Brief(1)
S.B. 130 would enact the Revised Kansas Trademark Act and repeal the current Kansas Trademark Act, K.S.A. 81-111 through 81-123. The new Revised Kansas Trademark Act is fashioned after the International Trademark Association's (INTA) Model State Trademark Bill. Major provisions of the revised Act are as follows.
Definitions. Section 2 of S.B. 130 provides specific definitions for the words "use," "abandonment," and "dilution." Use is revised according to the stringent standards of the federal trademark statute (see 15 U.S.C. �1127). Abandonment has been added in recognition of its occurrence on the state level and use sufficient to avoid abandonment must be use within the state. Dilution has been added to allay any questions regarding its meaning.
Application for Registration. Section 4 requires the applicant to state that the applicant had no knowledge of a previously registered similar mark at either the federal or state level. Furthermore, an applicant must state whether an application to register the mark has been filed with the federal trademark office by the applicant or a predecessor and, if registration was refused, to provide full particulars with respect thereto.
Duration and Renewal. Section 7 halves the duration of regular registrations from ten years to five years in order to reduce the number of "deadwood" registrations. "Deadwood" refers to marks which have not been used in commerce for an extended period of time.
Assignments, Changes of Name. Under current Kansas law, assignments of trademark registrations and applications are recordable. Section 8 of S.B. 130 will also permit the recordation of name changes as well as licenses, security interests, and mortgages.
Cancellation. Section 10 amends Kansas law to provide that a registration may be canceled if the mark has become the generic name for the goods or services for which it has been registered. In 1988, the term "generic" replaced the words common descriptive as a revision to the federal trademark statutes (15 U.S.C. �1064). A registration issued under the Lanham Act may be canceled if it becomes generic.
Classification. Section 11 permits the Secretary of State to issue regulations adopting a classification system and encourages adoption of the International classification system used by the U.S. Patent and Trademark Office and many states. Kansas' current system is based on the old U.S. classification system and is set forth in the current statute.
Injury to Business Reputation; Dilution. Sections 2 and 14 provide a remedy for owners of famous trademarks to prevent the dilution or weakening of their marks by unauthorized third party usage of the marks on dissimilar products. Section 14 establishes eight criteria to assist the courts in determining whether a mark is famous and sets forth three defenses to dilution, namely, comparative advertising, noncommercial use, and news reporting. This section will also permit courts to order remedies beyond injunctive relief in cases where willful intent is proven.
Remedies. Section 15 of the bill provides additional remedies to state trademark owners for cases involving infringement. Specifically, the bill provides for the payment of up to three times the amount of damages or profits if the infringement was committed with knowledge or in bad faith. This provision is similar to the federal trademark law (see 15 U.S.C. �1114).
Fees. Section 18 of the bill will allow the Secretary of State to set fees payable under the bill by regulation. In the current Kansas law, fees payable to the Secretary of State are directly set forth in the statute. Additionally, this section resolves any ambiguities regarding refunds by explicitly stating that the state is not required to refund any fees.
Intent of Act. The model act was patterned after the Lanham Act and is appropriate for a court to interpret the act in accordance with federal decisions under the Lanham Act. Thus, Section 20 provides that the Kansas law is to be constructed under the premise that the federal act should be examined as persuasive authority for interpreting and construing this state law.
The House Committee amended the bill by inserting a provision under which an application for registration of a mark and any renewal application must be accompanied by a $25 fee. All other documents filed must have a $5 fee. All fees are payable to the Secretary of State.
Background
The bill was requested by the Secretary of State' office. Ms. Liz Buckingham, Chair of the INTA's Model State Trademark Bill Subcommittee, spoke in favor of this legislation. Ms. Buckingham testified that the INTA believes that this legislation will improve the functioning of the state trademark system, enhance the quality of trademark searches undertaken by the Secretary of State, and allow owners of marks in this state to better defend against infringement.
The model bill was originally promulgated in 1949 to bring unity to the state trademark statutes. The model bill was amended in 1964 and in 1992 to reflect revisions brought about by legislation, mainly the Lanham Act made by the Trademark Law Revision Act of 1988. The model bill was last amended to reflect changes brought about by the Federal Trademark Dilution Act of 1996. Since 1992, 20 states have adopted all or a majority of the provisions of the latest revised model bill and several others are considering introduction of the model bill in 1999. Kansas adopted the original model state trademark bill in 1951, and last revised its trademark statute in 1963.
Ms. Buckingham said that the legislation is consistent with the efforts to protect the rights of both consumers and trademark owners. Ms. Buckingham testified that this legislation would greatly improve the manner in which Kansas protects trademarks and the consumers who use trademarks as an easy-to-understand mode of communication between themselves and the companies which produce the product.
A fiscal note has not been prepared to date.
1. *Supplemental notes are prepared by the Legislative Research Department and do not express legislative intent. The supplemental note and fiscal note for this bill may be accessed on the Internet at http://www.ink.org/public/legislative/bill_search.html.