Last month, California Governor Arnold Schwarzenegger approved AB 1484, the Model State Trademark Law. AB 1484 repeals California’s existing trademark statutes and will replace them with the most recent version of a Model State Trademark Bill which parallels federal law and has been adopted by 30 states so far. According to AB 1484, the bill:
- Expands 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.
- Requires that the application include a declaration of accuracy signed by a specified person and subjects 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.
- Provides procedures for amendment of an application and, if the secretary refuses registration, authorizes the applicant to seek a writ of mandamus to compel registration.
- Provides that registration of a mark is effective for 5 years, and may be renewed for successive 5-year periods.
- Expands the grounds upon which the secretary shall cancel a registration and specifies procedures for actions to compel registration or cancel a registration.
- Revises and recasts provisions dealing with actions and remedies for violation of a registered mark.
Among other important changes, the comments to AB 1484 indicate that the new California trademark law provides a cause of action for dilution of a trademark and defines terms such as “dilution” and “abandonment” in a way that is consistent with federal caselaw. According to Article 12, “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 … To that end, the construction given the federal act should be examined as nonbinding authority for interpreting and construing [California trademark statutes].”