BILL ANALYSIS
AB 1484
Page 1
ASSEMBLY THIRD READING
AB 1484 (Krekorian)
As Amended April 16, 2007
Majority vote
JUDICIARY 10-0 APPROPRIATIONS 16-0
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|Ayes:|Jones, Tran, Adams, |Ayes:|Leno, Walters, Caballero, |
| |Evans, Feuer, Keene, | |Davis, DeSaulnier, |
| |Krekorian, Laird, Levine, | |Emmerson, Huffman, |
| |Lieber | |Karnette, Krekorian, La |
| | | |Malfa, |
| | | |De La Torre, Ma, |
| | | |Nakanishi, Nava, Sharon |
| | | |Runner, Solorio |
|-----+--------------------------+-----+--------------------------|
| | | | |
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SUMMARY : Repeals the existing trademark law and enacts the
Model State Trademark Law. Preserves many unique features of
California's existing trademark law but also makes many changes
that track developments in federal trademark law. Specifically,
this bill :
1)Expands the information required to be provided with an
application for registration to include, among other things, a
drawing of the mark and three specimens of that mark as it is
actually used. Provides further that applications must be
signed and verified under penalty of perjury.
2)Permits owners of trademark registration to record change of
name, security interests, or licenses.
3)Expands the grounds upon which the Secretary of State (SOS)
shall cancel a registration and specifies procedures for
actions to compel registration or cancel a registration.
4)Implements a number of changes designed to bring California
law into greater conformity with federal law and recent
developments in trademark case law. The most significant of
these changes do the following:
a) Reduces the duration of state trademark registrations
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from 10 years to five years, and provides that renewal
periods for registrations shall similarly be reduced from
10 years to five years.
b) Defines "abandonment," consistent with well-settled
federal case law, to mean either of the following: i) that
a mark's use has been discontinued with no intent to
resume; OR, ii) the owner's course of conduct, including
acts of omission as well as commission, causes the mark to
lose its significance as a mark. Provides further that
non-use for two consecutive years shall constitute prima
facie evidence of abandonment;
c) Provides a cause of action for dilution of a trademark,
defines "dilution," and enumerates the essential elements
for a finding of dilution;
d) Provides that state registration may be cancelled
because a mark has become "generic," and defines that term;
e) Provides that a trademark registration may be cancelled
if there is a likelihood of confusion with a mark that was
previously registered with the United States (U.S.) Patent
and Trademark Office, assuming the federal registrant's
rights extends to California;
f) Prevents applicants from knowingly filing an application
when they are aware that another person has previously
registered a similar mark;
g) Permits the SOS to require a trademark applicant to
state whether it previously sought to register the mark
with the U.S. Patent and Trademark Office and, if
registration was refused, to disclose why; and,
h) Declares that it is the intent of the Legislature to
provide a system of state trademark regulation that is
consistent with the federal system of trademark
registration and, to that end, the construction that the
courts give the federal act should be treated as persuasive
authority for interpreting and construing California
trademark statutes.
EXISTING LAW :
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1)Provides, generally, under the California Trademark Law, the
process by which trademarks and service marks shall be
registered and renewed with the SOS, and generally sets forth
the remedies that the holders of trademarks and service marks
have against persons or entities that wrongfully use, copy,
dilute, imitate, or otherwise infringe upon a validly
registered mark.
2)Provides that a registration is effective for 10 years and may
be renewed for successive 10-year periods.
3)Provides that the SOS shall cancel any registered mark that
has been abandoned, but does not define abandoned or
abandonment.
4)Provides that a person shall be subject to a civil action by
the owner of a registered mark for using, without the consent
of the registrant, any reproduction, counterfeit, copy, or
colorable imitation of a registered mark, in connection with
the sale, offering for sale, or advertising of any goods or
services in a manner that is likely to cause confusion as to
the source of those goods or services.
5)Provides that the holder of a mark may seek injunctive relief
against another party if the actions of the other party
produce a likelihood of injury to business reputation or
dilution of the distinctive quality of a registered mark,
notwithstanding the absence of competition between the parties
or the absence of confusion as to the source of goods and
services. Provides, however, that this provision does not
apply to the use of a mark in "comparative advertising," where
a competitor's trademark is used in advertising to compare the
relative qualities of the competitive goods.
6)Sets out various remedies for infringement of marks under
specified conditions, including injunctions against
counterfeit goods or destruction or seizure of goods.
Provides further that any right or remedy available to a
registrant under the trademark law does not affect a
registrant's right to prosecute under any penal law, including
but not limited to Penal Code Section 350, relating to the
counterfeiting of registered marks.
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7)Provides that an applicant must sign a statement 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 therefore."
FISCAL EFFECT : According to the Assembly Appropriations
Committee, the SOS will incur minor absorbable costs and a minor
revenue increase due to changing the renewable period from 10
years to five years.
COMMENTS : A trademark or service mark, for goods and services
respectively, may consist of any word, name, symbol, or device,
or any combination thereof, that is adopted and used by a person
to identify the goods or services manufactured or provided by
that person. Most importantly, the trademark or service mark is
used to distinguish those goods or services from goods or
services manufactured or provided by others.
California's existing trademark law was first adopted in 1941.
In 1967 it was repealed and replaced with one based on the Model
State Trademark Bill (MSTB), which was drafted by the
International Trademark Association (INTA). At the time
California adopted this MSTB in 1967, the most recent version of
MSTB was the one first promulgated in 1949. Since that time,
INTA has issued major revisions of the bill in 1992 and again in
1996 in order to codify important developments in trademark case
law and adapt to ever changing business conditions and
practices.
This bill would repeal California's existing trademark law and
replace it based on the 1996 INTA model bill. By adopting the
model bill, AB 1484 will also bring California into alignment
with federal trademark law and the 30 other states that have
already adopted one of the more recent version of MSTB. In
addition, this bill states the Legislature's intent to provide a
system of state trademark registration and protection that is
substantially consistent with the federal system of trademark
registration and protection. To that end, it is also the intent
of this bill that the construction the courts have given to
federal law should be treated as persuasive authority for
interpreting and construing the provisions of this bill.
This bill would make a wholesale change by repealing the
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relevant sections of the Business & Professions Code and
replacing it with one based on the 1996 model law. However,
some of the more important changes include reducing the
registration and renewal period from 10 to five years; defining
such key terms as "dilution" and "abandonment" in a manner
consistent with federal case law; and declaring the
Legislature's intent to make state consistent with federal law
and thereby allowing courts to treat well-developed federal case
law as persuasive authority for interpreting and construing
California trademark statutes.
Analysis Prepared by : Thomas Clark / JUD. / (916) 319-2334
FN: 0000603