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CSHB 450(L&C): "An Act relating to trademarks; amending Rule 609, Alaska Rules of Appellate Procedure; and providing for an effective date."

00 CS 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).