Legislature(1995 - 1996)

02/19/1996 03:10 PM L&C

Audio Topic
* first hearing in first committee of referral
+ teleconferenced
= bill was previously heard/scheduled
txt
 HB 450 - ALASKA TRADEMARK ACT                                               
                                                                               
 Number 050                                                                    
                                                                               
 CHAIRMAN PETE KOTT announced the first order of business the                  
 committee would address would be HB 450, "An Act relating to                  
 trademarks; amending Alaska Rule of Appellate Procedure 609; and              
 providing for an effective date."                                             
                                                                               
 WILDA WHITAKER, Legislative Administrative Assistant to                       
 Representative Gene Therriault, Alaska State Legislature, read the            
 sponsor statement into the record:                                            
                                                                               
      "This legislation is intended to update the State Trademark              
      Act.  Alaska's current law is modeled upon the 1964 Lanham               
      Act.  The proposed revision is to bring Alaska's trademark law           
      current with the changes to the Lanham Act over the past 30              
      years, and is modeled closely to the Model State Trademark               
      Bill written by the International Trademark Association.  This           
      revision will allow the registration of marks that currently             
      cannot be registered under state law, such as service marks,             
      certification marks and collective marks.  The legislation was           
      introduced at the request of the Division of Banking,                    
      Securities and Corporations.  Passage of the legislation is              
      needed to strengthen the intellectual property rights for                
      Alaska's business community."                                            
                                                                               
 MS. WHITAKER said in addition, she would like to ask for a simple             
 amendment that would allow the department to implement regulations            
 so they will be in effect by the time the bill becomes effective.             
 An amendment is needed to be able to do that.  Ms. Whitaker said              
 there is a letter of support from Don and Rose Harris, Owners, Red            
 Dog Saloon.  She indicated they have had to fight several                     
 infringements on their trademark over the past several years.  They           
 have found existing law protection to be vague and almost                     
 impossible to defend.                                                         
                                                                               
 MS. WHITAKER noted the Department of Commerce and Economic                    
 Development has provided a position paper.  The department says the           
 major improvements are to broaden trademark protection to protect             
 service providers, adding additional remedies to trademark owners             
 for infringement and providing anti-dilution provisions for                   
 intellectual property owners whose trademark has become famous in             
 this state.                                                                   
                                                                               
 CHAIRMAN KOTT announced Representative Kubina arrived at 3:14 p.m.            
                                                                               
 Number 288                                                                    
                                                                               
 MIKE MONAGLE, Supervisor, Records and Licensing, Division of                  
 Banking, Securities and Corporations, Department of Commerce and              
 Economic Development, came forward to testify on HB 450.  He                  
 informed the committee he is a member of the International                    
 Association of Trademark and Corporate Administrators (IATCA).  Mr.           
 Monagle explained that several years ago the United States                    
 Trademark Association, which is currently known as the                        
 International Trademark Association (INTA), approached his                    
 organization with the idea of updating the State Model Trademark              
 Act.  He noted the existing model dated back to the early 1960s.              
 They saw a need to get a model out there that would bring in a lot            
 of the changes that have taken place in the federal Lanham Act.               
 They desired to see some consistency among the states as practicing           
 attorneys who have to file at the federal level often ran into                
 problems with various states having different variations of the               
 law.  They approved it.  The Act has also been approved by the                
 National Association of Secretaries of State and IATCA.  He said it           
 is his understanding that the American Bar Association Committee on           
 Model Legislation has tentatively approved it and will formally do            
 so within the next year.                                                      
                                                                               
 Number 389                                                                    
                                                                               
 CHAIRMAN KOTT said HB 450 refers to an applicant's entitlement to             
 register a mark and asked what the general time frame would be that           
 the commissioner could be expected to respond.                                
                                                                               
 MR. MONAGLE explained the commissioner who is listed in the                   
 existing law also is the officer who would file.  He noted his                
 agency is the dedicated agency that files on behalf of the                    
 commissioner.  Their typical turnaround time is about a week of               
 processing time and it shouldn't change.                                      
                                                                               
 CHAIRMAN KOTT referred to the filing fee and asked what changes are           
 expected.                                                                     
                                                                               
 MR. MONAGLE said currently, the fee set out in statute is $10 per             
 class code.  You would have a separate registration for each class            
 of goods that you registered under.  Part of the bill takes that              
 fee out of the statute and puts it into regulation.  He noted he              
 believes the fiscal note the committee has is based on a proposed             
 fee of $50 per class code.  Mr. Monagle said he realizes that is a            
 substantial increase but there hasn't been a change in 30 years to            
 that fee.  A survey done by IATCA several years ago showed that the           
 average fee charged by states was approximately $35 with about                
 eight states charging anywhere from $50 to $100.  Mr. Monagle                 
 explained the federal registration for a trademark is about $350              
 per class.                                                                    
                                                                               
 CHAIRMAN KOTT asked if the amount is sufficient enough to cover the           
 cost of the program.                                                          
                                                                               
 MR. MONAGLE explained there is currently one full-time person                 
 working 20 hours a week processing registrations.  The term of the            
 registration would also match what is being done with the federal             
 act.  Currently, the length of the registration is ten years and              
 would be decreased to five years.  The renewal fee would be the               
 same as the initial registration which is similar to what it                  
 currently is.                                                                 
                                                                               
 Number 570                                                                    
                                                                               
 REPRESENTATIVE KIM ELTON referred to a trademark registered with              
 the federal government and asked if a person would also have to               
 register it with the state.                                                   
                                                                               
 MR. MONAGLE said it is technically correct that they wouldn't have            
 to register with the state.  In practice, a lot of attorneys will             
 register in each state on the assumption that litigation is cheaper           
 or they avoid litigation if they register in each state in addition           
 to the federal government.  The reason is most states check with              
 the federal government when they have a registration.  What the               
 practices will do is take a federal registration out and then make            
 sure they get a registration in each state that their clients are             
 doing business.  The federal registration covers interstate                   
 commerce.                                                                     
                                                                               
 Number 639                                                                    
                                                                               
 CHAIRMAN KOTT asked if there is a real problem being addressed by             
 reducing the renewal from ten years to five years.                            
                                                                               
 MR. MONAGLE explained the intent is to get rid of the "dead wood."            
 Once the registration goes into effect, that mark is tied up for              
 ten years.  Under the federal proposal, their initial registration            
 is good, he thought, for one or two years.  The person registering            
 has to reaffirm that they are using that mark within that period              
 and then it will be extended out for the remaining five years.  He            
 said he doesn't anticipate it would cause any problems.  He noted             
 all states have some type of renewal or assignment provision.                 
                                                                               
 Number 760                                                                    
                                                                               
 CHAIRMAN KOTT referred to wording in Section 12, "An application              
 for renewal of a registration must include a verified statement               
 that the mark has been used and is still in use", and asked Mr.               
 Monagle to define "verified."                                                 
                                                                               
 MR. MONAGLE said typically for the department, it means a notarized           
 signature on a statement that the mark is being used.  The person             
 signing the application would have a notarized signature.  If it is           
 a corporation it would be one of the officers, if it is a                     
 partnership it would be one of the general partners.                          
                                                                               
 CHAIRMAN KOTT referred to a business being in a rural area of the             
 state where there isn't a notary available and asked what would be            
 used.                                                                         
                                                                               
 MR. MONAGLE explained he believes the under the notary laws, most             
 postmasters can act as notaries.  He said he also believes there is           
 a provision under the Notary Act where you can have witnesses who             
 can sign to your notarized signature.                                         
                                                                               
 Number 820                                                                    
                                                                               
 CHAIRMAN KOTT said Section 15 talks about notifying those                     
 individuals who are going to have to reapply or re-register and               
 that notification is sent out in writing by the department six                
 months prior to the expiration.  He asked if it is the department's           
 intent to send that notification through certified or registered              
 mail.                                                                         
                                                                               
 MR. MONAGLE said they could, but don't currently do that.                     
 Currently, the department must send out notification of                       
 registrations that will expire after ten years.  He said in 85                
 percent to 90 percent of the time, those addresses are no longer              
 valid and most of that mail is returned as being undeliverable.               
 He noted the department wouldn't have an objection to doing that              
 sending them registered or certified.                                         
                                                                               
 Number 898                                                                    
                                                                               
 REPRESENTATIVE ELTON referred to the fee going up, as indicated in            
 the fiscal note, and said the department will be collecting the fee           
 twice as often because the renewal will be changed from ten years             
 to five years.  He said the fee collection fund would grow                    
 substantially because instead of collecting once every ten years,             
 it'll be done twice every ten years.                                          
                                                                               
 MR. MONAGLE said that is correct.  He noted the department doesn't            
 have a tremendous number of these filings.  Mr. Monagle said he has           
 checked with the INTA and there isn't single attorney in the state            
 of Alaska who is a member of that organization.  The largest                  
 omission with the current act is it simply precludes most service             
 providers, banks, insurance companies, etc., from registering.  He            
 said he doesn't think there will be a significant increase in                 
 revenue.                                                                      
                                                                               
 REPRESENTATIVE ELTON said the record should reflect that he                   
 probably didn't mean that there is no intellectual activity in the            
 state.                                                                        
                                                                               
 Number 1017                                                                   
                                                                               
 There being no further discussion on HB 450, REPRESENTATIVE NORMAN            
 ROKEBERG made a motion to move HB 450 out of the House Labor and              
 Commerce Committee with individual recommendations and the attached           
 positive fiscal note.  CHAIRMAN KOTT asked if there was an                    
 objection.  Hearing none, it was so ordered.                                  
                                                                               
 HB 450 - ALASKA TRADEMARK ACT                                               
                                                                               
 REPRESENTATIVE JERRY SANDERS referred to HB 450, "An Act relating             
 to trademarks; amending Alaska Rule of Appellate Procedure 609; and           
 providing for an effective date," which moved out of committee                
 earlier in the meeting and said the committee neglected to adopt a            
 proposed amendment.                                                           
                                                                               
 Number 1828                                                                   
                                                                               
 REPRESENTATIVE SANDERS made a motion to rescind the action of                 
 passing HB 450 out of committee.  Hearing no objection, HB 450 was            
 back before the committee.                                                    
                                                                               
 CHAIRMAN KOTT announced there is a proposed amendment in the                  
 committee packets which relates to the transition regulations and             
 has an effective date of January 1, 1997.                                     
                                                                               
 Number 1843                                                                   
                                                                               
 REPRESENTATIVE SANDERS made a motion to adopt Amendment 1.  Hearing           
 no objection, Amendment 1 was adopted.                                        
                                                                               
 REPRESENTATIVE SANDERS moved to pass HB 450, as amended, with                 
 fiscal notes, out of committee with individual recommendations.               
 There being no objection, CSHB 450(L&C) was passed out of the House           
 Labor and Commerce Committee.                                                 

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