BILL ANALYSIS
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|SENATE RULES COMMITTEE | AB 1484|
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THIRD READING
Bill No: AB 1484
Author: Krekorian (D)
Amended: 7/17/07 in Senate
Vote: 21
SENATE JUDICIARY COMMITTEE : 4-1, 7/10/07
AYES: Harman, Ackerman, Kuehl, Steinberg
NOES: Corbett
SENATE APPROPRIATIONS COMMITTEE : Senate Rule 28.8
ASSEMBLY FLOOR : 74-0, 5/17/07 - See last page for vote
SUBJECT : Model State Trademark Law
SOURCE : Conference of Delegates of California Bar
Associations
DIGEST : This bill repeals Californias Trademark Law and,
instead, replace it with the Model State Trademark Law,
making numerous changes, including: (1) reducing the
registration period from 10 to 5 years; (2) requiring
applicants to state whether a similar mark has been
registered in this state; (3) conforming dilution
provisions to recent federal changes by adopting the
"likely to dilute" standard; (4) stating that federal case
law is persuasive authority; and (5) removing a the
provision stating that a registration constitutes prima
facie evidence of the registrant's right to use the mark in
California.
CONTINUED
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ANALYSIS : 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 repeals the Trademark Law and enact the Model
State Trademark Law with revised requirements for the
registration, abandonment, and enforcement of trademarks
and service marks, as specified.
This bill provides that any person who uses a mark may file
with the Secretary of State, on a form prescribed by the
secretary, an application for registration of that mark
that sets forth information about the applicant, the goods
or services on or in connection with which the mark is
used, and the date on which the mark was first used
anywhere, and the date when it was first used in this
state. This bill additionally requires 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 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.
This bill requires the application to include a civil
declaration of accuracy, signed by the applicant or other
individual, as specified. The declaration would state that
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, as
specified.
This bill also requires three specimens of the mark, and
require a certified translation to accompany the
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application if any part of the mark is in a language other
than English.
This bill provides that 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, of proof that all
statements in the application are true and that the mark is
otherwise entitled to registration.
This bill provides that the registration of a mark shall be
effective for a term of five years from the date of
registration and may be renewed for successive periods of
five years. This bill provides that any registration in
force on January 1, 2008 shall continue in full force and
effect for the unexpired term thereof, and may then be
renewed.
This bill allows any mark and its registration to be
assignable, as specified.
This bill requires the secretary to keep for public
examination a record of all marks registered or renewed
under the Model State Trademark Law, as well as a record of
documents assigning marks, as specified.
This bill requires the secretary to cancel marks upon
voluntary request, or non-renewal. This bill also requires
the secretary to cancel marks upon a court finding one of
several circumstances, including: (1) that the mark has
become the generic name for the goods or services for which
it has been registered; or (2) the registered mark is so
similar to a un-abandoned mark registered by another person
in the United States Patent and Trademark Office (USPTO)
prior to the date of the filing of the application for
registration by the registrant as to be likely to cause
confusion or mistake, or to deceive, as specified.
This bill allows the owner of a mark to bring a civil
action for the use, without consent, of any counterfeit
mark, the reproduction of any mark, and the knowing
assisting of the use of a counterfeit mark. This bill
would limit the remedies available to the owner of the mark
if there is an innocent infringer or violator, or the
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infringement is contained in paid advertising matter, as
specified.
This bill, subject to the principles of equity, allows the
owner of a mark that is famous and distinctive to 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, as specified. This bill also
allows the owner of the famous mark, in the case of willful
dilution, to additionally seek three times the defendant's
profits, and three times the damages, subject to the
discretion of the court and principles of equity.
This bill provides that 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
the source of the goods or services of the mark's owner.
This bill allows a court, in determining whether a mark is
famous, to consider various factors, including, but not
limited to the geographic reach of advertising, amount,
volume, and geographic extent of sales in this state,
actual recognition of the mark in this state, and whether
the mark is subject to federal or state registration.
This bill allows the owner of a famous mark to be entitled
to injunctive relief throughout the geographic area in
California in which the mark is found to have become famous
prior to the commencement of any junior use, as specified.
This bill states that the following uses are not actionable
under the famous mark provisions: (1) any fair use, as
specified; (2) noncommercial use of the mark; and (3) all
forms of news reporting and news commentary.
This bill defines "dilution" as "dilution by blurring" or
"dilution by tarnishment," regardless of the presence or
absence of competition between the famous mark and other
parties, actual or likely confusion, mistake or deception,
or actual economic injury. This bill would define
"dilution by blurring" as an association arising from the
similarity between a mark or a trade name and a famous mark
that impairs the distinctiveness of the famous mark. This
bill defines "dilution by tarnishment" as an association
arising from the similarity between a mark or a trade name
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and a famous mark that harms the reputation of the famous
mark.
This bill additionally allows the owner of a registered
mark to enjoin the manufacture, use, display, or sale of
counterfeits, as specified, including allowing damages of
three times the profits from, and three times all damages
suffered by reason of the wrongful manufacture, use,
display, or sale, as specified. This bill allows a
plaintiff to file an ex-parte application to enjoin the
manufacture, use, display, or sale of counterfeits, as
specified. This bill would provide that a person who
causes seizure of goods that are not counterfeit shall be
liable for the total of any damages proximately causes,
costs incurred, expenses, and punitive damages, as
specified.
This bill states that the Model State Trademark Law shall
not affect any suit, proceeding, or appeal pending on
January 1, 2008.
This bill states that the construction given the federal
Trademark Act of 1946 should be examined as persuasive
authority for interpreting and construing the Model State
Trademark Law.
This bill states the intent of the chapter 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.
FISCAL EFFECT : Appropriation: No Fiscal Com.: Yes
Local: No
SUPPORT : (Verified 8/20/07)
Conference of Delegates of California Bar Associations
(source)
Clorox Company; International Trademark Association
Motion Picture Association of America
Universal Studios
ARGUMENTS IN SUPPORT : According to the author's office,
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"AB 1484 will amend the current California Business and
Professions Code Sections 14200-14232 to bring California's
trademark law, now based largely on the 1949 version of the
Model State Trademark Bill, into conformance with the most
recent version of the MTSB. AB 1484 retains important
California provisions regarding anti-counterfeiting,
vicarious infringement, and seizures, which are not found
in the MSTB?The passage of the bill would help bring
California into alignment with federal trademark
infringement and dilution law as well as the law of 28
other states that have adopted the most recent version of
the MSTB."
ASSEMBLY FLOOR :
AYES: Adams, Aghazarian, Anderson, Arambula, Bass, Beall,
Benoit, Berg, Berryhill, Blakeslee, Brownley, Caballero,
Charles Calderon, Carter, Cook, Coto, Davis, De La Torre,
De Leon, DeSaulnier, DeVore, Duvall, Dymally, Emmerson,
Eng, Evans, Feuer, Fuller, Gaines, Galgiani, Garcia,
Garrick, Hancock, Hayashi, Hernandez, Horton, Houston,
Huff, Huffman, Jeffries, Jones, Karnette, Keene,
Krekorian, La Malfa, Laird, Leno, Levine, Lieber, Lieu,
Ma, Maze, Mendoza, Mullin, Nakanishi, Nava, Niello,
Parra, Plescia, Portantino, Sharon Runner, Salas,
Saldana, Silva, Smyth, Solorio, Spitzer, Strickland,
Swanson, Torrico, Tran, Villines, Walters, Wolk
NO VOTE RECORDED: Price, Richardson, Ruskin, Soto, Nunez,
Vacancy
RJG:nl 8/21/07 Senate Floor Analyses
SUPPORT/OPPOSITION: SEE ABOVE
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