CSHB 450(L&C): "An Act relating to trademarks; amending Rule 609, Alaska Rules of Appellate Procedure; and providing for an effective date."
00CS FOR HOUSE BILL NO. 450(L&C) 01 "An Act relating to trademarks; amending Rule 609, Alaska Rules of Appellate 02 Procedure; and providing for an effective date." 03 BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF ALASKA: 04 * Section 1. INTENT. It is the intent of the legislature to provide a system of state 05 trademark registration and protection substantially consistent with the federal system of 06 trademark registration and protection under 15 U.S.C. 1051 et seq., 1091 et seq., 1111 et seq. 07 (Trademark Act of 1946, as amended). To that end, the construction given the Trademark Act 08 of 1946, as amended, should be examined as a persuasive authority for interpreting and 09 construing AS 45.50.010 - 45.50.205 (Alaska Trademark Act). 10 * Sec. 2. AS 43.20.040(a) is amended to read: 11 (a) In this chapter, income from sources in the state includes 12 (1) income from real or tangible personal property located in the state; 13 (2) income of whatever nature from a business, trade or profession 14 having a business situs in the state and compensation for services rendered in the state;
01 (3) income from stocks, bonds, notes, bank deposits, and other 02 intangible personal property having a taxable or business situs in the state; 03 (4) rentals and royalties for the use of or for the privilege of using, in 04 the state, patents, copyrights, secret processes and formulas, good will, marks 05 [TRADEMARKS], trade brands, franchises, and other property having a taxable or 06 business situs in the state. 07 * Sec. 3. AS 45.50.010 is amended to read: 08 Sec. 45.50.010. REGISTRABILITY. A mark [TRADEMARK] may not be 09 registered if it consists of or comprises 10 (1) [CONSISTS OF] immoral, deceptive, or scandalous matter; 11 (2) [CONSISTS OF] matter that [WHICH] may disparage or falsely 12 suggest a connection with persons, living or dead, institutions, beliefs, or national 13 symbols, or bring them into contempt [,] or disrepute; 14 (3) [CONSISTS OF] the flag, [OR] coat of arms, or other insignia of 15 the United States, this or another [OR OF A] state, a [OR] municipality of this or 16 another state, [OR OF] a foreign nation, or simulation of any of these; 17 (4) [CONSISTS OF] the name, signature, or portrait identifying [OF] 18 a living individual, except with the written consent of the individual; 19 (5) [CONSISTS OF] a mark that, 20 (A) when used on or in connection with goods or services of 21 the applicant, is merely descriptive or deceptively misdescriptive of them; 22 [THE APPLICANT'S GOODS, OR] 23 (B) when used on or in connection with the goods or services 24 of the applicant, is primarily geographically descriptive or deceptively 25 misdescriptive of them; [THE APPLICANT'S GOODS, OR] 26 (C) is primarily merely a surname; however, this paragraph 27 does not prevent the registration of a mark used [IN THE STATE] by the 28 applicant that [WHICH] has become distinctive of the applicant's goods or 29 services; the commissioner may accept [;] as evidence that the mark has 30 become distinctive, as used on or in connection with the applicant's goods 31 or services, [THE COMMISSIONER MAY ACCEPT] proof of continuous use
01 of the mark as a mark by the applicant in this state [OR ELSEWHERE] for the 02 five years immediately preceding the date on which the claim of 03 distinctiveness is made [OF THE FILING OF THE APPLICATION FOR 04 REGISTRATION]; or 05 (6) [CONSISTS OF] a mark [TRADEMARK] that so resembles a 06 mark [TRADEMARK] registered in the state or in the United States Patent and 07 Trademark Office, [A TRADEMARK] or a mark [TRADE NAME] previously used 08 [IN THIS STATE] by another and not abandoned, as to be likely, when used on or 09 in connection with [APPLIED TO] the goods or services of the applicant, to cause 10 confusion or mistake or to deceive. 11 * Sec. 4. AS 45.50.010 is amended by adding a new subsection to read: 12 (b) For purposes of this section, 13 (1) "descriptive" means a word or combination of words that describes 14 one or more of the characteristics of the goods or services, such as, what the goods or 15 services are, what the goods are made of, or what the goods or services are used for; 16 however, an otherwise descriptive word or combination of words can, as a secondary 17 meaning, become accepted as identifying the goods or services of the applicant, in 18 which case it is no longer merely descriptive; 19 (2) "misdescriptive" means a word or combination of words that falsely 20 describes the nature, function, or capacity of goods or services. 21 * Sec. 5. AS 45.50.020 is amended to read: 22 Sec. 45.50.020. APPLICATION FOR REGISTRATION. Subject to 23 limitations under AS 45.50.010 - 45.50.205, a [A] person who [ADOPTS AND] uses 24 a mark [TRADEMARK] in the state may file with the commissioner 25 [DEPARTMENT], on a form furnished by the department and in a manner 26 complying with AS 45.50.010 - 45.50.205, an application for registration of that 27 mark [THE TRADEMARK] setting out the following information: 28 (1) the name and business address of the registrant [PERSON 29 APPLYING FOR REGISTRATION,] and, if the registrant is a 30 (A) corporation, the state of incorporation; or 31 (B) partnership, the state in which the partnership is
01 organized and the names of the general partners; 02 (2) the goods or services on or in connection with which the mark is 03 used, the manner in which the mark is used on or in connection with the goods or 04 services, and the class of the goods or services; 05 (3) the date when the mark [TRADEMARK] was first used anywhere 06 and the date when it was first used in this state by the applicant or a [THE 07 APPLICANT'S] predecessor in interest; [BUSINESS; AND] 08 (4) a statement that the applicant is the owner of the mark, that the 09 mark is in use, [TRADEMARK] and that, to the knowledge of the individual 10 verifying the application, no other person has the right to use the mark 11 [TRADEMARK IN THIS STATE] either in the identical form or in a near 12 resemblance to it as to [MIGHT] be likely, when applied to the goods or services 13 of another person, to cause confusion or mistake, or to deceive; and 14 (5) a statement as to whether the applicant, or a predecessor in 15 interest, has filed an application to register the mark, or portions or a composite 16 of the mark, with the United States Patent and Trademark Office, and, if so, 17 information regarding that application, including the filing date and serial 18 number, the status of that application, whether that application was refused 19 registration or otherwise did not result in a registration, and, if so, the reasons 20 that application did not result in a registration [CALCULATED TO DECEIVE OR 21 TO BE MISTAKEN FOR IT]. 22 * Sec. 6. AS 45.50 is amended by adding a new section to read: 23 Sec. 45.50.025. PROCEDURE CONCERNING APPLICATION. (a) Upon 24 the filing of an application for registration of a mark and payment of the application 25 fee, the commissioner shall examine the application for conformity with AS 45.50.010 26 - 45.50.205. The commissioner may request additional information, including a 27 description of a design mark, suggest amendments to the application, or suggest that 28 a new application be filed. The applicant may provide the additional information 29 requested, authorize the commissioner to make amendments to the application, or 30 withdraw the application and file a new one to respond to a potential objection or 31 rejection.
01 (b) As a condition of registration, the commissioner may require the applicant 02 to disclaim an unregisterable component of a mark, or an applicant may voluntarily 03 disclaim a component of a mark originally sought to be registered. A disclaimer under 04 this subsection does not prejudice or affect the rights of an applicant or registrant 05 (1) in the disclaimed matter that exist at the time of the disclaimer or 06 that arise later; or 07 (2) to register the disclaimed matter in another application if the 08 disclaimed matter is or becomes distinctive of the applicant's or registrant's goods or 09 services. 10 (c) If an applicant is found not to be entitled to registration of a mark, the 11 commissioner shall notify the applicant and inform the applicant of the reasons for the 12 finding. The commissioner shall give the applicant a reasonable period of time in 13 which to reply or amend the application. If a reply or amendment is delivered to the 14 commissioner within the designated period, the commissioner shall reexamine the 15 application. Before making a final decision, an application may be amended and 16 reexamined as many times as the commissioner determines to be necessary. However, 17 if the applicant fails to reply or amend the application within the period designated by 18 the commissioner, the application is considered abandoned. 19 (d) When the commissioner makes a final decision on the application, the 20 commissioner shall notify the applicant in writing of the decision and that the decision 21 is final, setting out the reasons for the decision if the application is disapproved. The 22 applicant may appeal the commissioner's final decision to the superior court, which 23 shall hear the matter de novo. The court may enter judgment setting aside, modifying, 24 remanding, or affirming the decision. 25 (e) If the commissioner receives more than one application for registration of 26 the same or a confusingly similar mark for the same or related goods or services, the 27 commissioner shall grant the registration to the applicant who first filed the original 28 application if the application otherwise qualifies for registration. A rejected applicant 29 may bring an action in superior court for cancellation of the registration upon the 30 grounds of prior or superior rights to the mark. 31 * Sec. 7. AS 45.50.030 is amended to read:
01 Sec. 45.50.030. FORM OF APPLICATION. The application shall be signed 02 and verified by the applicant or by a member of the firm or an officer of the 03 corporation, partnership, or association applying. The application shall be 04 accompanied by three specimens showing the actual use of the mark on or in 05 connection with the goods or services [A SPECIMEN OR FACSIMILE OF THE 06 TRADEMARK IN TRIPLICATE]. 07 * Sec. 8. AS 45.50.040 is amended to read: 08 Sec. 45.50.040. FILING FEE. The application for registration shall be 09 accompanied by a filing fee established by the department by regulation [OF $10 10 PAYABLE TO THE DEPARTMENT OF COMMERCE AND ECONOMIC 11 DEVELOPMENT]. 12 * Sec. 9. AS 45.50.050 is amended to read: 13 Sec. 45.50.050. FORM AND CONTENTS OF CERTIFICATE OF 14 REGISTRATION. Upon compliance by the applicant with the requirements of 15 AS 45.50.010 - 45.50.205 [AS 45.50.010 - 45.50.200], the commissioner shall issue 16 and deliver a certificate of registration to the applicant. The certificate of registration 17 shall be issued under the signature of the commissioner and the seal of the state. The 18 certificate must show 19 (1) the name and business address [AND, IF A CORPORATION, THE 20 STATE OF INCORPORATION,] of the registrant and, if that registrant is a 21 (A) corporation, the state of incorporation; or 22 (B) partnership, the state in which the partnership is 23 organized and the names of the general partners [; PERSON CLAIMING 24 OWNERSHIP OF THE TRADEMARK]; 25 (2) the date claimed for the first use of the mark [TRADEMARK] 26 anywhere and the date claimed for the first use of the mark [TRADEMARK] in this 27 state; 28 (3) the class of goods or services and a description of the goods or 29 services on or in connection with which the mark [TRADEMARK] is used; 30 (4) a reproduction of the mark [TRADEMARK]; 31 (5) the registration date; and
01 (6) the term of the registration. 02 * Sec. 10. AS 45.50.060 is amended to read: 03 Sec. 45.50.060. CERTIFICATE OF REGISTRATION AS EVIDENCE. A 04 certificate of registration issued by the commissioner [DEPARTMENT] under 05 AS 45.50.010 - 45.50.205 [THE PROVISIONS OF AS 45.50.010 - 45.50.200] or a 06 copy of it certified by the commissioner is admissible in evidence as competent and 07 sufficient proof of the registration of the mark [TRADEMARK] in an action or 08 judicial proceeding in the state. 09 * Sec. 11. AS 45.50.070 is amended to read: 10 Sec. 45.50.070. DURATION AND RENEWAL. Registration of a mark 11 [TRADEMARK] is effective for a term of five [10] years from the date of registration. 12 Upon application filed within six months before the expiration of the term in a 13 manner complying with the requirements of the commissioner [, ON A FORM 14 FURNISHED BY THE DEPARTMENT], the registration may be renewed for an 15 additional term of five [10] years. 16 * Sec. 12. AS 45.50.070 is amended by adding a new subsection to read: 17 (b) An application for renewal of a registration must include a verified 18 statement that the mark has been used and is still in use. Three specimens showing 19 actual use of the mark on or in connection with the goods or services shall be 20 submitted with the renewal application. 21 * Sec. 13. AS 45.50.080 is amended to read: 22 Sec. 45.50.080. FEE FOR RENEWAL OF REGISTRATION. A renewal fee 23 established by the department by regulation [OF $10] shall accompany the 24 application for renewal of the registration. 25 * Sec. 14. AS 45.50.090 is amended to read: 26 Sec. 45.50.090. ADDITIONAL TERMS OF RENEWAL. A [TRADEMARK] 27 registration of a mark may be renewed for successive periods of five [10] years in the 28 manner provided in AS 45.50.070 and 45.50.080. 29 * Sec. 15. AS 45.50.100 is amended to read: 30 Sec. 45.50.100. NOTIFICATION OF EXPIRATION OF REGISTRATION 31 PERIOD. The commissioner shall notify each registrant of the necessity of renewal
01 at least six months [WITHIN THE YEAR] preceding the expiration [OF THE 10 02 YEARS FROM THE] date of the registration. Notification shall be by writing to the 03 last known address of the registrant. 04 * Sec. 16. AS 45.50.120 is amended to read: 05 Sec. 45.50.120. ASSIGNMENT. (a) A mark [TRADEMARK] and its 06 registration are assignable with the goodwill of the business in which the mark 07 [TRADEMARK] is used, or with that part of the goodwill of the business connected 08 with the use of and symbolized by the mark [TRADEMARK]. 09 (b) An assignment shall be in writing and may be filed [RECORDED] with 10 the commissioner [DEPARTMENT] upon the payment of a fee established by [OF 11 $2, PAYABLE TO] the department by regulation. The commissioner shall file 12 [RECORD] the assignment [,] and shall issue in the name of the assignee a new 13 certificate for the remainder of the term of the registration. 14 (c) An assignment of registration is void as against a subsequent purchaser for 15 valuable consideration without notice, unless it is filed [RECORDED] with the 16 commissioner [DEPARTMENT] within three months after the date of the assignment 17 or before the subsequent purchase. 18 * Sec. 17. AS 45.50 is amended by adding a new section to read: 19 Sec. 45.50.125. NAME CHANGE AND OTHER FILINGS. (a) The name of 20 a registrant or applicant may be changed by filing the change of name with the 21 commissioner on a form furnished by the department that has been signed and verified 22 by the registrant or applicant and paying a filing fee established by the department by 23 regulation. The commissioner shall issue in the changed name of a registrant an 24 amended certificate of registration. 25 (b) Other signed and verified instruments that relate to a registered mark or 26 an application for registration of a mark may be filed at the discretion of the 27 commissioner upon payment of a filing fee established by regulation of the department. 28 (c) A photocopy of an instrument shall be accepted by the commissioner for 29 filing if it is certified by a party to the instrument or a successor of a party to be a true 30 and correct copy of the original and if the commissioner would have accepted the 31 original for filing under (a) or (b) of this section.
01 (d) Acknowledgment is prima facie evidence for the commissioner of the 02 execution of an assignment, change of name, or other instrument related to a registered 03 mark or to registration of a mark. When the instrument is filed by the commissioner, 04 the filing is prima facie evidence of execution of the instrument for all other purposes. 05 * Sec. 18. AS 45.50.130 is amended to read: 06 Sec. 45.50.130. COMMISSIONER TO KEEP RECORD OF REGISTRATION. 07 The commissioner shall keep for public examination a record of all marks 08 [TRADEMARKS] registered or renewed under AS 45.50.010 - 45.50.205 and a 09 record of all instruments filed under AS 45.50.125 [AS 45.50.010 - 45.50.200]. 10 * Sec. 19. AS 45.50.140 is amended to read: 11 Sec. 45.50.140. CANCELLATION. The commissioner shall cancel in whole 12 or in part [FROM THE REGISTER] 13 (1) [EACH REGISTRATION UNDER A PREVIOUS LAW THAT IS 14 MORE THAN FIVE YEARS OLD AND NOT RENEWED IN ACCORDANCE 15 WITH AS 45.50.010 - 45.50.200; 16 (2)] a registration for which the commissioner receives a voluntary 17 written request for cancellation from [REQUESTED BY] the registrant or the 18 assignee of record [RECORDS TO BE CANCELED]; 19 (2) [(3)] each registration [UNDER AS 45.50.010 - 45.50.200] that 20 expires and is not renewed under AS 45.50.070 and 45.50.090; 21 (3) [(4)] a registration found by a court to be 22 (A) abandoned; [,] 23 (B) not owned by the registrant; [,] 24 (C) granted improperly; [,] 25 (D) obtained fraudulently; [, OR] 26 (E) so similar, as to be likely to cause confusion or mistake or 27 to deceive, to a mark [TRADEMARK] registered by another person in the 28 United States Patent and Trademark Office, before the date of filing of the 29 application for registration by the registrant under AS 45.50.010 - 45.50.205 30 [AS 45.50.010 - 45.50.200], and not abandoned; however, if the registrant 31 proves that the registrant is the owner of a concurrent registration of the mark
01 [TRADEMARK] in the United States Patent and Trademark Office covering 02 an area including this state, the registration may not be canceled; or 03 (F) the generic name for all or a portion of the goods or 04 services for which the mark has been registered; 05 (4) [(5)] when a court orders cancellation of a registration on any 06 ground. 07 * Sec. 20. AS 45.50.140 is amended by adding a new subsection to read: 08 (b) For purposes of (a) of this section, registration of a mark is abandoned 09 when use of the mark has been discontinued and the registrant has no intent to resume 10 its use, or when the mark loses its significance as a mark due to action or failure to 11 act by the registrant. The intent not to resume the use of a mark may be inferred from 12 circumstances. No use of a mark by the registrant for at least a 24-month period 13 constitutes prima facie evidence that its registration has been abandoned. 14 * Sec. 21. AS 45.50.150 is amended to read: 15 Sec. 45.50.150. CLASSIFICATION. The department shall by regulation 16 establish a classification [FOLLOWING GENERAL CLASSES] of goods and 17 services [ARE ESTABLISHED] for convenience of administration of AS 45.50.010 - 18 45.50.205 [AS 45.50.010 - 45.50.200]. However, the classification does [THEY DO] 19 not limit or extend the applicant's or registrant's rights, and a single application for 20 registration of a mark [TRADEMARK] may include [ANY OR] all goods upon 21 which, or services with which, the mark [TRADEMARK] is actually being used 22 comprised in a single class, but in no event may a single application include goods or 23 services upon which the mark [TRADEMARK] is being used that [WHICH] fall 24 within different classes of goods or services. To the extent practical, the 25 classification of goods and services should conform to the classification adopted 26 by the United States Patent and Trademark Office [. THE CLASSES ARE 27 AS FOLLOWS: 28 (1) ABRASIVES AND POLISHING MATERIALS; 29 (2) ADHESIVES; 30 (3) BAGGAGE, ANIMAL EQUIPMENT, PORTFOLIOS, AND 31 POCKETBOOKS;
01 (4) BELTING, HOSE, MACHINERY PACKING, AND 02 NONMETALLIC TIRES; 03 (5) BROOMS, BRUSHES, AND DUSTERS; 04 (6) CANES, PARASOLS, AND UMBRELLAS; 05 (7) CHEMICALS AND CHEMICAL COMPOSITIONS; 06 (8) CLOTHING; 07 (9) CONSTRUCTION MATERIALS; 08 (10) CORDAGE; 09 (11) COSMETICS AND TOILET PREPARATIONS; 10 (12) CROCKERY, EARTHENWARE, AND PORCELAIN; 11 (13) CUTLERY, MACHINERY, AND TOOLS, AND PARTS 12 THEREOF; 13 (14) DENTAL, MEDICAL, AND SURGICAL APPLIANCES; 14 (15) DETERGENTS AND SOAPS; 15 (16) DISTILLED ALCOHOLIC LIQUORS; 16 (17) ELECTRICAL APPARATUS, MACHINES AND SUPPLIES; 17 (18) EXPLOSIVES, FIREARMS, EQUIPMENT, AND PROJECTILES; 18 (19) FANCY GOODS, FURNISHINGS, AND NOTIONS; 19 (20) FERTILIZERS; 20 (21) FILTERS AND REFRIGERATORS; 21 (22) FOODS AND INGREDIENTS OF FOODS; 22 (23) FURNITURE AND UPHOLSTERY; 23 (24) GAMES, TOYS, AND SPORTING GOODS; 24 (25) GLASSWARE; 25 (26) HARDWARE AND PLUMBING AND STEAMFITTING 26 SUPPLIES; 27 (27) HEATING, LIGHTING, AND VENTILATING APPARATUS; 28 (28) HOROLOGICAL INSTRUMENTS; 29 (29) INKS AND INKING MATERIALS; 30 (30) JEWELRY AND PRECIOUS METALWARE; 31 (31) KNITTED, NETTED AND TEXTILE FABRICS, AND
01 SUBSTITUTES FOR THEM; 02 (32) LAUNDRY APPLIANCES AND MACHINES; 03 (33) LINOLEUM AND OILED CLOTH; 04 (34) LOCKS AND SAFES; 05 (35) MALT BEVERAGES AND LIQUORS; 06 (36) MEASURING AND SCIENTIFIC APPLIANCES; 07 (37) MEDICINES AND PHARMACEUTICAL PREPARATIONS; 08 (38) METALS AND METAL CASTINGS AND FORGINGS; 09 (39) MUSICAL INSTRUMENTS AND SUPPLIES; 10 (40) OILS AND GREASES; 11 (41) PAINTS AND PAINTERS' MATERIALS; 12 (42) PAPER AND STATIONERY; 13 (44) RAW OR PARTLY PREPARED MATERIALS; 14 (45) RECEPTACLES; 15 (46) SMOKERS' ARTICLES, NOT INCLUDING TOBACCO 16 PRODUCTS; 17 (47) SOFT DRINKS AND CARBONATED WATERS; 18 (48) THREAD AND YARN; 19 (49) TOBACCO PRODUCTS; 20 (50) VEHICLES; 21 (51) WINES; 22 (52) MERCHANDISE NOT OTHERWISE CLASSIFIED]. 23 * Sec. 22. AS 45.50.160 is amended to read: 24 Sec. 45.50.160. FRAUDULENT REGISTRATION. A person who, for the 25 person or on behalf of another, procures the filing or registration of a mark under 26 AS 45.50.010 - 45.50.205 [TRADEMARK WITH THE DEPARTMENT,] by 27 knowingly making a false or fraudulent representation or declaration, orally 28 [VERBALLY] or in writing, or by another [ANY OTHER] fraudulent means, is liable 29 to pay all damages sustained in consequence of the filing or registration, which may 30 be recovered by or on behalf of the party injured in any court. 31 * Sec. 23. AS 45.50.170 is amended to read:
01 Sec. 45.50.170. INFRINGEMENT. A [SUBJECT TO AS 45.50.190, A] 02 person is liable in a civil action by the registrant [OWNER OF THE REGISTERED 03 TRADEMARK] for the remedies provided in AS 45.50.180 [,] if the person 04 (1) uses, without the consent of the registrant, a reproduction, 05 counterfeit, copy, or colorable imitation of a mark [TRADEMARK] registered under 06 AS 45.50.010 - 45.50.205 [AS 45.50.010 - 45.50.200] in connection with the sale, 07 distribution, offering for sale, or advertising of goods or services on or in connection 08 with which the use is likely to cause confusion or mistake or to deceive as to the 09 source of origin of the goods or services; or 10 (2) reproduces, counterfeits, copies, or colorably imitates the mark 11 [TRADEMARK] and applies the reproduction, counterfeit, copy, or colorable imitation 12 to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to 13 be used upon or in conjunction with the sale or distribution in this state of the goods 14 or services; except that under this paragraph the registrant may not recover profits or 15 damages unless the acts are committed with [KNOWLEDGE THAT] the intent 16 [TRADEMARK IS INTENDED TO BE USED] to cause confusion or mistake or to 17 deceive. 18 * Sec. 24. AS 45.50.180(a) is amended to read: 19 (a) A registrant [THE OWNER OF A TRADEMARK REGISTERED 20 UNDER AS 45.50.010 - 45.50.200] may enjoin the manufacture, use, display, or sale 21 of a counterfeit or imitation of the registrant's mark [TRADEMARK]. 22 * Sec. 25. AS 45.50.180(b) is amended to read: 23 (b) The court may grant an injunction to restrain the manufacture, use, display, 24 or sale, and may require the defendant to pay to the registrant either [OWNER] the 25 profits derived from or the damages suffered by reason of the wrongful manufacture, 26 use, display, or sale, or both. The court may also order that the counterfeit or 27 imitation in the possession or under the control of a defendant be delivered to an 28 officer of the court, or to the complainant, to be destroyed. The court may also enter 29 judgement for punitive damages in an amount not to exceed three times the 30 profits, damages, and reasonable attorney fees of the prevailing party. 31 * Sec. 26. AS 45.50.180 is amended by adding new subsections to read:
01 (d) A registrant that owns a mark that is famous in the state is entitled to an 02 injunction against another's dilution of the mark. If the user of the famous mark 03 wilfully intended to trade on the registrant's reputation or to cause dilution of the 04 mark, the registrant is also entitled to remedies set out in (b) of this section. In 05 determining whether a mark is famous, a court may consider any factor, including the 06 (1) degree of inherent or acquired distinctiveness of the mark in the 07 state; 08 (2) duration and extent of use of the mark in connection with the goods 09 and services; 10 (3) duration and extent of advertising and publicity of the mark in the 11 state; 12 (4) geographical extent of the trading area in which the mark is used; 13 (5) channels of trade for the goods or services with which the mark is 14 used; 15 (6) degree of recognition in the state of the mark in the registrant's 16 trading area and channel of trade, and in the user's trading area and channel of trade; 17 and 18 (7) nature and extent of use of the same or similar mark by other 19 persons. 20 (e) For purposes of (d) of this section, "dilution" means the use of a word, 21 symbol, or device, or a combination of one or more of these, in a manner that deprives 22 or reduces the distinctiveness of a mark. 23 * Sec. 27. AS 45.50.200 is amended to read: 24 Sec. 45.50.200. DEFINITIONS. In AS 45.50.010 - 45.50.205, [AS 45.50.010 - 25 45.50.200] 26 (1) "applicant" means the person filing an application for registration 27 of a mark [TRADEMARK], or a legal representative, successor, or assign of that 28 person; 29 (2) "certification mark" means a mark used upon or in connection 30 with the goods or services of one or more persons other than the registrant to 31 certify national or other origin, material, mode of manufacture, quality, accuracy,
01 or other characteristics of the goods or services or that the work or labor on the 02 goods or services was performed by members of a union or other organization; 03 (3) "collective mark" means a trademark or service mark used by 04 the members of a cooperative, an association or other collective group or 05 organization and includes marks used to indicate membership in a union, an 06 association, or other organization; 07 (4) "commissioner" means the commissioner of commerce and 08 economic development; 09 (5) [(3)] "department" means the Department of Commerce and 10 Economic Development; 11 (6) "mark" [(4) "PERSON"] means a certification mark, a collective 12 mark, a service mark, or a trademark; 13 (7) [AN INDIVIDUAL, FIRM, PARTNERSHIP, CORPORATION, 14 ASSOCIATION, UNION OR OTHER ORGANIZATION; 15 (5)] "registrant" means the person to whom the registration of a mark 16 [TRADEMARK] is issued, or a legal representative, successor, or assign of that 17 person; 18 (8) "service mark" means a word, symbol, design, or a combination 19 of one or more of these that identifies the services of a person; 20 (9) [(6)] "trademark" means a word, symbol, or design, or a 21 combination of one or more of these, used by a person to identify its goods and 22 distinguish them from those of another; 23 (10) "use" or "used" means the bona fide use of a mark in the 24 ordinary course of trade, and not made merely to reserve a right in the mark; a 25 mark is deemed to be in use on goods when it is placed in any manner on the 26 goods, on the goods' container, on tags or labels affixed to the goods, on displays 27 associated with the goods, or, if the nature of the goods makes other types of 28 placement impracticable, on documents associated with the goods or with the sale 29 of the goods when they are sold or transported in commerce in this state; a mark 30 is deemed to be in use on services when it is displayed in the sale or advertising 31 of services that are performed in this state;
01 (11) "verified" means that a document has been certified to be true 02 as provided in AS 09.63.040 [NAME, SYMBOL, OR DEVICE OR COMBINATION 03 OF ANY OF THESE ADOPTED AND USED BY A PERSON TO IDENTIFY 04 GOODS MADE OR SOLD BY THE PERSON AND TO DISTINGUISH THEM 05 FROM GOODS MADE OR SOLD BY OTHERS; 06 (7) A TRADEMARK IS "USED" IN THIS STATE WHEN IT IS 07 PLACED IN ANY "USED" MANNER ON GOODS OR THEIR CONTAINERS OR 08 ON THE TAGS OR LABELS AFFIXED TO GOODS, WHEN THE GOODS ARE 09 SOLD OR DISTRIBUTED IN THE STATE]. 10 * Sec. 28. AS 45.50 is amended by adding a new section to article 1 to read: 11 Sec. 45.50.205. SHORT TITLE. AS 45.50.010 - 45.50.205 may be cited as 12 the Alaska Trademark Act. 13 * Sec. 29. AS 45.50.180(c) and 45.50.190 are repealed. 14 * Sec. 30. AS 45.50.025(d), added by sec. 6 of this Act, amends Alaska Rule of Appellate 15 Procedure 609 by requiring a de novo hearing on appeals under AS 45.50.025. 16 * Sec. 31. TRANSITION. The amendments made to AS 45.50.010 - 45.50.200 by this Act 17 do not apply to an application, suit, proceeding or appeal pending on the effective date of this 18 Act. Notwithstanding the amendments made to AS 45.50.070 - 45.50.090 in secs. 11 - 14 of 19 this Act, a registration or renewal of a registration that is in effect on the effective date of this 20 Act remains in effect for the full term that existed on the date of the registration or renewal. 21 * Sec. 32. AUTHORIZATION TO ADOPT REGULATIONS. The Department of 22 Commerce and Economic Development may adopt regulations to implement this Act; 23 however, the regulations may not be effective before the effective date of this Act. 24 * Sec. 33. Sections 1 - 31 of this Act take effect January 1, 1997. 25 * Sec. 34. Section 32 of this Act takes effect immediately under AS 01.10.070(c).