Registration of Trademarks and Service Marks.

Ala. Code tit. 8, ch. 12, art. 2

in effect

Ala. Code § 8-12-6 Definitions.

8-12-6. Definitions. As used in this article, the following terms shall have the following meanings, respectively, unless the context clearly indicates otherwise: (1) APPLICANT. The person filing an application for registration of a mark under this article and the person’s legal representative, successors, or assigns. (2) DILUTION. Dilution by blurring or dilution by tarnishment, regardless of the presence or absence of: a. Competition between the owner of the famous mark and other parties, or b. Actual or likely confusion, mistake, or deception, or c. Actual economic injury. (3) DILUTION BY BLURRING. The association arising from the similarity between a mark and a famous mark that impairs the distinctiveness of the famous mark. (4) DILUTION BY TARNISHMENT. The association arising from the similarity between a mark and a famous mark that harms the reputation of the famous mark. (5) MARK. Any trade name, trademark, or service mark entitled to registration under this article whether registered or not. (6) PERSON. Any individual, firm, partnership, corporation, association, union, or other organization. (7) REGISTRANT. The person to whom the registration of a mark under this article is issued and the person’s legal representative, successors, or assigns. (8) SERVICE MARK. Any word, name, symbol, character, or device, or any combination thereof and the distinctive feature of radio, television, or other advertising adopted and used by a person to identify services rendered or offered by the person and to distinguish them from the services of others. (9) TRADEMARK. Any word, name, symbol, character, design, drawing, or device, or any combination thereof adopted and used by a person to identify goods made or sold by the person and to distinguish them from goods made or sold by others. (10) TRADE NAME. A word, name, symbol, character, design, drawing, device, or any combination thereof adopted and used by a person to identify the person’s business (including vocation, occupation, or profession), and distinguish it from the business of others. (11) USED. A mark shall be deemed to be used in this state: a. On goods or their containers or the displays associated therewith or on the tags or labels affixed thereto when such goods are sold or otherwise distributed in the state; b. In connection with services when it is used or displayed in the sale or advertising of services and the services are rendered in this state; and c. In connection with a business when it identifies the business to persons in this state. (Acts 1980, No. 80-166, p. 236, §1; Acts 1988, 1st Ex. Sess., No. 88-924, p. 526, §1; Act 2010-747, p. 1886, §1.)

Ala. Code § 8-12-7 Registrability.

8-12-7. Registrability. (a) A mark by which the goods, services, or business of any applicant for registration may be distinguished from the goods, services, or business of others shall not be registered if it: (1) Consists of or comprises immoral, deceptive, or scandalous matter; (2) Consists of or comprises matter which may disparage or falsely suggest a connection with a person, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (3) Consist of or comprises the flag or coat of arms or other insignia of the United States, of any state or municipality or of any foreign nation, or any simulation thereof; (4) Consists of, comprises or includes the name, signature, or portrait of any living individual, except with his written consent; (5) Consists of a mark which: provided, however, that nothing in this subdivision shall prevent the registration of a mark used in this state by the applicant which has become distinctive of the applicant’s goods, services, or business. The Secretary of State may accept as evidence that the mark has become distinctive, as applied to the applicant’s goods, services, or business, proof of continuous use thereof as a mark by the applicant in this state or elsewhere for the five years next preceding the date of the filing of the application for registration; or (6) Consists of or comprises a mark which so resembles a mark registered in this state or a mark previously used in this state by another and not abandoned, as to be likely, where applied to the goods, services, or business of the applicant, to cause confusion or mistake or to deceive. Such a mark may be registered when the prior registrant or assignee, or the previous user of the mark gives his written consent, and the parties identify by affidavit their respective separate geographic markets and state that neither plans to expand into the other’s market. (b) Neither the issuance of a certificate of incorporation to a domestic corporation or a certificate of authority to a foreign corporation or a certificate of registration to a foreign limited partnership, nor the reservation or registration of a corporate name bestows any rights of ownership in a mark, and the issuance to another of a certificate of incorporation, a certificate of authority, a certificate of registration of a foreign limited partnership, a certificate of reservation of corporate name, or a certificate of registration of corporate name shall not serve as the basis for refusing registration of a mark. (Acts 1980, No. 80-166, p. 236, §2; Acts 1988, 1st Ex. Sess., No. 88-924, p. 526, §1.)

Ala. Code § 8-12-8 Application for Registration; Contents; Signature and Verification; Filing Fee.

8-12-8. Application for Registration; Contents; Signature and Verification; Filing Fee. (a) Subject to the limitations set forth in this article, 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: (1) The name and business address of the person applying for such registration and, if a corporation, the state of incorporation; (2) A description of the goods, services, or business in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods, services, or business and the class in which such goods, services, or business fall; (3) The date when the mark was first used anywhere and the date when it was first used in this state by the applicant or his predecessor in business; and (4) A statement that the applicant is the owner of the mark and that no other person has the right to use such mark in this state either in the identical form thereof or in such near resemblance thereto as might be calculated to deceive or to be mistaken therefor. (b) Every application under this section shall be signed and verified by the applicant or by a member of the firm or an officer of the corporation or association applying. (c) Every application under this section shall be accompanied by a specimen or facsimile of such mark in triplicate. (d) Every application for registration under this section shall be accompanied by a filing fee of $30, payable to the Secretary of State. (Acts 1980, No. 80-166, p. 236, §3; Acts 1988, 1st Ex. Sess., No. 88-924, p. 526, §1.)

Ala. Code § 8-12-9 Certificate of Registration; Issuance; Use as Evidence.

8-12-9. Certificate of Registration; Issuance; Use as Evidence. (a) Upon compliance by the applicant with the requirements of this article, the Secretary of State 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 of State and the seal of the state, and it shall show the name and business address and, if a corporation, the state of incorporation 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, services, or business and a description of the goods, services, or business on which the mark is used, a reproduction of the mark, the registration date, and the term of the registration. (b) Any certificate of registration issued by the Secretary of State under the provisions of this section or a copy thereof duly certified by the Secretary of State shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action or judicial proceedings in any court of this state. (Acts 1980, No. 80-166, p. 236, §4; Acts 1988, 1st Ex. Sess., No. 88-924, p. 526, §1.)

Ala. Code § 8-12-10 Duration and Renewal of Registration; Renewal Fee.

8-12-10. Duration and Renewal of Registration; Renewal Fee. (a) Registration of a mark under this article shall be effective for a term of five years from the date of registration and, if the mark is then still in use, upon application filed within six months prior to the expiration of such term, on a form to be furnished by the Secretary of State, the registration may be renewed for a like term. A renewal fee of $30, payable to the Secretary of State, shall accompany the application for renewal of the registration. (b) A mark registration may be renewed for successive periods of five years in like manner. (c) The Secretary of State shall notify registrants of marks under this article of the necessity of renewal within the year next preceding the expiration of five years from the date of registration, and within the year next preceding the expiration of five years from the date of any renewal of a registration, by writing to the last known address, physical, electronic, or otherwise, of the registrants. (d) Any registration in force on January 1, 2011, shall continue in full force and effect for the unexpired term thereof and may be renewed by filing an application for renewal with the Secretary of State complying with the requirements of the Secretary of State and paying the renewal fee therefor within six months prior to the expiration of the registration. (e) All applications for renewals under this article, whether of registrations made under this article or of registrations effected under any prior act, shall include a statement that the mark is still in use in this state. (Acts 1980, No. 80-166, p. 236, §5; Act 2010-747, p. 1886, §1.)

Ala. Code § 8-12-11 Assignment of Mark and Registration; Fee; Recordation and Issuance of New Certificate; Effect of Failure to Record.

8-12-11. Assignment of Mark and Registration; Fee; Recordation and Issuance of New Certificate; Effect of Failure to Record. Any mark and its registration under this article shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignment shall be by instruments in writing duly executed and may be recorded with the Secretary of State upon the payment of a fee of $30, payable to the Secretary of State, 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 article shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the Secretary of State within three months after the date thereof or prior to such subsequent purchase. (Acts 1980, No. 80-166, p. 236, §6.)

Ala. Code § 8-12-12 Records.

8-12-12. Records. The Secretary of State shall keep for public examination a record of all marks registered or renewed under this article. (Acts 1980, No. 80-166, p. 236, §7.)

Ala. Code § 8-12-13 Cancellation.

8-12-13. Cancellation. The Secretary of State shall cancel from the register: (1) After one year from January 1, 1981, all registrations under prior acts or informal registration which have not been registered in accordance with this article; (2) Any registration concerning which the Secretary of State shall receive a voluntary request for cancellation thereof from the registrant or the assignee of record; (3) All registrations granted under this article and not renewed in accordance with the provisions of Section 8-12-10; (4) Any registration concerning which a court of competent jurisdiction shall find: a. That the registered mark has been abandoned; b. That the registrant is not the owner of the mark; c. That the registration was granted improperly; d. That the registration was obtained fraudulently; or e. That the registered mark is so similar, as to be likely to cause confusion or mistake or to deceive, to a mark registered by another person in the United States patent and trademark office, prior to the date of the filing of the application for registration by the registrant hereunder, and not abandoned; provided, however, that should the registrant prove that he is the owner of a concurrent registration of his mark in the United States patent and trademark office covering an area including this state, the registration hereunder shall not be cancelled; or (5) Any registration when a court of competent jurisdiction shall order cancellation thereof, on any ground. (Acts 1980, No. 80-166, p. 236, §8.)

Ala. Code § 8-12-14 Classification of Goods, Services and Businesses.

8-12-14. Classification of Goods, Services and Businesses. (a) The following general classes of goods, services, and business are established for convenience of administration of this article, 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 or business with which, the mark is actually being used indicating the appropriate class or classes of goods, services, or business. When a single application includes goods, services, or business which fall within multiple classes, the Secretary of State may require payment of a fee for each class. (b) The classification of goods and services shall be the classification of goods and services adopted by the United States Patent and Trademark Office, as amended from time to time, except that nothing in this subsection shall prevent the registration of a trade name. (c) The classification of businesses is as follows: (1) Agriculture, forestry, and fisheries. (2) Mining. (3) Construction. (4) Manufacturing, nondurable goods. (5) Manufacturing, durable goods. (6) Transportation, communications, and other public utilities. (7) Wholesale trade, nondurable goods. (8) Wholesale trade, durable goods. (9) Retail trade - lumber and building materials, hardware, nurseries and garden stores, and mobile home dealers. (10) Retail trade - department, variety, miscellaneous general merchandise, grocery, dairy products, retail bakery, and food stores. (11) Retail trade - motor vehicle dealers, auto and home supply stores, gasoline service stations, and miscellaneous vehicle dealers. (12) Retail trade - apparel, accessory, and shoe stores. (13) Retail trade - furniture, home furnishings, household appliances, T.V. and radio stores. (14) Retail trade - eating and drinking places, drugstores, and liquor stores. (15) Retail trade - sporting goods, bicycles, and hobby stores. (16) Retail trade - book, stationery, jewelry, sewing, needlework, and piece-goods stores. (17) Retail trade - mail-order houses, vending machine operators, and direct selling establishments, fuel and ice dealers, and retail florists. (18) Retail trade - miscellaneous. (19) Finance, insurance, and real estate. (20) Business and repair services. (21) Personal services. (22) Entertainment and recreation services. (23) Professional and related services. (24) Public administration. (25) Miscellaneous. (Acts 1980, No. 80-166, p. 236, §9; Acts 1988, 1st Ex. Sess., No. 88-924, p. 526, §1; Act 2010-747, p. 1886, §1.)

Ala. Code § 8-12-15 Liability for Damages Sustained in Consequence of Fraudulent Filing or Registration.

8-12-15. Liability for Damages Sustained in Consequence of Fraudulent Filing or Registration. Any person who shall for himself, or on behalf of any other person, procure the filing or registration of any mark in the office of the Secretary of State under the provisions of this article, by knowingly making any false or fraudulent representation or declaration, verbally or in writing, or by any other fraudulent means, shall be liable to pay all damages sustained in consequence of such filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction. (Acts 1980, No. 80-166, p. 236, §10.)

Ala. Code § 8-12-16 Liability to Civil Action for Infringement.

8-12-16. Liability to Civil Action for Infringement. Subject to the provisions of Section 8-12-19, any person who shall: (1) Use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this article in connection with a business, or with the sale, offering for sale, or advertising of any goods or services, and such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services or the sponsorship of such business; or (2) Reproduce, counterfeit, copy, or colorably imitate any such mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in conjunction with the business or with the sale or other distribution in this state of such goods or services; shall be liable to a civil action by the owner of such registered mark for any or all of the remedies provided in Section 8-12-18, except that under subdivision (2) of this section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive. (Acts 1980, No. 80-166, p. 236, §11; Acts 1988, 1st Ex. Sess., No. 88-924, p. 526, §1.)

Ala. Code § 8-12-17 Injunctive Relief; Famous Marks.

8-12-17. Injunctive Relief; Famous Marks. (a) Subject to the principles of equity, the owner of a mark which is famous and distinctive, inherently or through acquired distinctiveness, in this state shall be entitled to an injunction against another person’s commercial use of a mark, if such use begins after the famous mark has become famous and is likely to cause dilution of the famous mark, and to obtain such other relief as is provided in this section. (b) A mark is famous if it is widely recognized by the general consuming public of this state or a significant geographic area in this state as a designation of source of the goods or services or the business of the mark’s owner. In determining whether a mark is famous, a court may consider factors such as, but not limited to: (1) The duration, extent, and geographic reach of advertising and publicity of the mark in this state, whether advertised or publicized by the owner or third parties. (2) The amount, volume, and geographic extent of sales offered under the mark in this state. (3) The extent of actual recognition of the mark in this state or a significant geographic area in this state. (4) Whether the mark is the subject of a state registration in this state, or a federal registration under the Act of March 3, 1881, or under the Act of February 20, 1905, or on the principal register under the Trademark Act of 1946, as amended. (c) In an action brought under this section, the owner of a famous mark shall be entitled to injunctive relief throughout the geographic area in which the mark is found to have become famous prior to commencement of the junior use, but not beyond the borders of this state. If the person against whom the injunctive relief is sought willfully intended to cause dilution of the famous mark, then the owner shall also be entitled to the remedies set forth in this chapter, subject to the discretion of the court and the principles of equity. (d) The following shall not be actionable under this section: (1) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services or business, including use in connection with: a. Advertising or promotion that permits consumers to compare goods or services or businesses; or b. Identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services or business of the famous mark owner. (2) Noncommercial use of the mark and all forms of news reporting and news commentary. (Acts 1980, No. 80-166, p. 236, §12; Acts 1988, 1st Ex. Sess., No. 88-924, p. 526, §1; Act 2010-747, p. 1886, §1.)

Ala. Code § 8-12-18 Remedies.

8-12-18. Remedies. (a) Any owner of a mark registered under this article 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, and/or all damages suffered by reason of, such wrongful manufacture, use, display, or sale, and to pay the costs of the action. In assessing profits, the owner shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. The court may also order that any such counterfeits or imitations in the possession or under the control of any defendant in such case, be delivered to an officer of the court, or to the complainant, to be destroyed. (b) In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, up to a trebling of such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive, the court may enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. (c) The court may award reasonable attorney fees as follows: (1) To a prevailing owner in such cases when the court finds the defendant willfully intended infringement or dilution. (2) To a prevailing defendant in such cases as the Alabama Litigation Accountability Act provides. (d) The enumeration of any right or remedy in this article shall not affect an owner’s right to prosecute under any penal law of this state. (Acts 1980, No. 80-166, p. 236, §13; Act 2010-747, p. 1886, §1.)

Ala. Code § 8-12-19 Common-Law Rights.

8-12-19. Common-Law Rights. Nothing in this article shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law. (Acts 1980, No. 80-166, p. 236, §14.)

Source: Alabama Legislature (alison.legislature.state.al.us)URL: https://alison.legislature.state.al.us/code-of-alabamaFetched: 10/20/2026