Seattle Trademark Lawyer

California’s new trademark statute, the Model State Trademark Law, replaces the state’s Trademark Law with new provisions adapted from the model bill endorsed by the International Trademark Association. As with the version it replaces, the trademark statute remains codified at Section 14200 of the California Business and Professions Code.

The new statute:

• Reduces to five from ten years the term for which a mark may be registered or successively renewed;
• Brings the concepts of abandonment and dilution in line with federal case law; and
• Includes in the application a declaration of accuracy that subjects the declarant to a civil penalty of up to $10,000 for willfully stating as true any material fact he or she knows to be false.

I was particularly interested to learn of another revision that authorizes the secretary of state to require applicants to disclose if the Patent and Trademark Office had refused to register the mark:

“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.”

This strikes me as a big change. It certainly doesn’t reflect the law in my home state, where a refusal by the PTO would have no effect on a subsequent application to obtain a state registration. Indeed, a state registration is something of a fallback position here. Without examining attorneys in Olympia, registration of almost any mark in Washington is virtually assured. 

Even though California adopted INTA’s model, disclosing prior PTO activity is not part of the language INTA endorses. I wonder if California’s more aggressive approach will influence how other states approach registration.