BILL NUMBER: AB 1484 AMENDED
BILL TEXT
AMENDED IN SENATE AUGUST 31, 2007
AMENDED IN SENATE JULY 17, 2007
AMENDED IN SENATE JUNE 28, 2007
AMENDED IN SENATE MAY 31, 2007
AMENDED IN ASSEMBLY APRIL 16, 2007
INTRODUCED BY Assembly Member Krekorian
FEBRUARY 23, 2007
An act to repeal and add Chapter 2 (commencing with Section 14200)
of Division 6 of the Business and Professions Code, relating to
trademarks.
LEGISLATIVE COUNSEL'S DIGEST
AB 1484, as amended, Krekorian. Model State Trademark Law.
Existing law, the Trademark Law, provides for the registration of
trademarks and service marks with the Secretary of State and requires
an application for registration of a mark to provide specified
information on its application. A registration of a mark is effective
for 10 years, and may be renewed for successive 10-year periods.
Existing law specifies the grounds for cancellation of, and provides
specified remedies for violation of, a registered mark.
This bill would repeal the Trademark Law and would enact the Model
State Trademark Law. The bill would expand the information required
to be provided with an application for registration of a mark to
include, among other things, a drawing of the mark and 3 specimens of
that mark as it is actually used. The bill would also require that
the application include a declaration of accuracy signed by a
specified person and would subject that person to a civil penalty of
not more than $10,000 for willfully stating as true in the
declaration any material fact he or she knows to be false. The bill
would provide procedures for amendment of an application and, if the
secretary refuses registration, would authorize the applicant to seek
a writ of mandamus to compel registration. The bill would provide
that registration of a mark is effective for 5 years, and may be
renewed for successive 5-year periods. The bill would expand the
grounds upon which the secretary shall cancel a registration and
would specify procedures for actions to compel registration or cancel
a registration. The bill would revise and recast the provisions
dealing with actions and remedies for violation of a registered mark.
Vote: majority. Appropriation: no. Fiscal committee: yes.
State-mandated local program: no.
THE PEOPLE OF THE STATE OF CALIFORNIA DO ENACT AS FOLLOWS:
SECTION 1. Chapter 2 (commencing with Section 14200) of Division 6
of the Business and Professions Code is repealed.
SEC. 2. Chapter 2 (commencing with Section 14200) is added to
Division 6 of the Business and Professions Code, to read:
CHAPTER 2. MODEL STATE TRADEMARK LAW
Article 1. General Provisions
14200. This chapter shall be known and may be cited as the Model
State Trademark Law.
14202. For the purposes of this chapter, the following terms have
the following meanings:
(a) "Trademark" means any word, name, symbol, or device, or any
combination thereof, used by a person to identify and distinguish the
goods of that person, including a unique product, from those
manufactured or sold by others, and to indicate the source of the
goods, even if that source is unknown.
(b) "Service mark" means any word, name, symbol, or device, or any
combination thereof, used by a person to identify and distinguish
the services of that person, including a unique service, from the
services of others, and to indicate the source of the services, even
if that source is unknown. Titles, character names used by a person,
and other distinctive features of radio or television programs may be
registered as service marks notwithstanding that they, or the
programs, may advertise the goods of the sponsor.
(c) "Mark" includes any trademark or service mark entitled to
registration under this chapter, whether registered or not.
(d) "Trade name" means any name used by a person to identify a
business or vocation of that person.
(e) The term "person" and any other word or term used to designate
the applicant or other party entitled to a benefit or privilege or
rendered liable under the provisions of this chapter includes a
juristic person as well as a natural person. The term "juristic
person" includes a firm, partnership, corporation, union,
association, or other organization capable of suing and being sued in
a court of law.
(f) "Applicant" means the person filing an application for
registration of a mark under this chapter, and the legal
representatives, successors, or assigns of the person.
(g) "Registrant" means the person to whom the registration of a
mark under this chapter is issued, and the legal representatives,
successors, or assigns of the person.
(h) "Use" means the bona fide use of a mark in the ordinary course
of trade, and not made merely to reserve a right in a mark. For the
purposes of this chapter, a mark shall be deemed to be in use if it
is used on either of the following:
(1) On goods when it is placed in any manner on the goods or other
containers or the displays associated therewith or on the tags or
labels affixed thereto, or if the nature of the goods makes that
placement impracticable, then on documents associated with the goods
or their sale, and the goods are sold or transported in commerce in
this state.
(2) On services when it is used or displayed in the sale or
advertising of services and the services are rendered in this state.
(i) "Abandoned" means either of the following has occurred:
(1) A mark's use has been discontinued with intent not to resume
that use. Intent not to resume the use may be inferred from
circumstances. Nonuse for two consecutive years shall constitute
prima facie evidence of abandonment.
(2) When any course of conduct of the owner, including acts of
omission as well as commission, causes the mark to lose its
significance as a mark.
(j) "Secretary" means the Secretary of State or the designee of
the Secretary of State charged with the administration of this
chapter.
(k) "Dilution" means dilution by blurring or dilution by
tarnishment, regardless of the presence or absence of any of the
following:
(1) Competition between the owner of the famous mark and other
parties.
(2) Actual or likely confusion, mistake, or deception.
(3) Actual economic injury.
(l) "Dilution by blurring" means association arising from the
similarity between a mark or a trade name and a famous mark that
impairs the distinctiveness of the famous mark.
(m) "Dilution by tarnishment" means association arising from the
similarity between a mark or a trade name and a famous mark that
harms the reputation of the famous mark.
(n) "Counterfeit" means a spurious trademark, service mark,
collective mark, or certification mark that is identical to, or
substantially indistinguishable from, a registered mark that is used
on or in connection with goods or services or any labels or packaging
or components.
(o) "Comparative commercial advertising" means the use of a
competitor's trademark in advertising to compare the relative
qualities of the competitive goods.
Article 2. Application for Registration
14205. A mark by which the goods or services of any applicant for
registration may be distinguished from the goods or services of
others shall not be registered if it meets any of the following
criteria:
(a) It consists of or comprises immoral, deceptive, or scandalous
matter.
(b) It consists of or comprises matter that may disparage or
falsely suggest a connection with persons living or dead,
institutions, beliefs, or national symbols, or bring them into
contempt or disrepute.
(c) It consists of or comprises the flag or coat of arms or other
insignia of the United States of America, of any state or
municipality, or of any foreign nation, or any simulation thereof.
(d) It consists of or comprises the name, signature, or a portrait
identifying a particular living individual, except by the individual'
s written consent.
(e) It consists of a mark that is any of the following:
(1) When used on or in connection with the goods or services of
the applicant, is merely descriptive or deceptively misdescriptive of
them.
(2) When used on or in connection with the goods or services of
the applicant, is primarily geographically descriptive or deceptively
misdescriptive of them.
(3) Is primarily merely a surname, provided, however, that nothing
in this paragraph shall prevent the registration of a mark used by
the applicant that has become distinctive of the applicant's goods or
services. The secretary may accept as evidence that the mark has
become distinctive, as used on or in connection with the applicant's
goods or services, proof of continuous use thereof as a mark by the
applicant in this state for the five years before the date on which
the claim of distinctiveness is made.
(f) It consists of or comprises a mark that so resembles a mark
registered in this state or a mark or trade name previously used by
another and not abandoned, as to be likely, when used on or in
connection with the goods or services of the applicant, to cause
confusion or mistake, or to deceive.
14207. (a) Subject to the limitations set forth in this chapter,
any person who uses a mark may file with the secretary, on a form
prescribed by the secretary, 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 the
registration and, if that person is a corporation or partnership, the
state of incorporation or 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, 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 on which 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 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 in this
state, or has the right to use the mark, either in the identical form
or in such near resemblance as to be likely, when applied to the
goods or services of the other person, to cause confusion, to cause
mistake, or to deceive.
(b) The secretary may also require a statement as to whether an
application to register the mark, or portions or a composite thereof,
has been filed by the applicant or a predecessor in interest with
the United States Patent and Trademark Office and, if so, the
applicant shall provide full particulars with respect thereto,
including the filing date and serial number of each application, the
status thereof, and, if any application was finally refused
registration or has otherwise not resulted in a registration, the
reasons for the refusal or result.
(c) The secretary may also require that a drawing of the mark,
complying with requirements specified by the secretary, accompany the
application.
(d) The application shall include a declaration of accuracy signed
by the applicant or by a member of the firm or an officer of the
corporation or association, or by a general partner of the
partnership, making application. If the person signing the
declaration willfully states as true in the declaration any material
fact that he or she knows to be false, he or she shall be subject to
a civil penalty of not more than ten thousand dollars ($10,000). An
action for that penalty may be brought by any public prosecutor. The
person signing the declaration shall be informed of this penalty in
writing.
(e) The application shall be accompanied by three specimens
showing the mark as actually used.
(f) The application shall be accompanied by the application fee
payable to the secretary as set forth in subdivision (a) of Section
12193 of the Government Code.
(g) If the mark or any part of the mark is in any language other
than English, the application shall be accompanied by a certified
translation in English.
14209. (a) Upon the filing of an application for registration and
payment of the application fee, the secretary may cause the
application to be examined for conformity with this chapter.
(b) The applicant shall provide any additional pertinent
information requested by the secretary, including a description of a
design mark, and may make, or authorize the secretary to make,
amendments to the application as may be reasonably requested by the
secretary or deemed by the applicant to be advisable in order to
respond to any rejection or objection.
(c) The secretary may require the applicant to disclaim an
unregisterable component of an otherwise registerable mark, and an
applicant may voluntarily disclaim a component of a mark sought to be
registered. No disclaimer shall prejudice or affect the applicant's
or registrant's rights, then existing or thereafter arising, in the
disclaimed matter, or the applicant's or registrant's rights of
registration on another application if the disclaimed matter is or
has become distinctive of the applicant's or registrant's goods or
services.
(d) The secretary may make amendments to the application submitted
by the applicant upon the applicant's agreement, or may require the
submission of a new application.
(e) If an applicant is found not to be entitled to registration,
the secretary shall so advise the applicant and shall advise the
applicant of the reasons. The applicant shall have a reasonable
period of time specified by the secretary in which to reply or to
amend the application, in which event the application shall be
reexamined. This procedure may be repeated until the secretary
finally refuses registration of the mark or the applicant fails to
reply or amend within the specified period, whereupon the application
shall be deemed to have been abandoned.
(f) If the secretary finally refuses registration of the mark, the
applicant may seek a writ of mandamus to compel registration. A writ
may be granted, but without costs to the secretary, on proof that
all statements in the application are true and that the mark is
otherwise entitled to registration.
(g) In the instance of applications concurrently being processed
by the secretary seeking 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 the order of
filing. If a prior-filed application is granted a registration, the
other application or applications shall then be rejected. Any
rejected applicant may bring an action for cancellation of the
registration upon grounds of prior or superior rights to the mark, in
accordance with the provisions of Section 14230.
Article 3. Certificate of Registration
14215. (a) Upon compliance by the applicant with the requirements
of this chapter, the secretary 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 and the seal of the state, and shall show the following
information:
(1) The name and business address and, if a corporation, the state
of incorporation, or if a partnership, the state in which the
partnership is organized and the names of the general partners, as
specified by the secretary, of the person claiming ownership of the
mark.
(2) 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.
(3) The class of goods or services and a description of the goods
or services on or in connection with which the mark is used.
(4) A reproduction of the mark.
(5) The registration date and the term of the registration of the
mark.
(b) Any certificate of registration issued by the secretary under
the provisions of this chapter or a copy thereof duly certified by
the secretary shall be admissible in evidence as competent and
sufficient proof of the registration of the mark in any action or
judicial proceeding in any court of this state.
14217. (a) A registration of mark pursuant to this chapter shall
be effective for a term of five years from the date of registration
and, upon application filed within six months prior to the expiration
of the term, in a manner complying with the requirements of the
secretary, the registration may be renewed for a like term from the
end of the expiring term. A renewal fee, payable to the secretary,
shall accompany the application for renewal of the registration as
set forth in subdivision (c) of Section 12193 of the Government Code.
(b) A registration may be renewed for successive periods of five
years in like manner.
(c) Any registration in force on January 1, 2008, 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 that
complies with the requirements of the secretary and payment of the
renewal fee within the six months prior to the expiration of the
registration.
(d) All applications for renewal under this chapter, whether of
registrations made under this chapter or of registrations effected
under any prior act, shall include a verified statement that the mark
has been and is still in use and shall include a specimen showing
actual use of the mark on, or in connection with, the goods or
services with which the mark is associated.
Article 4. Assignments, Changes of Name, and Other Instruments
14220. (a) Any mark and its registration hereunder 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
instrument in writing duly executed and may be recorded with the
secretary upon the payment of the recording fee payable to the
secretary as set forth in subdivision (b) of Section 12193 of the
Government Code, 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 chapter shall be void as
against any subsequent purchaser for valuable consideration without
notice, unless it is recorded with the secretary within three months
after the date thereof or prior to the subsequent purchase.
(b) Any registrant or applicant effecting a change of the name of
the person to whom the mark was issued or for whom an application was
filed may, on a form prescribed by the secretary, record a
certificate of change of name of the registrant or applicant with the
secretary upon the payment of the recording fee. The secretary may
issue in the name of the assignee a certificate of registration of an
assigned application or a new certificate or registration for the
remainder of the term of the registration or last renewal thereof.
(c) Other instruments that relate to a mark registered or
application pending pursuant to this chapter, including, but not
limited to, licenses, security interests, and mortgages,
may be recorded at the discretion of the secretary,
provided that the instrument is in writing and is duly executed.
(d) Acknowledgment shall be prima facie evidence of the execution
of an assignment or other instrument and, when recorded by the
secretary, the record shall be prima facie evidence of the execution
of an assignment.
(e) A photocopy of any instrument referred to in subdivision (a),
(b), or (c) shall be accepted for recording if it is certified by any
of the parties thereto, or their successors, to be a true and
correct copy of the original.
(f) Neither this chapter nor the recordal of any instrument
received by the secretary pursuant to this chapter shall have any
effect, including, but not limited to, any effect relating to
attachment, perfection, priority, or enforcement, on any security
interest governed by Division 9 (commencing with Section 9101) of the
Uniform Commercial Code.
Article 5. Records
14225. The secretary shall keep for public examination a record
of all marks registered or renewed under this chapter, as well as a
record of all documents recorded pursuant to Section 14220.
Article 6. Cancellation
14230. The secretary shall cancel from the register, in whole or
in part, any of the following:
(a) Any registration concerning which the secretary receives a
voluntary request for cancellation from the registrant or the
assignee of record.
(b) All registrations granted under this chapter and not renewed
in accordance with the provisions of this chapter.
(c) Any registration concerning a mark with regard to which a
court of competent jurisdiction finds any of the following:
(1) The registered mark has been abandoned.
(2) The registrant is not the owner of the mark.
(3) The registration was granted improperly.
(4) The registration was obtained fraudulently.
(5) The mark is or has become the generic name for the goods or
services, or a portion thereof, for which it has been registered.
(6) The registered mark is so similar 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, as to be likely to cause
confusion or mistake, or to deceive. However, should the registrant
prove that the registrant is the owner of a concurrent registration
of a mark in the United States Patent and Trademark Office covering
an area including this state, the registration hereunder shall not be
canceled for that area of the state.
(d) Cancellation of a registration ordered on any ground by a
court of competent jurisdiction.
(e) Any registration or renewal if a check or other remittance
accepted in payment of the filing fee is not paid upon presentation.
The secretary shall give written notice of the applicability of this
subdivision to the registrant. Thereafter, 30 days shall be allowed
from the date of the notification letter for payment by cashier's
check or the equivalent.
(f) Within six months of the date of registration, any
registration issued in error by the secretary that violates the
requirements of subdivision (f) of Section 14205.
Article 7. Classification
14235. The classification of goods and services shall conform to
the classifications adopted by the United States Patent and Trademark
Office. A single application for registration of a mark may include
any or all goods upon which, or services with which, the mark is
actually being used indicating the appropriate class or classes of
goods or services. When a single application includes goods or
services that fall within multiple classes, the secretary may require
payment of a fee for each class.
Article 8. Fraudulent Registration
14240. Any person who, either for himself or herself or on behalf
of another person, procures the filing or registration of any mark
pursuant to this chapter by knowingly making any false or fraudulent
representation or declaration, either orally or in writing, or by any
other fraudulent means shall be liable to pay all damages sustained
as a consequence of the filing or registration, to be recovered by or
on behalf of the party injured thereby in any court of competent
jurisdiction.
Article 9. Violations
14245. (a) A person who does any of the following shall be
subject to a civil action by the owner of the registered mark, and
the remedies provided in Section 14250:
(1) Uses, without the consent of the registrant, any reproduction,
counterfeit, copy, or colorable imitation of a mark registered under
this chapter in connection with the sale, distribution, offering for
sale, or advertising of any goods or services on or in connection
with which the use is likely to cause confusion or mistake, or to
deceive as to the source of origin of such goods or services.
(2) Reproduces, counterfeits, copies, or colorably imitates any
such mark and applies the reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles, or advertisements intended to be used upon or in
connection with the sale or other distribution in this state of any
goods or services. The registrant shall not be entitled under this
paragraph to recover profits or damages unless the acts have been
committed with knowledge that the mark is intended to be used to
cause confusion or mistake, or to deceive.
(3) Knowingly facilitate, enable, or otherwise assist a person to
manufacture, use, distribute, display, or sell any goods or services
bearing any reproduction, counterfeit, copy, or colorable imitation
of a mark registered under this chapter, without the consent of the
registrant. Any action by a person is presumed to have been taken
knowingly following delivery to that person by personal delivery,
courier, or certified mail return receipt requested, of a written
demand to cease and desist that is accompanied by all of the
following:
(A) A copy of the certificate of registration and of any claimed
reproduction, counterfeit, copy, or colorable imitation of the
registered mark.
(B) A statement, made under penalty of perjury, by the owner of
the registered mark, by an officer of the corporation that owns the
registered mark, or by legal counsel for the owner of the registered
mark, that includes all of the following:
(i) The name or description of the infringer.
(ii) The product or service and mark being or to be infringed.
(iii) The dates of the infringement.
(iv) Any other reasonable information to assist the recipient to
identify the infringer.
(4) The presumption created by paragraph (3) does not affect the
owner's burden of showing that there was a violation of this chapter.
(5) Paragraph (3) is applicable to a landlord or property owner
who provides, rents, leases, or licenses the use of real property
where any goods or services bearing any reproduction, counterfeit,
copy, or colorable imitation of a mark registered pursuant to this
chapter are sold, offered for sale, or advertised, where the landlord
or property owner had control of the property and knew, or had
reason to know, of the infringing activity.
(b) Notwithstanding any other provision of this chapter, the
remedies given to the owner of the right infringed pursuant to this
section are limited as follows:
(1) If an infringer or violator is engaged solely in the business
of printing the mark or violating matter for others and establishes
that he or she was an innocent infringer or innocent violator, the
owner of the right infringed is entitled only to an injunction
against future printing of the mark by the innocent infringer or
innocent violator.
(2) If the infringement complained of is contained in, or is part
of, paid advertising matter in a newspaper, magazine, or other
similar periodical, or in an electronic communication as defined in
subsection (12) of Section 2510 of Title 18 of the United States
Code, the remedies of the owner of the right infringed against the
publisher or distributor of the newspaper, magazine, or other similar
periodical or electronic communication shall be confined to an
injunction against the presentation of the advertising matter in
future issues of the newspapers, magazines, or other similar
periodicals or in further transmissions of the electronic
communication. The limitation of this subdivision shall apply only to
innocent infringers and innocent violators.
(3) Injunctive relief is not available to the owner of the right
infringed with respect to an issue of a newspaper, magazine, or other
similar periodical or electronic communication containing infringing
matter if restraining the dissemination of the infringing matter in
any particular issue of the periodical or in an electronic
communication would delay the delivery of the issue or transmission
of the electronic communication after the regular time for delivery
and the delay would be due to the method by which publication and
distribution of the periodical or transmission of the electronic
communication is customarily conducted in accordance with sound
business practice, and not to any method or device adopted for the
evasion of this section or to prevent or delay the issuance of an
injunction or restraining order with respect to the infringing
matter.
(c) An innocent infringer or innocent violator is any person whose
acts were committed without knowledge that the mark was intended to
be used to cause confusion, mistake, or to deceive.
14247. (a) Subject to the principles of equity, an owner of a
mark that is famous and distinctive, whether inherently or through
acquired distinctiveness, shall be entitled to an injunction against
another person's commercial
use of a mark or trade name, if such use begins after the 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. For
purposes of this subdivision, a mark is famous if it is widely
recognized by the general consuming public of this state, or by a
geographic area of this state, as a designation of source of the
goods or services of the mark's owner. In determining whether a mark
is famous, a court may consider factors including, but not limited
to, all of the following:
(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 in this
state of goods or services offered under the mark.
(3) The extent of actual recognition of the mark 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 (15 U.S.C. Sec. 1051 et seq.), as
amended.
(b) 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 injunctive relief is sought
willfully intended to cause dilution of the famous mark, the owner
shall also be entitled to the remedies set forth in Section 14250,
subject to the discretion of the court and the principles of equity.
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, including use in connection with either of the following:
(A) Advertising or promotion that permits consumers to compare
goods or services.
(B) Identifying and parodying, criticizing, or commenting upon the
famous mark owner or the goods or services of the famous mark owner.
(2) Noncommercial use of the mark.
(3) All forms of news reporting and news commentary.
14250. (a) Any owner of a mark registered under this chapter may
proceed by suit to enjoin the manufacture, use, display, or sale of
any counterfeits thereof and any court of competent jurisdiction may
grant injunctions to restrain the manufacture, use, display, or sale
as may be deemed just and reasonable, and shall require the
defendants to pay to the owner up to three times their profits from,
and up to three times all damages suffered by reason of, the wrongful
manufacture, use, display, or sale. If, in any action brought under
this section, the court determines that any goods in the possession
of or services offered by a defendant bear or consist of a
counterfeit mark, the court shall order the destruction of any goods,
labels, packaging or any components bearing the counterfeit mark and
all instrumentalities used in the production of the counterfeit
goods, including, but not limited to, any items, objects, tools,
machines or equipment or, after obliteration of the counterfeit mark,
the court may dispose of those materials by ordering their transfer
to the state, a civil claimant, an eleemosynary institution, or any
appropriate private person other than the person from whom the
materials were obtained.
(b) The court, upon motion or ex parte application by a plaintiff
in a suit to enjoin the manufacture, use, display, or sale of
counterfeits, may order seizure of any goods, labels, packaging or
any components bearing the counterfeit mark and all instrumentalities
used in the production of the counterfeit goods, including, but not
limited to, any items, objects, tools, machines or equipment from
persons manufacturing, displaying for sale, or selling the goods,
upon a showing of good cause and a probability of success on the
merits and upon the posting of an undertaking pursuant to subdivision
(e). If it appears from the ex parte application that there is good
reason for proceeding without notification to the defendant, the
court may, for good cause shown, waive the requirement of notice for
the ex parte proceeding. The order of seizure shall specifically set
forth all of the following:
(1) The date or dates on which the seizure is ordered to take
place.
(2) A description of the counterfeit goods to be seized.
(3) The identity of the persons or class of persons to effect
seizure.
(4) A description of the location or locations at which seizure is
to occur.
(5) A hearing date not more than 10 court days after the last date
on which seizure is ordered at which any person from whom goods are
seized may appear and seek release of the seized goods. Any person
from whom seizure is effected shall be served with the order at the
time of seizure.
(c) Any person who causes seizure of goods that are not
counterfeit shall be liable in an amount equal to the following:
(1) Any damages proximately caused to any person having a
financial interest in the seized goods by the seizure of goods that
are not counterfeit.
(2) Costs incurred in defending against seizure of noncounterfeit
goods.
(3) Upon a showing that the person causing the seizure to occur
acted in bad faith, expenses, including reasonable attorneys' fees
expended in defending against the seizure of any noncounterfeit or
noninfringing goods.
(4) Punitive damages, if warranted.
(d) A person entitled to recover pursuant to subdivision (c) may
seek a recovery by cross-claim or motion made in the trial court and
served pursuant to Section 1011 of the Code of Civil Procedure. A
person seeking a recovery pursuant to this section may join any
surety on an undertaking posted pursuant to subdivision (b), and any
judgment of liability shall bind the person liable pursuant to
subdivision (c) and the surety jointly and severally, but the
liability of the surety shall be limited to the amount of the
undertaking.
(e) The court shall set the amount of the undertaking required by
subdivision (b) in accordance with the probable recovery of damages,
costs, and expenses under subdivision (c) if it were ultimately
determined that the goods seized were not counterfeit.
(f) Any person entitled to recover under subdivision (c) may,
within 30 days after the date of seizure, object to the undertaking
on the grounds that the surety or the amount of undertaking is
insufficient.
(g) The motion or application filed pursuant to subdivision (b)
shall include a statement advising the person from whom the goods are
seized that the undertaking has been filed, informing him or her of
his or her right to object to the undertaking on the grounds that the
surety or the amount of the undertaking is insufficient, and
advising the person from whom the goods are seized that an objection
to the undertaking must be made within 30 days after the date of
seizure.
14252. The enumeration of any right or remedy herein shall not
affect a registrant's right to prosecute under any penal law of this
state, including, but not limited to, Section 350 of the Penal Code.
14254. (a) Actions to require cancellation of a mark registered
pursuant to this chapter or in mandamus to compel registration of a
mark pursuant to this chapter shall be brought in the superior court.
(b) In an action in mandamus, the proceeding shall be based solely
upon the record before the secretary. In an action for cancellation,
the secretary shall not be made a party to the proceeding, but shall
be notified of the filing of the complaint by the clerk of the court
in which it is filed and shall be given the right to intervene in
the action.
(c) In any action brought against a nonresident registrant,
service may be effected upon the secretary as agent for service of
the registrant in accordance with the procedures established for
service upon nonresident corporations and business entities under
Sections 416.10 to 416.40, inclusive, of the Code of Civil Procedure,
and Sections 2110, 2111, and 2114 of the Corporations Code.
14259. Nothing herein shall adversely affect the rights or the
enforcement of rights in marks acquired in good faith at any time
within common law.
Article 10. Fees
14260. Unless specified by the secretary, the fees payable herein
are not refundable.
Article 11. Severability
14265. If any provision of this chapter, or the application of
such provision to any person or circumstance is held invalid, the
remainder of this chapter shall not be affected thereby.
Article 12. Miscellaneous
14270. This chapter shall not affect any suit, proceeding, or
appeal pending on January 1, 2008.
14272. The intent of this chapter is to provide a system of state
trademark registration and protection substantially consistent with
the federal system of trademark registration and protection under the
Trademark Act of 1946 (15 U.S.C. Sec. 1051 et seq.), as amended. To
that end, the construction given the federal act should be examined
as nonbinding authority for interpreting and construing this chapter.