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BOSTON � The International Trademark Association is gearing up to push for a model state trademark bill in four states, including California and Texas, after converting three new states in the most recent legislative session. “California is one of the largest economies in the world; to get the bill passed in that state would be a significant achievement and one we’re working toward quite hard,” said the association’s external relations manager, Michael Heltzer. The New York-based association has influenced 30 states to adopt most or all of the model bill’s provisions since issuing the modern version in 1992. Florida, Massachusetts and Indiana passed versions of the model bill within the last few months. In addition to targeting California and Texas, the association is also aiming to pass bills in Georgia and Oregon in the upcoming state legislative sessions. Besides being harmonious with federal trademark law, the model bill recommends a five-year renewal period, which shortens a trademark’s effective date in many states and allows for quicker expiration of defunct trademarks. California fielded 2,336 trademark applications during its most recent fiscal year, compared with 1,259 in Texas. The model bill also contains other pro-business provisions such as allowing multiple damages in lawsuits involving state trademarks and cancellation provisions for trademarks based on generic names.

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State trademark laws primarily help the vast array of small businesses engaged almost exclusively in intrastate commerce, but the uniformity also helps larger companies maintain registrations in multiple states, said Rodrick Enns of Enns & Archer in Winston-Salem, N.C., who help pass his state’s bill in 1997. “It’s a vehicle for smaller trademark owners to register and protect their rights in a way that’s more cost-effective and manageable than federal trademark legislation,” said Enns. “The states vary in terms of how elaborate and well-funded their trademark regime is.” VOLUNTEER ARMY Although state trademark laws are not particularly controversial, the model law adoption process is often slow because the association relies on volunteers to convince political leaders to change state statutes. Miami’s John Cyril Malloy III, the managing partner of Malloy & Malloy and chairman of the association’s model state trademark bill committee, started working on a model trademark law for Florida in 2002. “I immediately learned that politicians do not necessarily find trademark legislation very sexy or politically expedient,” said Malloy. Malloy said the bill’s first two potential sponsors reneged at the last minute in favor of other bills for their limited sponsorship slots. The bill introduced on the third try was withdrawn after the Florida Bar raised technical issues, but the bar association blessed the bill that passed in the following session. In Massachusetts, the Boston Bar Association actively pushed for the bill’s passage and testified in favor of the bill at a legislative committee hearing this summer. California is also looking to bar members to take the lead. Knobbe Martens Olson & Bear attorney Catherine Holland in Irvine, is optimistic that the Conference of Delegates of the State Bar of California will approve the resolution to adopt the model trademark bill at its annual meeting in October. Holland then plans to work with a conference lobbyist to get the bill passed. “The endorsement of both [the trademark association] and the Conference of Delegates should carry weight with our state representatives,” Holland said. The Texas committee is relying on the experience of states such as Florida and Massachusetts to map out a strategy, said Max Millican, a senior trademark analyst at Round Rock, Texas-based Dell Inc. Garnering the support of key bar associations and crafting a bill that incorporates state nuances instead of just filing the unchanged model bill were two lessons learned, Millican said. Sheri Qualters is a reporter with The National Law Journal, a Recorder affiliate based in New York City.

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