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

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

Sec. 4.5. (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.

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