Registration and Protection of Trademarks Act (Summary)

A Summary of SB 2186 and HB 7107 – Trademarks 

I.                Vote History

II.            Summary of Legislation

This bill makes several changes to Florida’s trademark law, which was originally based on the International Trademark Association’s 1964 Model State Trademark Bill (MSTB).  The changes in this bill will generally conform Florida’s law to current federal law regarding trademarks, known as the Lanham Act,[1] and the revised MSTB, where appropriate.   The bill makes the following changes:

•  Provides a popular name;
• Revises the definition section to make the definition more consistent with federal law;
• Revises the section specifying the types of marks that may be registered to be more consistent with federal law;
• Repeals the provision relating to the reservation of marks;
• Codifies the Department of State’s application review process;
• Provides a right to an administrative hearing for an applicant whose application for registration is denied;
• Reduces the renewal period of a registered mark from 10 to 5 years to reduce the number of deadwood registrations;
• Permits a person to file a change of name with the department and specifies recording requirements for such a change;
• Clarifies that security interests in a mark may be created and perfected in accordance with the Uniform Commercial Code;
• Conforms the Florida classification system for goods and services to the International Trademark Classification System;
• Authorizes an award of attorney’s fees to a prevailing party in litigation involving a registered mark;
• Revises the dilution provision to be more consistent with federal law, while retaining Florida’s “likelihood of dilution” standard;
• Combines all fees applicable to trademark registrations and related activities into one section of law; and
• Repeals obsolete sections of ch. 495, F.S.

III.        Additional Background Information

Florida’s trademark statute is based on the International Trademark Association’s (INTA) 1964 Model State Trademark Bill (MSTB).  The Florida law was last amended substantively in 1990 when the Florida Legislature added a name reservation provision to the law (repealed by the current bill).

During the 2005 Legislative Session, Senator Campbell introduced SB 678 and Representative Galvano introduced HB 845, which incorporated the MSTB in most respects.  At that time, a subcommittee of the Florida Bar Business Law Section, Intellectual Property Law Committee, Chaired by Michael Chesal, provided the sponsors with a Technical Input Memorandum, highlighting a number of issues that the committee felt warranted attention before adopting the bills as law.  The present proposal is based on the MSTB and the comments contained in the technical input memorandum.

Effective Date: January 1, 2007.

Last Event: 06/12/06 Approved by Governor; Chapter No. 2006-191 on Tuesday, June 13, 2006 9:14 AM.

 [1] The Lanham Act, Title 15 of the United States Code (USC), “defines the scope of a trademark, the process by which a federal registration can be obtained from the Patent and Trademark Office for a trademark, and penalties for trademark infringement.” For the full article, follow this link. 22 March 2006.