BILL ANALYSIS
AB 1484
Page 1
CONCURRENCE IN SENATE AMENDMENTS
AB 1484 (Krekorian)
As Amended August 31, 2007
Majority vote
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|ASSEMBLY: |74-0 |(May 17, 2007) |SENATE: |37-1 |(September 6, |
| | | | | |2007) |
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Original Committee Reference: JUD.
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
include a signed declaration of accuracy and subjects the
signer to civil penalties for willfully misstating material
facts.
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
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
AB 1484
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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.
The Senate amendments :
1)Make minor changes in the formal requirements for filing an
application for a trademark.
2)Make minor and clarifying changes to the definition of
"dilution".
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3)Make clarifying amendments relating to the effect of recording
a trademark on security interests governed by Division 9 of
the Uniform Commercial Code.
4)Omit the requirement that an application for a trademark be
signed under penalty of perjury and instead require that the
application be signed by a specified person and 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. Make corresponding changes in
provisions dealing with actions and remedies for violation of
a registered mark.
AS PASSED BY THE ASSEMBLY , this bill was substantially similar
to the version approved by the Senate.
FISCAL EFFECT : According to the Senate Appropriations
Committee, pursuant to Senate Rule 28.8, negligible state costs.
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, this bill 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
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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
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: 0002957