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The International Trademark Association is gearing up to push for model trademark legislation in four states, including California and Texas, after converting three 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,” says Michael Heltzer, the group’s external relations manager. The New York-based association has persuaded 30 states to adopt most or all of the model bill since issuing an updated version in 1992. Florida, Indiana, and Massachusetts passed versions of the model bill within the past several months. In addition to targeting California and Texas, the group is aiming to pass bills in Georgia and Oregon next. Besides harmonizing state trademark practices with recent changes in federal law, the model bill cuts the renewal period to five years, which allows for quicker expiration of defunct trademarks. The model bill allows multiple damages in cases where the defendant acted “with knowledge or in bad faith.” It also provides for cancellation of marks that have become generic names. State trademark laws primarily help small businesses engaged almost exclusively in intrastate commerce, but uniformity also helps larger companies that maintain registrations in multiple states, says Rodrick Enns of Enns & Archer in Winston-Salem, N.C., who helped pass his state’s bill in 1997. Enns explains, “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.” A VOLUNTEER ARMY Although state trademark laws are not particularly controversial, the process of adopting a model law is often slow because the International Trademark Association relies on volunteers to lobby political leaders. John Malloy III of the Miami office of Malloy & Malloy chairs the association’s model state trademark bill committee. He started working on a model law for Florida in 2002. “I immediately learned that politicians do not necessarily find trademark legislation very sexy or politically expedient,” he recalls. The bill’s first two potential sponsors reneged at the last minute in favor of other bills for their limited sponsorship slots, says Malloy. The bill introduced on the third try was withdrawn after the Florida Bar raised technical issues, but the bar association blessed the bill that passed in the next session. In Massachusetts the Boston Bar Association actively pushed for the model law’s passage and testified in favor of the bill at a legislative committee hearing this past summer. California is also looking to bar members to take the lead. At press time, Catherine Holland of the Irvine, Calif., office of Knobbe Martens Olson & Bear was optimistic that the Conference of Delegates at the State Bar of California would approve a resolution to adopt the model bill at its annual meeting in early October. Holland plans to work with a conference lobbyist to get the bill passed. The Texas committee is relying on the experience of states such as Florida and Massachusetts to map out a strategy, says Max Millican, a senior trademark analyst at Round Rock, Texas-based Dell Inc. He points to two lessons learned: the need to garner support from key bar associations, and the value of crafting a bill that incorporates state nuances, instead of just filing the unchanged model bill.
Sheri Qualters is a Boston-based staff reporter for the National Law Journal , an ALM publication where this article first ran in.

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