first_imgBusiness Law Section helps pass trademark legislation Business Law Section helps pass trademark legislation Individuals and companies in Florida will find it easier to protect their proprietary trademarks, thanks to a bill passed by the Florida Legislature with help from the Business Law Section.HB 7017 was the first change to the state’s 1964 model trademark law since a substantive overhaul in 1990.“One of the common questions I would get from legislators is, ‘Why do we need a state trademark law?’” said Michael Chesal, a Miami lawyer who spearheaded the section’s efforts. “Number one, not every company is a national company. There are local companies that may not be entitled to federal protection.“Secondly, a state registration filing can be heard in a few weeks,” while the same process through the federal system will take at least a year.“The main reason for the bill is to better harmonize state and federal law,” Chesal added. “There have been changes in federal law over the years that we needed to catch up with.”“This is another example of how sections of the Bar develop credibility over the years with the legislature. . . and are able to provide technical support to enact laws that are to the benefit of both business and the people of our state,” said section Chair Mark Wolfson. “This otherwise might not get done if there weren’t lawyers out there like Michael spending their non-billable time to make these laws happen.”Chesal said the bill “gives a little more teeth to help small businesses better protect their trademarks, their names, and their intellectual property.”The bill streamlines the application process and provides for more direction for attorneys when they file trademark applications for clients. It also allows for an administrative hearing if an application is denied, and in the event of litigation, provides for attorneys’ fees for the prevailing party.Fees protection is important for small businesses, Wolfson said.“If a big corporations says, ‘I want to put that guy out of business,’ and they come in and try to litigate them out, they will have to think twice about it because there might be a lawyer out there who thinks that mom and pop business has a good case and would be willing to defend that small business,” he said.Other changes in the law include repealing the provision on reservation of marks, reducing the renewal period of a registered mark from 10 to five years, clarifying that security interests in a mark can be created and perfected according to the Uniform Commercial Code, and revising the dilution provision to be more consistent with federal law while keeping Florida’s “likelihood of dilution” standard.Chesal noted the legislature considered a bill in 2005 based on the Model State Trademark Bill prepared by the International Trademark Association. The section’s Intellectual Property Law Committee, which Chesal chaired, prepared a memo on how the model law didn’t account for some unique Florida issues.This year, Chesal said the section worked with Miami attorney John Malloy III, who represented the INTA’s position, for a bill that recognized changes in federal law, the proposed model law, and distinctive Florida issues. June 1, 2006 Regular Newslast_img