California Adopts Model State Trademark Law

California’s Governor Arnold Schwarzenegger recently signed into law the Model State Trademark Law (MSTL), replacing California’s previous trademark laws in their entirety.

The MSTL:

• adopts the USPTO’s goods and services classification and allows a single application to include multiple classifications;

• expands the information required to be provided with an application for registration of a mark to a drawing of the mark and three specimens of that mark as it is actually used;

• requires that an application include a declaration of accuracy signed by a specified person and would subject that person to a civil penalty of not more than $10,000 for willfully stating as true in the declaration any material fact he or she knows to be false;

• reduces the registration period from 10 years to 5 years, and provides for successive 5-year renewal periods;

• requires the applicant to state whether the applicant previously attempted to register the mark with the USPTO and if such registration was refused, to state the reason for its rejection.

Article 12 of the MSTL states that the intent of the MSTL is “to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection . . .To that end, the construction given the federal act should be examined as nonbinding authority for interpreting and construing this chapter.” The MSTL will not affect any legal actions that are pending on January 1, 2008.

Several provisions of California’s previous trademark statutes regarding damages, anticounterfeiting, vicarious infringement and seizures are incorporated into the MSTL.

In adopting the MSTL, California joins more than 30 other states that have adopted some version of this law, which is the most current version of the International Trademark Association’s (INTA) Model State Trademark Law.