CHAPTER 132
TRADEMARKS, BADGES AND LABELED PRODUCTS
132.02 Duplication or reproduction.
132.031 Certificate; evidence.
132.032 Fraudulent filing; remedies.
132.033 Suit to enjoin use of mark.
132.04 Filing, publication and cancellation of description; fees.
132.05 Sale of receptacle by other than owner prohibited.
132.06 Use of receptacle by other than owner; as to junk dealers.
132.07 Penalty for unlawful use.
132.08 Rights of owner to injunction.
132.11 Record of brands, etc.
132.13 Labeling prison products; penalty.
132.16 Lodge names, insignia; registration; fees; penalty.
132.17 Certain badges; penalty for unauthorized wearing.
132.18 Use of gaseous compounds in containers.
132.19 Use of mark without authority.
132.20 Trafficking in counterfeit marks.
132.25 Common law rights.
132.001
132.001
Definitions. In this chapter, unless the context indicates otherwise:
132.001(1)
(1) “Counterfeit mark" means a spurious mark that is identical to or substantially identical to a genuine mark and that is used or intended to be used on or in connection with goods or services for which the genuine mark is registered and in use. “Counterfeit mark" does not mean any mark or designation used in connection with goods or services if, at the time the goods or services were manufactured or produced, the holder of the right to use the mark authorized the manufacturer or producer to use the mark or designation for the type of goods or services manufactured or produced.
132.001(1m)
(1m) “Department" means the department of financial institutions.
132.001(2)
(2) “Mark" means a label, trademark, trade name, term, design, pattern, model, device, shopmark, drawing, specification, designation or form of advertisement that is adopted or used by any person to designate, make known or distinguish any goods or service as having been made, prepared or provided by that person and that is registered by that person under s.
132.01.
132.001 History
History: 1985 a. 181;
2011 a. 32.
132.01(1)(1)
Any person, firm, partnership, corporation, association, or union of workingmen, which has heretofore adopted or used or shall hereafter adopt or use any mark for the purpose of designating, making known, or distinguishing any goods, wares, merchandise, service, business, or other product of labor or manufacture as having been made, manufactured, produced, prepared, packed, or put on sale by such person, firm, partnership, corporation, association, or union of workingmen, or by a member or members thereof, he, she, or they, if residents of this or any other state of the United States, and such foreign corporations as may have been duly licensed to transact business in the state of Wisconsin, may file an original, a copy, or photographs, or cuts with specifications of the same for record with the department, by leaving 2 such originals, copies, photographs, or cuts with specifications, the same being counterparts, facsimiles, or drawings thereof, with the department and by filing therewith a sworn statement, in such form as may be prescribed by the department, specifying the name of the person, firm, partnership, corporation, association, or union of workingmen, on whose behalf such mark is to be filed, the class of merchandise and a separate description of the goods to which the same has been or is intended to be appropriated, the residence, location, or place of business of such party, that the party, on whose behalf such mark is to be filed, has the right to the use of the same, and that no other person, or persons, firm, partnership, corporation, association, or union of workingmen has such right either in the identical form or in any such near resemblance thereto as may be calculated to deceive, and that the originals, copies, photographs, or cuts, counterparts, facsimiles, or drawings filed therewith are correct.
132.01(2)
(2) Where the several parts of a single unit article of trade or commerce are severally marked to distinguish them by the person, firm, partnership, corporation, association, or union of workingmen having the right to manufacture such single unit under a trade name or brand used by him, her or them, such person, firm, partnership, corporation, association, or union may, in filing under this section the designation of such trade name or brand, attach thereto photographs or cuts with specifications of the several parts of the unit to which it is attached or applied, and thereafter no further filing or registration of any such parts so used shall be necessary to protect the owner or lawful use of the trade name or brand of the unit against the use by others of any of the several parts thereof and any such filing shall be construed to be a single filing, and but one filing fee shall be paid therefor.
132.01(3)
(3) For an original or renewal registration, or the recording of an assignment, there shall be paid to the department the fee of $15.
132.01(4)
(4) Nothing in this section shall be construed as authorizing registration hereunder of names and brands of beverages by the persons, firms or corporations specified in s.
132.11.
132.01(5)
(5) The department may not register any mark which consists of or comprises a replica or simulation of the flag, coat of arms, or insignia of the United States of America, or of any state or municipality or any foreign nation.
132.01(6)(a)(a) A registration recorded or renewed under this section or s.
132.04 or
132.11 before May 1, 1990, is effective for 20 years. A registration may be renewed on or after May 1, 1990, for 10-year periods upon application to the department and payment of the same fee required for a registration. Application for renewal shall be made within 6 months before the expiration of the 20-year registration period or 10-year renewal period specified in this paragraph.
132.01(6)(b)
(b) A registration recorded under this section or s.
132.04 or
132.11 on or after May 1, 1990, is effective for 10 years. A registration may be renewed for 10-year periods upon application to the department and payment of the same fee required for a registration. Application for renewal shall be made within 6 months before the expiration of the 10-year period specified in this paragraph.
132.01(7)
(7) The department shall do all of the following:
132.01(7)(a)
(a) Cancel from his or her register any registration that is not effective under sub.
(6) and also any registration if a final judgment in any court of competent jurisdiction finds that the registration has been abandoned or that the registrant does not have the right to the exclusive use of the registration.
132.01(7)(b)
(b) Cancel from his or her register a registration of a mark under this section upon the request of the registrant of the mark. The department may not charge a fee for canceling a registration under this paragraph.
132.01(8)
(8) Any person, firm, partnership, corporation, association or union who claims a right to the use of subject matter conflicting with any registration by another may bring action against such other in the circuit court for the county in which such other resides, or in the circuit court for Dane County, and in any such action the right to the use and registration of such subject matter shall be determined as between the parties, and registration shall be granted or withheld or canceled by the department in accordance with the final judgment in any such action. Nonuser for a period of at least 2 years continuing to the date of commencement of any action in which abandonment is in issue shall be prima facie evidence of abandonment to the extent of such nonuser.
132.01(9)
(9) Title to any registration hereunder shall pass to any person, firm or corporation succeeding to the registrant's business to which such registration pertains. Written assignments of any such registration from a registrant to such a successor may be filed with and shall be recorded by the department upon payment of the fee specified in sub.
(3). When such assignment is recorded, a new registration shall be entered in the name of the assignee, and on such registration and any subsequent certificates or registration of an assigned registration the department shall show the previous ownership and dates of assignment thereof.
132.01 Annotation
A trademark may not be sold independent of its goodwill. However, a mark or name's owner might retain the mark despite the sale of the business that underlies the mark or name if after sale of a business' assets, the mark or name's owner: 1) demonstrates intent to resume making the substantially same product; 2) retains some portion of the goodwill; and 3) resumes operations within a reasonable time. Koepsell's Olde Popcorn Wagons, Inc. v. Koepsell's Festival Popcorn Wagons, Ltd.
2004 WI App 129,
275 Wis. 2d 397,
685 N.W.2d 397,
03-0773.
132.02
132.02
Duplication or reproduction. 132.02(1)(1)
It shall be unlawful for any person, firm, partnership, corporation, association or union of workingmen, without the consent of the owner of any mark, to remove any such mark attached to merchandise or products of labor, for the purpose of using such merchandise or products of labor as a pattern for the duplicating or reproduction of the same, either in the identical form or in such near resemblance thereto as may be calculated to deceive.
132.02(2)
(2) Nothing herein contained shall be taken to prohibit the using of such merchandise or products of labor as a pattern for the reproduction of the same in individual cases of emergency repairs.
132.02(3)
(3) It shall be unlawful for any other person to make use, with intent to deceive, of that mark or any counterfeit mark which is identical to or substantially identical to that mark, or to utter or display the same orally, or in any printed or written form in the conduct of his or her business or any business transaction without the express consent, license, and authority of the person, firm, partnership, corporation, association, or union so owning the same, and such unauthorized and unlawful use may be prohibited and prevented by injunction or other proper proceeding in a court of competent jurisdiction without recourse to the penal statute providing a punishment for such unlawful use. In case such association or union of workingmen is not incorporated such actions may be commenced and prosecuted by an officer or member of such association or union on behalf of and for the use of such association or union. This subsection does not apply to the purchase of merchandise in good faith from a distributor or the retail sale of that merchandise in good faith.
132.02 History
History: 1985 a. 181;
1991 a. 490.
132.02 Annotation
State action based on an alleged trademark infringement under sub. (3) was not removable to federal court because of federal registration of trademarks. The federal act does not preempt reliance on state trademark laws. Gardner v. Clark Oil & Refining Corp.
383 F. Supp. 151 (1974).
132.02 Annotation
Registration of a mark does not alone confer rights to the claimant. Mil-Mar Shoe Co. v. Shonac Corp.
906 F. Supp. 476 (1995).
132.02 Annotation
21st Century White Collar Crime: Intellectual Property Crimes in the Cyber World. Simon & Jones. Wis. Law. Oct. 2004.
132.03
132.03
Penalty. Every person who knowingly and willfully violates s.
132.01 or
132.02, except those provisions relative to emergency repairs, shall be imprisoned for not more than 6 months or fined not more than $10,000 or both.
132.03 History
History: 1985 a. 181.
132.031
132.031
Certificate; evidence. The department shall deliver to the person, corporation, association or union so filing or causing to be filed any such mark, or any assignment of such subject matter previously registered, or to any person, corporation, association or union renewing a registration, as many duly attested certificates of the registration or renewal of the same as may be desired. Any such certificate shall, in all suits and prosecutions arising out of or depending upon any rights claimed under such mark, be prima facie evidence of the adoption thereof and of the facts prerequisite to registrations thereof as required by s.
132.01.
132.031 History
History: 1985 a. 181;
2011 a. 32.
132.032
132.032
Fraudulent filing; remedies. Any person who, for himself, herself or on behalf of any other person, association or union, procures the filing and recording of any mark by making any false or fraudulent representations or declarations, verbally or in writing, or by any other fraudulent means is liable for any damages sustained as a result of that action, to be recovered by or on behalf of the injured party, and shall be imprisoned for not more than 6 months or fined not more than $10,000 or both.
132.032 History
History: 1985 a. 181.
132.033
132.033
Suit to enjoin use of mark. 132.033(1)(1)
Every person, association or union adopting or using a mark may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeit mark identical to or substantially identical to that mark.
132.033(2)(a)(a) If the person, association or union proves by a preponderance of the evidence that the defendant engaged in a violation of this section which threatens the person, association or union with irreparable injury, a court may grant an injunction to restrain such manufacture, use, display or sale and shall order that all such counterfeit marks in the possession or under the control of any defendant be delivered to the court to be destroyed.
132.033(2)(b)
(b) Except as provided in par.
(c), if the person, association or union proves injury and monetary damages by a preponderance of the evidence the court may award the person, association or union actual damages resulting from such manufacture, use, sale or display or an amount not to exceed 3 times the defendant's profits directly resulting from such wrongful manufacture, use, display or sale.
132.033(2)(c)
(c) If the person, association or union proves by a preponderance of the evidence that the defendant acted willfully, the court shall award the greater of actual damages resulting from the manufacture, use, sale or display or an amount equal to 3 times the defendant's profits directly resulting from the manufacture, use, sale or display.
132.033(2)(d)
(d) If the person, association or union proves a violation by a preponderance of the evidence, the court may award the costs of investigating the violation and of prosecuting the suit, including reasonable investigator and attorney fees.
132.033(3)
(3) In case such association or union is not incorporated, such actions may be commenced and prosecuted by an officer or member of such association or union on behalf of and for the use of such association or union.
132.033(4)
(4) This section does not apply to the purchase of merchandise in good faith from a distributor or the retail sale of that merchandise in good faith.
132.033(5)
(5) Any of the following is a defense to liability under this section:
132.033(5)(a)
(a) The registrant fraudulently obtained the mark registration.
132.033(5)(c)
(c) The mark is used by the registrant, or with the permission of the registrant or a person in privity with the registrant, to misrepresent the source of the goods or services in connection with which the mark is used.
132.033(5)(d)
(d) The use of the name, term or device alleged to be an infringement is a use, except for a use as a trade or service mark, of any of the following:
132.033(5)(d)3.
3. A term or device which is descriptive of, and which is used fairly and in good faith only to describe to users, the party's goods and services or the geographic origin of the party's goods and services.
132.033(5)(f)
(f) Before the person, association or union registered a mark under s.
132.01 the defendant acquired the right under common law or federal law to manufacture, use, display or sell an identical mark.
132.033 History
History: 1985 a. 181.
132.033 Annotation
For a challenged mark to be “identical to or substantially identical to" a registered mark under sub. (1), it must be an exact copy or substantially indistinguishable from the registered mark. Madison Reprographics v. Cook's Reprographics,
203 Wis. 2d 226,
552 N.W.2d 440 (Ct. App. 1996),
95-2596.
132.04
132.04
Filing, publication and cancellation of description; fees. 132.04(1)(1)
Any person who is the owner of cans, tubs, firkins, boxes, bottles, casks, barrels, kegs, cartons, tanks, fountains, vessels or containers with his or her names, brands, designs, trademarks, devices or other marks of ownership stamped, impressed, labeled, blown in or otherwise marked thereon, may file with the department and record with the register of deeds of any county in which the person has his or her principal place of business, a written statement or description verified by affidavit of the owner or his or her agent, of the names, brands, designs, trademarks, devices or other marks of ownership used by him or her, and of the articles upon which they are used, or if the principal place of business is outside the state, then a written statement or verified description may be recorded with the register of deeds of any county. The statement shall be published as a class 3 notice, under ch.
985, in the county, and a copy of the publication, proved as provided in s.
985.12, shall also be filed with the department and recorded with the register of deeds.
132.04(2)
(2) All such written statements or descriptions and all such certificates of publication so filed or recorded shall be subject at all reasonable hours to public inspection. The department and the register of deeds shall deliver to all applicants certified copies of all such written statements or descriptions or names, brands, designs, trademarks, devices, or other marks of ownership and of all certificates of publication filed or recorded with them and such certified copies shall be admissible in evidence in all prosecutions under ss.
132.04 to
132.08, and shall be prima facie evidence that this section has been complied with, and of the title of the owner named therein to the property upon which the name, brand, design, trademark, device, or other marks of ownership of the owner appear as described therein.
132.04(3)
(3) The department shall receive a fee of $15 and the register of deeds shall receive the fee specified in s.
59.43 (2) (ag) or
(e) for each statement and certificate of publication filed or recorded and shall also receive the fee specified in s.
59.43 (2) (b) for each certified copy of such statement and certificate of publication, to be paid for by the person filing, recording or applying for the same.
132.04(4)(a)(a) The department and register of deeds shall cancel a statement or description under this section upon the request of the person named in the records of the department or register of deeds as the owner of marks of ownership described in the statement or description.
132.04(4)(b)
(b) The department and register of deeds may not charge a fee for canceling a statement or description under par.
(a).
132.05
132.05
Sale of receptacle by other than owner prohibited. It is unlawful for any person, without the written consent of the owner or the owner's agent, to keep for sale any can, tub, firkin, box, bottle, cask, barrel, keg, carton, tank, fountain, vessel or container that is marked or distinguished as described in s.
132.04, a description of which is filed, or recorded and published as provided in s.
132.04, or to use or fill any similar substance, commodity or product as originally contained for the sale of the substance, commodity or product any such can, tub, firkin, box, bottle, cask, barrel, keg, carton, tank, fountain, vessel or container or to receive, take, buy, sell, or dispose of or traffic in any such can, tub, firkin, bottle, box, cask, barrel, keg, carton, tank, fountain, vessel or container, or to deface, erase, obliterate, cover up or otherwise remove or conceal any such name, brand, design, trademark, device or other mark thereon, for the purpose of destroying or removing the evidence of the ownership of such article.
