72 The Alabama Lawyer 52 (2011). Alabama Trademark Act Revised and Revived.

• Author: By Linda A. Friedman and \Ni\\ Hill Tankersley

Alabama Lawyer

2011.

72 The Alabama Lawyer 52 (2011).

Alabama Trademark Act Revised and Revived

Alabama Trademark Act Revised and RevivedBy Linda A. Friedman and \Ni\\ Hill TankersleyALI Model State Trademark Bill Committee

In January 2009, the Alabama Law Institute ("ALI") assembled a group of Alabama lawyers from various practices for its committee on the Model State Trademark Bill ("MSTB"). These lawyers included:

Lee F. Armstrong, general counsel, Auburn University Donna M. Bailer, Feld, Hyde, Wertheimer, Bryant and Stone, PC Brian M. Clark, Wiggins, Childs, Quinn and Pantazis, LLC Honorable Jean W. Brown, chief legal advisor, Alabama Secretary of State's Office Diane H. Crawley, Maynard Cooper and Gayle, PC Linda A. Friedman, Bradley Arant Boult Cummings LLP Stephen H. Hall, Bradley Arant Boult Cummings LLP Thad G. Long, Bradley Arant Boult Cummings LLP Dr. Sheree Martin, Samford University, Dept. of Journalism and Mass Communications Kimberly T. Powell, Balch and Bingham LLP David R. Quittmeyer, Hand Arendall LLC Richard P. Rouco, Whatley Drake and Kallas Honorable Harold See (retired Alabama Supreme Court Justice) Bruce B. Siegal, The Collegiate Licensing Company general counsel James Dale Smith, Armbrecht Jackson LLP Will Hill Tankersley, Balch and Bingham LLP M. Chad Tindol, office of general counsel, University of Alabama India E. Vincent, Burr and Forman LLP Lance J. Wilkerson, Johnston Barton Proctor and Rose LLP

ALI MSTB Process

Lee Armstrong, general counsel for Auburn University, was appointed the committee chair and the late Lee Huffaker was designated as the reporter for the committee. Lawyers were divided into subcommittees in the areas of registration issues, dilution and remedies. For the next nine months the committee investigated MSTB provisions and met and conferred before producing a final report which was presented at the November 2009 ALI Council meeting.

The MSTB Committee recommended keeping the overall structure of Alabama's existing trademark act, but recommended changes where Alabama's current act needed updating or clarification. The ALI MSTB Committee recommended that Alabama adopt meaningful guidance for the already existing (but little used) Alabama trademark "dilution" cause of action. The ALI accepted these recommendations and the Act was passed by the legislature and the Governor signed the bill May 21, 2010. The amendments took effect January 1, 2011.

INTA Model State Trademark Bill

The amendments passed by the Alabama legislature were largely derived from the International Trademark Association's ("INTA") Model State Trademark Bill of 2007 ("Model Bill"). In promoting the Model Bill, the INTA attempts to harmonize state and federal trademark laws to enhance the protection of trademarks nationwide. Following passage of the amendments by the Alabama legislature, the INTA Executive Director Alan Drewsen commended Alabama for adopting the newest version of the model bill, stating that in so doing, "the state has provided businesses with assistance and support for growth, which is critical as Alabama and the nation recover from the current recession." (Ala. Passes Landmark Trademark Legislation to Harmonize with Fed. Law, INTA Press Releases (Int'l Trademark Ass'n, New York, N.Y.), May 4, 2010.) The recently passed amendments modify Alabama's pre-existing trademark law that was based on a former version of the model bill, using the 2007 version of the model bill as the basis for the recent amendments.

Currently, 46 states have passed the pre-2007 Model Bill in whole or in part. Alabama became the fourth state to pass the latest version of the 2007 Model Bill, following California, Mississippi and Oregon. The 2007 version of the model bill uses standards and definitions that are consistent with current codified federal law, including the Trademark Dilution Revision Act of 2006. The 2007 version of the model bill is the first to provide trademark dilution claims for marks famous within the state ("Niche Fame").

By adopting in large part the 2007 Model Bill, Alabama harmonized its state trademark protections with those afforded by the federal government.

Overview of the Alabama Trademark Act and the Dual State/Federal Registration Systems

The Alabama Trademark Act, originally enacted in 1980, set up a procedure for registration of trademarks and service marks that are in use in Alabama and prescribed trademark causes of action for protection of trademarks. Effective January 1, 1989, the Act was amended to allow for registration of trade names, in addition to trademarks and service marks, all of which are collectively defined in the Act as "marks." Registration is not mandatory, as rights in a mark arise under common law, not by registration. See Comment B to 1988 1st Ex. Sess. Amendment, following Ala. Code §8-12-7. The statute expressly recognizes that its provisions shall not adversely affect the rights or enforcement of rights in marks acquired in good faith at any time at common law. Ala. Code § 8-12-19. Nonetheless, registration provides some advantages, most importantly the benefit of public notice of the registrant's claimed rights and some evidence that the mark was in use as of the time of registration.

In some ways the state registration process is duplicative of the federal registration process under the Lanham Act, 15 U.S.C. § 1051 et seq., administered by the United States Patent and Trademark Office. See www.uspto.gov.

Certainly, a federal registration confers rights much broader than a state registration. In particular, a federal registration confers exclusive nationwide rights to the mark except as against any pre-existing common law rights acquired by another prior to the filing date of the federal application. 15 U.S.C. § 1057(c). Nevertheless, reasons exist for a trademark owner to register its marks at the state level instead of, or even in addition to, the federal level. If a mark is...