Chapter 132

CHAPTER 132

TRADEMARKS, BADGES AND LABELED PRODUCTS

132.001   Definitions.

132.01   Marks.

132.02   Duplication or reproduction.

132.03   Penalty.

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.

132.001 Annotation Wisconsin law recognizes a common law and statutory cause of action for infringement of trademarks and trade names. Although Wisconsin has long recognized a cause of action for trademark infringement, Wisconsin courts have recognized that the state’s jurisprudence on trademark law is undeveloped. Therefore, the courts look to federal law for guidance and key principles as well as to treatises. Ritter v. Farrow, 2021 WI 14, 395 Wis. 2d 787, 955 N.W.2d 122, 18-1518.

132.001 Annotation A trademark is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. In contrast, a trade name is a word, name, symbol, device or other designation, or a combination of such designations, that is distinctive of a person’s business or other enterprise and that is used in a manner that identifies that business or enterprise and distinguishes it from the businesses or enterprises of others. In short, a trademark identifies and distinguishes goods and services, while a trade name denotes a business or association. In both cases, the key is whether the designation serves as an indicator of the source; in other words, whether it distinguishes the goods/services/business from others so that consumers can identify the source that is connected to the designation. Ritter v. Farrow, 2021 WI 14, 395 Wis. 2d 787, 955 N.W.2d 122, 18-1518.

132.01 132.01 Marks.

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) (6) 

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 History History: 1975 c. 94; 1979 c. 221; 1985 a. 181; 1989 a. 91, 123, 359; 1993 a. 490; 2011 a. 32.

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’s 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 853, 03-0773.

132.01 Annotation A trademark is a form of intangible property that cannot exist separate from the good will of the product or service it symbolizes. Good will is a business value that reflects the basic human propensity to continue doing business with a seller who has offered goods and services that the customer likes and has found adequate to fulfill the customer’s needs. It is a well-settled legal principle that trademarks and their associated goodwill pass with the sale of a business. In this case, the sellers’ resort management business built up the goodwill of the resort through its activities, all while using the Bibs Resort marks. Therefore, the purchasers became the exclusive owners of the Bibs Resort marks when they purchased the resort management business from the sellers. Ritter v. Farrow, 2021 WI 14, 395 Wis. 2d 787, 955 N.W.2d 122, 18-1518.

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.