSEMBLY, DO ENACT AS FOLLOWS:

 

1-1    Section 1.  Chapter 600 of NRS is hereby amended by adding thereto a

1-2  new section to read as follows:

1-3    1.  Except as otherwise provided in subsection 4, the owner of a mark

1-4  that is famous in this state may bring an action to enjoin commercial use

1-5  of the mark by a person if such use:

1-6    (a) Begins after the mark has become famous; and

1-7    (b) Causes dilution of the mark.

1-8    2.  In determining whether a mark is famous in this state, the court

1-9  shall consider, without limitation, the following factors:

1-10    (a) The degree of inherent or acquired distinctiveness of the mark in

1-11  this state.

1-12    (b) The duration and extent of use of the mark in connection with the

1-13  goods and services with which the mark is used.

1-14    (c) The duration and extent of advertisement and promotion of the

1-15  mark in this state.

1-16    (d) The geographical extent of the trading area in which the mark is

1-17  used.

1-18    (e) The channels of trade for the goods or services with which the

1-19  mark is used.


2-1    (f) The degree of recognition of the mark in the trading areas and

2-2  channels of trade in this state used by the owner of the mark and the

2-3  person against whom the injunction is sought.

2-4    (g) The nature and extent of use of the same or similar mark by other

2-5  persons.

2-6    (h) Whether the mark is registered in this state or registered in the

2-7  United States Patent and Trademark Office pursuant to federal law.

2-8    3.  Except as otherwise provided in this subsection, the owner of a

2-9  mark that is famous may obtain only injunctive relief in an action

2-10  brought pursuant to this section. The owner of a mark that is famous is

2-11  entitled to the remedies provided in NRS 600.430 if the person using the

2-12  mark willfully intended to cause dilution of the mark or willfully

2-13  intended to trade on the reputation of the owner of the mark.

2-14    4.  The owner of a mark that is famous may not bring an action

2-15  pursuant to this section for the fair use of the mark by another person in

2-16  comparative commercial advertising or promotion to identify the

2-17  competing goods or services of the owner of the mark.

2-18    5.  As used in this section:

2-19    (a) “Commercial use” means use of a mark primarily for profit. The

2-20  term does not include use of a mark for research, criticism, news

2-21  commentary, news reporting, teaching or any similar use that is not

2-22  primarily for profit.

2-23    (b) “Dilution” means a lessening in the capacity of a mark that is

2-24  famous to identify and distinguish goods or services, regardless of the

2-25  presence or absence of:

2-26      (1) Competition between the owner of the mark and other persons;

2-27  or

2-28      (2) Likelihood of confusion, mistake or deception as to the source

2-29  of origin of goods or services.

2-30    Sec. 2.  NRS 600.240 is hereby amended to read as follows:

2-31    600.240  As used in NRS 600.240 to 600.450, inclusive, and section 1

2-32  of this act, unless the context otherwise requires, the words and terms

2-33  defined in NRS 600.250 to 600.320, inclusive, have the meanings ascribed

2-34  to them in those sections.

 

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