New Mexico. Peacock Law, P.C.* Albuquerque, NM. Last Updated: August A. State Trademark Registration Statute

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1 Last Updated: August 2018 New Mexico Peacock Law, P.C.* Albuquerque, NM A. State Trademark Registration Statute 1. Code Section NMSA 1978, to -12 is repealed and replaced by NMSA 1978, 57-3B-1 to -17. The provision shall not affect marks previously issued or applications, suits, proceedings, or appeals pending under the previous Trademark Act. NMSA 1978, 57-3B Model Act Provisions New Mexico has now adopted a registration and protection act substantially consistent with the Federal Trademark Act of Administrator Ms. Maggie Toulouse Oliver Office of the New Mexico Secretary of State New Mexico Capitol Annex North 325 Don Gaspar, Suite 300 Santa Fe, New Mexico (505) or (800) website: 4. Procedure for Applying for Registration a. Forms A state-provided form is required. It must be verified by oath, affirmation, or declaration. NMSA 1978, 57-3B-5(D). It must contain: (1) the name and business address of the person applying for the registration; and if a corporation, the state of incorporation; if a *Peacock Law, P.C., practices in the area of intellectual property law, including trademarks and unfair competition, copyrights, trade secrets, licensing, and related matters. The firm s work includes substantial litigation work, including trademark and copyright infringement litigation. In addition to practice before federal district courts throughout the United States, the firm also practices before the United States Supreme Court and the court of appeals for various federal circuits. The individual attorney who participated in preparation of this entry is Deborah A. Peacock. NM-1

2 A.4.b. STATE TRADEMARK LAW partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary; (2) the goods or services on or in connection with which the mark is used and the mode or manner in which the mark is used on or in connection with the goods or services and the class in which the goods or services 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 a predecessor in interest; (4) a written description of the mark; and (5) a statement that the applicant is the owner of the mark, that the mark is in use and that, to the knowledge of the person verifying the application, no other person has registered, either federally or in this state, or has the right to use the mark either in the identifical form of it or in the near resemblance thereto as to be likely, when applied to the goods or services of the other person, to cause confusion, mistake or to deceive. NMSA 1978, 57-3B-5(A) (1)-(5). b. Number of Copies One copy of the application form is sufficient. c. Fee The Application shall be accompanied by a fee of $25 for each application, and $25 per class code. NMSA 1978, 57-3B-5(E). A clearance certificate is no longer required. If copies are required from the Secretary of State, the charge is $0.25 per page and there is a charge of $3.00 to certify any copies obtained. d. Specimens Three specimens showing the mark as it is actually used shall accompany the application. NMSA 1978, 57-3B-5(c). e. Drawing A drawing of the mark may be required. NMSA 1978, 57-3B-5(c). 5. Intent to Use Provision No intent to use provisions exists. 6. Classification The Federal classification system is now used. There is a $25 fee for each class classification. NMSA 1978, 57-3B Search Prior to Application The New Mexico Secretary of State does not search prior to filing. Such information may be informally obtained from the Secretary of State s Office. NM-2

3 NEW MEXICO A.16. The Secretary of State examines the application for conformity with the Trademark Act. Amendments, disclaimers, or rejections may be required. Applicant may amend to conform to requirements of the Secretary of State within thirty days or the application will be deemed abandoned. 8. Search Prior to Registration The Secretary of State now maintains a record of all marks registered or renewed. 9. Doing Business Requirement The applicant must use the trademark in state and certify in the application that the mark is in use. 10. Types of Marks Registrable Trademarks, service marks, trade names, or labels may be registered. Laundry service trademarks are registered separately. There is no separate provision for registration of collective and certification marks. 11. Restrictions Non-registrable marks are specified in NMSA 1978, 57-3B-4(A). 12. Use in State Use in state is required. 13. Term of Registration Ten years. 14. Renewal A registration can be renewed for an additional ten years for a $25 fee. Six months prior to expiration date, an application for renewal shall be filed with the Secretary of State. If the registration is not renewed within the six-month period, it is void, and the Secretary of State can remove the registration. A verified application shall include a verified statement that the mark has been and still is in use. 15. Renewal Forms The renewal application form is identical to the original registration application form. 16. Other Forms Other forms: application forms; application for assignment; and application to change name of registrant or applicant. NM-3

4 A.17. STATE TRADEMARK LAW 17. Post-Registration Forms Only the application form is provided. 18. Fees After Registration Renewal fee is $25; Recording an assignment with the Secretary of State is $ Use Requirement for Renewal The renewal application is similar to the original registration application form (see A.15, above). Use is required for renewal. 20. Presumptions a. In Favor of Registrant A certificate of registration of the trademark or trade name is admissible in evidence as competent and sufficient proof of registration in all judicial proceedings in New Mexico. NMSA 1978, 57-3B- 7(B). b. Presumption of Doing Business Registration does not create a presumption of doing business for purposes of personal jurisdiction. 21. Remedies for Infringement All remedies provided in Section 16 of the Trademark Act are provided in a civil case. NMSA 1978, 57-3B-7(B). Injunctions. Injunctive relief to stop manufacture, use, display, or sale of counterfeits or imitations is available. One is entitled only to injunctive relief, unless willful intent to trade on owner s reputation or cause dilution can be shown. If willful intent is proven, the owner is also may be entitled to additional remedies, subject to the discretion of the court and the principles of equity. NMSA 1978, 57-3B-15(B). Damages. All profits derived and all damages suffered by reason of wrongful manufacture may be obtained, not to exceed three times the profits, damages and reasonable attorney fees of a prevailing party in cases of wrongful acts with knowledge or bad faith. All imitations or counterfeits can be turned over to the Court for destruction. NMSA 1978, 57-3B Persons Entitled to Sue The owner of the mark may sue for infringement. S & S Invs., Inc. v. Hooper Enters holds that prior registration of a trade name under the New Mexico Trademark statute does not prevent another party from acquiring the right to use that name in good faith under the common law NMCA-122, 116 N.M. 393, 862 P.2d NM-4

5 NEW MEXICO B.6. B. Dilution 1. Code Section NMSA 1978, 57-3B-3(B) defines dilution as the lessening of the capacity of the registrant s mark to identify and distinguish goods or services regardless of the presence or absence of: (1) competition between the parties; or (2) the likelihood of confusion, mistake or deception. 2. Judicially Created Dilution Doctrine NMSA 1978, 57-3B-15(A) describes the factors used to determine if a mark has become famous and thus whether an injunction is appropriate when another mark causes dilution of the distinctive quality of the famous mark. See section B.6., below. 3. Tarnishment See Jordache Enterprises v. Hogg Wyld, Ltd., 828 F.2d 1482 (1987), holding that a [m]ark can be tarnished within meaning of New Mexico s antidilution statute, if it is used in an unwholesome context. NMSA 1978, (1996) (prior to 1997 amendment). 4. Likelihood of Confusion Likelihood of confusion is not required by statute. NMSA 1978, 57-3B-3(B)(2). 5. Competition Between the Parties The statute does not require competition. The anti-dilution statute applies to both competitive and noncompetitive situations. NMSA 1978, 57-3B-3(B)(1). 6. Fame or Distinctiveness No cases in the state decide what fame means but the statute defines factors to consider. These factors include: (1) The degree of inherent or acquired distinctiveness of the mark in the state; (2) the duration and extent of use of the mark in connection with the goods and services; (3) the duration and extent of advertising and publicity of the mark in the state; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the owner s mark is used; NM-5

6 B.7. STATE TRADEMARK LAW (6) the degree of recognition of the owner s mark in its trading area and in the other s trading area, and in the channels of trade in this state; and (7) the nature and extent of use of the same or similar mark by third parties. NMSA 1978, 57-3B-15(A)(1)-(7). 7. Remedies NMSA 1978, 57-3B-15(A) provides for injunctive relief if the mark has become famous. Furthermore, the remedies of the Trademark Act are applicable if willful intent is proven under NMSA 1978, 57-3B- 15(B), subject to the discretion of the court and the principle of equity. 8. Leading Cases Value House v. Phillips Mercantile Co., 523 F.2d 424 (10th Cir. 1975); Volkswagenwerk, AG v. Smith, 471 F. Supp. 385 (D.N.M. 1979); Royal International Optical Co. v. Tex. State Optical Co., 92 N.M. 237, 586 P.2d 318 (1978); S & S Invs., Inc. v. Hooper Enters., 116 N.M. 393, 862 P.2d 1252 (1993); Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (1987). 9. Extraterritorial Effect There are no court rulings on the question of extraterritoriality. 10. Preemption Cases Courts have not ruled on the question of preemption. C. Unfair Business Practices Acts (Little FTC Acts) 1. Code Section NMSA 1978, (D)(1) (18). Unfair or deceptive trade practice is defined as a false or misleading oral or written statement, visual description, or other representation of any kind knowingly made in connection with the sale, lease, rental, or loan of goods or services or in the extension of credit or in the collection of debts by a person in the regular course of the person s trade or commerce, that may, tends to, or does deceive or mislead any person and includes: causing confusion or misunderstanding, certain representations, false or misleading statements, other such failures. The section excludes publishers, broadcasters, or printers or disseminators without knowledge of deceptive or unconscionable character. Unconscionable trade practices include services provided by licensed professionals. NMSA 1978, (E). Insurance companies are specifically covered under Unfair Insurance Practices Act (NMSA 1978, 59A-16-1 to -30). NM-6

7 NEW MEXICO C.4.b. Seller-initiated telephone sales have been included in the definition, and this act now includes solicitation of a sale by telephone of a prospective purchaser in which a sale is consummated entirely by telephone or mail. Certain exclusions apply, but Unconscionable Trade Practices are specifically prohibited under NMSA 1978, for telephone solicitation sales. Disclosure of an existing business relationship between the persons being called by automatic telephone dialing or push-button or tone-activated signalling systems is required. Even with consent, disclosure of the name of the sponsor, the purpose of the contacts, the times (9:00 AM to 9:00 PM), and automatic releases are required in detail. NMSA 1978, Scope See C.1, above. Chain referral sales are also prohibited. See also Motor Vehicle Quality Assurance Act, NMSA 1978, 57-16A-1 to Prohibited Activities The statutes contain broadly worded general prohibitions of unfair or deceptive trade practices. The statutes prohibit unconscionable trade practices which take advantage of lack of knowledge, experience, ability, or capacity of one party to a grossly unfair degree or result in gross disparity between the price paid and the value received. NMSA 1978, (E) and Courts are statutorily directed to follow the Federal Trade Commission and the federal court interpretations. NMSA 1978, Statutes restrict automated telephone dialing systems sales and require disclosure therein, NMSA 1978, Remedies a. State Administrative Enforcement The Attorney General may bring action for restraint of present or possible future violations and for temporary or permanent injunction and restitution. The defendant and the Attorney General may settle with written assurance of discontinuance of the unfair practice and/or restitution. Settlements are not admissible in any other action against defendant. A civil penalty of up to $5,000 per violation exists for willful violation. NMSA 1978, The Attorney General may begin with a civil investigative demand requiring suspected violators to produce certain documentary evidence for inspection. NMSA 1978, The Attorney General may obtain a ne exeat writ and bond. NMSA 1978, b. Criminal Enforcement Misrepresentation of age or condition of motor vehicle is a misde- NM-7

8 C.4.c. STATE TRADEMARK LAW meanor. The statute also defines the following two actions that could be subjects of criminal enforcement by the attorney general: (1) any transportation service carrier to offer or provide transportation services of a type for which, or in any territory in which, it is not authorized to do so by the commission; and (2) any transportation service carrier or its agent, employee or contract driver to charge or collect a predatory rate or to undertake a predatory practice in the provision of transportation services. NMSA 1978, 65-2A-33. c. Civil Penalties See C.4.a, above. NMSA 1978, d. Private Actions and Remedies A private action and/or other remedies are not possible by a claimant if he accepts restitution in his action or an action brought by the Attorney General s actions. See C.4.a, above. A party who has settled for restitution either directly or through the Attorney General cannot bring additional private action. A person likely to be damaged may obtain an injunction without showing damages, lost profits, etc. Anyone suffering loss of money or property may sue for actual damages or $100, whichever is greater. NMSA 1978, Costs will be awarded to the prevailing party and attorney s fees to the prevailing party if the complaining party knew it was groundless or that the party charged willfully engaged in the trade practice. Any other remedy provided by common law or statute is also available to a private party. Where a party is found to have willfully engaged in the trade practice, the court may award up to three times actual damages or $300, whichever is greater. e. Class Actions Class actions may be brought by statute by any party. Damages may be awarded to named persons who suffer actual damages, and the court may award members of the class such actual damages as were suffered by each member of the class. NMSA 1978, f. Notice No notice is required by any party before filing suit. g. Standing Any person, including competitors, who are likely to or have been damaged by deceptive or unconscionable trade practices may sue. h. Consumer Products The statute is not limited to consumer products. i. Jurisdiction of Courts District courts of state have jurisdiction in the county in which the NM-8

9 NEW MEXICO D.2. person resides, has principal place of business, or the county where person has or is about to use practice alleged unlawful. j. Rules The Attorney General is empowered to issue and file regulations under the Act. k. Administrative Investigative Authority The Attorney General has power to investigate, issue subpoenas, and seek court injunctions and civil penalties against unlawful practices. 5. Administrator See C.4.k, above. 6. Leading Cases State ex rel. King v. B&B Inv. Grp., Inc., 2014-NMSC-024, 329 P.3d 658; Atherton v. King, 2015-NMCA-003, 340 P.3d 630; Richardson Ford Sales, Inc. v. Johnson, 1984-NMCA-007, 100 N.M. 779, 676 P.2d 1344; In re Klein, 39 B.R. 20 (Bankr. D.N.M. 1984); Volkswagenwerk, AG v. Smith, 471 F. Supp. 385 (D.N.M. 1979); Royal Int l Optical Co. v. Tex. State Optical Co., 1978-NMCA-094, 92 N.M. 237, 586 P.2d 318; State ex rel. Stratton v. Gurley Motor Co., 1987-NMCA-063, 105 N.M. 803, 737 P.2d 1180; Page & Wirtz Constr. Co. v. Solomon, 1990-NMSC-063, 110 N.M. 206, 794 P.2d 349; Parker v. E.I. Du Pont de Nemours & Co., NMCA-086, 121 N.M. 120, 909 P.2d 1; Marchman v. NCNB Tex. Nat l Bank, 1995-NMSC-041, 120 N.M. 74, 898 P.2d 709; Kreischer v. Armijo, 1994-NMCA-118, 118 N.M. 671, 884 P.2d 827; Kaveny v. MDA Enters., 2005-NMCA-118, 138 N.M. 432, 120 P.3d 854; Campos v. Brooksbank, 120 F. Supp. 2d 1271 (D.N.M. 2000); Garley v. Sandia Corp., 236 F.3d 1200 (10th Cir. 2001); Gonzales v. Surgidev Corp., 1995-NMSC-036, 120 N.M. 133, 899 P.2d 576. D. Uniform Deceptive Trade Practices Act 1. State Statute NMSA 1978, , et seq. is modeled on the Uniform Deceptive Trade Practices Act; however, numerous variations, omissions, and additions occurred in adoption and amendment. See C.1, above. Seller-initiated telephone sales are included in unfair trade practices and several restrictions on the same are added. NMSA 1978, (B) and Standing See C.4.g, above. NM-9

10 D.3. STATE TRADEMARK LAW 3. Remedies See C.4, above. 4. Standard for Granting Relief See C.4, above. 5. Leading Cases Stevenson v. Louis Dreyfus Corp., 1991-NMSC-051, 112 N.M. 97, 811 P.2d 1308; Diversey Corp. v. Chem-Source Corp., 1998-NMCA-112, 125 N.M. 748, 965 P.2d 332; Ernest Thompson Fine Furniture Maker, Inc. v. Youart, 1990-NMCA-012, 109 N.M. 572, 787 P.2d 1255; N.M. Life Ins. Guar. Ass n v. Quinn & Co., 1991-NMSC-036, 111 N.M. 750, 809 P.2d 1278; Hale v. Basin Motor Co., 1990-NMSC-068, 110 N.M. 314, 795 P.2d 1006; Page & Wirtz Constr. Co. v. Solomon, 1990-NMSC-063, 110 N.M. 206, 794 P.2d 349; Kreischer v. Armijo, 1994-NMCA-118, 118 N.M. 671, 884 P.2d 827; Parker v. E.I. Du Pont de Nemours & Co., 1995-NMCA-086, 121 N.M. 120, 909 P.2d 1; Marchman v. NCNB Tex. Nat l Bank, NMSC-041, 120 N.M. 74, 898 P.2d 709; Woodworker s Supply, Inc. v. Principal Mut. Life Ins. Co., 170 F.3d 985 (10th Cir. 1999); Nechero v. Provident Life & Acci. Ins. Co., 795 F. Supp. 374 (D.N.M. 1992); Lisanti v. Alamo Title Ins. of Tex., 2001-NMCA-100, 131 N.M. 334, 35 P.3d 989; Jones v. GMC, 1998-NMCA-020, 124 N.M. 606, 953 P.2d 1104; Sloan v. State Farm Mut. Auto. Ins. Co. (In re Sloan), 2004-NMSC-004, 135 N.M. 106, 85 P.3d 230; G.E.W. Mech. Contractors, Inc. v. Johnston Co., NMCA-081, 115 N.M. 727, 858 P.2d 103; Jones v. Beavers, 1993-NMCA- 100, 116 N.M. 634, 866 P.2d 362; Smoot v. Physicians Life Ins. Co., NMCA-027, 135 N.M. 265, 87 P.3d 545; McElhannon v. Ford, NMCA-091, 134 N.M. 124, 73 P.3d 827; Sublett v. Wallin, 2004-NMCA- 089, 136 N.M. 102, 94 P.3d 845; McElhannon v. Ford, 2003-NMCA-091, 134 N.M. 124, 73 P.3d 827; Lisanti v. Alamo Title Ins., 2002-NMSC-032, 132 N.M. 750, 55 P.3d 962. E. Trademark Counterfeiting There is no separate trademark counterfeiting statute Not applicable. F. False Advertising 1. Statute NMSA 1978, False advertising in the conduct of any business, trade or commerce, or in the furnishing of any service in this state is unlawful. NM-10

11 NEW MEXICO G Prohibited Practices The statute prohibits advertising in the conduct of any trade, business, or commerce which is misleading. Misleading shall include representations (word, design, sound or a combination thereof) or the extent to which advertising fails to reveal material facts in light of representations with regard to the commodity advertised and the conditions for such an advertisement or the usual or customary conditions for such an advertisement. NMSA 1978, Limitations The Act is not limited to consumer goods, and does not apply to television, radio, newspaper, magazine publishers who print an advertisement. NMSA 1978, Who Can Sue The Attorney General or district attorney, if designated, may sue, after notice, for a civil penalty of $500 for each violation. Injunction may also be brought by the Attorney General or private citizen, including a competitor, in the name of the state as a class action. A private citizen may receive attorney s fees, or they may be assessed against him in exceptional cases. Costs or attorney s fees may be assessed for willful, false advertising. It is a complete defense if an advertisement is subject to and complies with rules and regulations and statutes administered by the Federal Trade Commission. The Attorney General may also issue civil investigative demand to obtain documents, etc., prior to suit. No radio or television broadcaster nor publisher or printer who broadcasts, publishes, or prints such an advertisement shall be liable. 5. Remedies See F.4, above. 6. Leading Cases No significant cases interpreting this statute exist. G. Corporate Name Reservation Prior to Incorporation 1. Statute NMSA 1978, Reserved name for business corporations; Registered name for foreign corporations; Reserved names for nonprofit corporations; Reservation of name for limited liability company; and 54-2A-109 Reservation of name for partnerships. NM-11

12 G.2. STATE TRADEMARK LAW 2. Reservation a. Time Period One hundred twenty (120) days. b. Renewal No renewal of reservation is possible. c. Fee A registration fee is required for foreign corporations, for limited liability corporations, for corporations (for profit and nonprofit); for foreign for profit, and for foreign LLCs. The fee is in amount of one dollar ($1) for each month, or portion thereof, between the date of filing the application and December 31 of the year when the application is filed. The registration fee for a limited liability company is $20; corporation for profit is $20, and nonprofit is $10. d. Prerequisite to Incorporation There is no necessity of advance reservation of name prior to incorporation. 3. Conflicting Names Where a business corporation has a name similar or confusingly similar to a name of any domestic corporation existing under the New Mexico laws, or any foreign corporation authorized to transact business in New Mexico, or any name already reserved, this name can be approved if the corporation submit any one of the following: (1) a written consent of such other corporation or holder of a reserved or registered name is given and one or more words are added to make the name distinguishable; or (2) a court decrees establishing that applicant s prior right to use the in the state. Another option exists for foreign corporations: to file a decision of the board of directors adopting a fictitious name for use in transacting domestic business. 4. Restrictions on Use of Corp. and Similar Terms No provision under Business Corporation Act restricting the use of a corporation. See G.5, below. 5. Required or Authorized Use of Corp. or Similar Term NMSA 1978, requires the use of Corporation, Company, Incorporated, or Limited, or abbreviation ( Corp., Co., Inc., Ltd. ), in a corporate name. 6. Search Provisions No provision for search for conflict or for corporation names previously registered. The Corporation Commission searches its NM-12

13 NEW MEXICO G.12. records prior to issuing trademarks, reserved or registered name of corporations, or certificates of authority for foreign corporations. The Corporation Commission presumably has broad discretion in detecting confusingly similar nature of names. 7. Policy Regarding Identical Words The Corporation Commission presumably has broad discretion in detecting the confusingly similar nature of names. There is no delineated policy of the state Administrator with regard to identical words in corporate names nor general practices that can be identified in the Corporation Commission s administration of the statute. 8. Substantive Rights No statutory provisions defining trademark rights which arise following incorporation under a certain name exist. No statutory rights arise as a result of obtaining a corporate name except the right to prevent others from using that name as a corporate name. 9. Prohibited Terms There exists no statutory prohibition of any specific type of words in corporate names except that a corporate name shall not contain any word or phrase which indicates or implies it is organized for any purpose other than the purposes contained in its articles of incorporation, and shall not be the same as, or confusingly similar to, the name of any domestic corporation existing under the law of New Mexico or any foreign corporation authorized to transact business in New Mexico. NMSA 1978, Administrative Agency New Mexico Public Regulation Commission 1120 Paseo de Peralta PERA Building P.O. Box 1269 Santa Fe, NM Forms A few miscellaneous forms, e.g., application for certificate of authority and application of withdrawal for foreign corporation, are provided by the State Corporation Commission. 12. Fees Reservation of corporation name: $10-$25; renewal of the registered name: $10 per year of $1 per month. NM-13

14 H. STATE TRADEMARK LAW H. Trade Name Registration (Fictitious Name Statutes) New Mexico has no fictitious name statutes Not applicable. I. State Statutory and/or Common Law Unfair Competition or Passing Off Provisions 1. Statutory Section New Mexico has no statutory provisions concerning common law rights in trademarks Not applicable. 9. Leading Cases The Value House v. Phillips Mercantile Co., 523 F.2d 424 (10th Cir. 1975); DeVries v. Starr, 393 F.2d 9 (10th Cir. 1968). J. Statutes of Special Application and Personal Name Statutes 1. Special Statutory Sections (a) Uniform Trade Secrets Act. NMSA 1978, 57-3A-1 to -7. New Mexico has adopted a uniform trade secrets act patterned on the Model Act with damages which may include double damages, exemplary damages, plus attorney fees. General skills and knowledge do not rise to the level of trade secrets. Insure N.M., LLC v. McGonigle, Insure N.M., LLC v. McGonigle, 2000-NMCA-018, 128 N.M. 611, 995 P.2d (b) Laundry Service Trademarks. NMSA 1978, and apply to firms supplying clean laundered articles which are the suppliers property. It is a petty misdemeanor for any person to sell, buy, rent, trade, or obliterate or cancel a mark on articles using that mark. (c) Commodities. NMSA 1978, : Commodities in packages require declarations of net quality of weight, count, or measure, where packed, and identity of the commodity on a package unless it can be identified through the wrapper. Price per single unit of product must also be included. NMSA 1978, : No commodity in a package shall be wrapped or formed or filled to mislead purchaser as to quantity of contents, and container must be reasonably filled. NMSA 1978, : No commodity sold or advertised for sale NM-14

15 NEW MEXICO J.1. by weight or measure may be sold or advertised at a misrepresented price or a price calculated or tending to mislead a purchaser. (d) Petroleum Products. NMSA 1978, requires specific labeling for petroleum products with regard to brand, viscosity, etc. (e) Indian Arts and Crafts Sales Act. NMSA 1978, , et seq., prohibit sale or trade of any article represented as handcrafted by American Indians unless the basic article is handcrafted wholly by American Indian labor or workmanship. Handcrafted means made wholly with hand tools except buffing and polishing. Violation is a misdemeanor. Labeling or sale or offer of sale of non-authentic Indian Arts or non-silver or unnatural turquoise may be prevented by the Attorney General by injunction and a $5,000 civil penalty per violation. Private parties may sue for actual damages plus attorney s fees. (f) Distress Sales Act. NMSA 1978, to -12, require that no offer to sell to the public may be made with direct or implied representation that the sale is in anticipation of termination of business. A license from the local municipal governing body must be obtained. (g) Criminal Charge for Mislabeling of Watches. NMSA 1978, makes it a crime to fail to label second-hand watches as such. (h) Misrepresentation of a Motor Vehicle. NMSA 1978, prevents willful misrepresentation of age or condition of a motor vehicle by any person. An affidavit of mileage, chassis work, and no resetting of odometer shall be provided on sale. Violation is a misdemeanor. (i) Charitable Organization and Solicitation Act, NMSA 1978, to -11. Requires registration and annual reporting of local charitable organizations soliciting funds in New Mexico. (j) New Mexico has adopted a Patent and Copyright Act, NMSA 1978, 57-3(C)-1 to -5 effective June 15, The Act provides that inventions, innovations, works of authorship by a State employee, except an employee of a State Educational Institution, acting within the scope of his employment, shall require the Economic Development Department of the State to apply for a patent or copyright and pay expenses for such application. This department shall promulgate rules with regard to the Act, but they shall also share with the inventor 50% of the income from the invention and later determine by a cost benefit analysis whether the patent or copyright shall remain with the State. A special fund shall be created for expenses for and income from those situations. (k) NMSA 1978, 57-12B-1 to -4, the Privacy Protection Act, prohibits NM-15

16 J.2. STATE TRADEMARK LAW businesses from disclosing social security numbers except under certain circumstances. (l) NMSA 1978, and NMSA 1978, put limitations on unsolicited faxes and s. (m) Motor Vehicle Quality Assurance Act. NMSA 1978, 57-16A-1 to -9 applies lemon law actions to both used and new motor vehicles. 2. Use of Personal Name There is no statute relating to unauthorized use of the personal name of an individual. K. Right of Publicity No court decisions or statutes cover the common law right of publicity. An individual s right to privacy may be actionable in New Mexico at common law. Defendant s conduct must be such that it would be offensive to persons of ordinary sensibility. Malice is required in cases of public officials or conduct of public officials. News or relatively current events are likely to be in the public interest and are privileged. Bitsie v. Walston, 1973-NMCA-117, 85 N.M. 655, 515 P.2d 659; Apodaca v. Miller, 1968-NMSC-086, 79 N.M. 160, 441 P.2d 200; McNutt v. N.M. State Tribune Co., 1975-NMCA-085, 88 N.M. 162, 538 P.2d Not applicable. L. Criminal Statutes There are no state criminal prohibitions against unauthorized use of trade names or trademarks. 1. Not applicable. M. Trade Disparagement or Trade Libel There are no state statutes or common law cases prohibiting trade libel or trade disparagement Not applicable. N. Franchising or Business Opportunity Statutes No registration fee or filing with any state agency is required Not applicable. NM-16

17 NEW MEXICO N Bond There is a statute relating to motor vehicle manufacturers, distributors, or representatives and their relationship to dealers (NMSA 1978, l). False adverting in connection with these businesses is also prohibited. Any aggrieved party may sue for injunction or treble damages Not applicable. 19. Other Franchise Regulations Franchise termination is governed by NMSA 1978, to -8, which covers return of inventory, repurchase of inventory, warranty claims, late payment, etc. New Mexico maintains a pyramid or multilevel sales act. NMSA 1978, to Leading Cases State ex rel. Stratton v. Sinks, 1987-NMCA-092, 106 N.M. 213, 741 P.2d 435; and Key v. Chrysler Motors Corp., 1996-NMSC-038, 121 N.M. 764, 918 P.2d Liability of Franchisor for Torts of Franchisee The courts have not addressed the question of whether a franchisor may be liable for the torts of the franchisee. NM-17