Bill Text: MN SF2598 | 2011-2012 | 87th Legislature | Introduced
Bill Title: Minnesota Small Business Trademark Protection Act
Sponsorship: Partisan Bill (Republican 1)
Status: (Introduced - Dead) 2012-04-05 - Referred to Jobs and Economic Growth [SF2598 Detail]
Download: Minnesota-2011-SF2598-Introduced.html
1.2relating to trademarks; enacting the Minnesota Small Business Trademark
1.3Protection Act; providing for a dispute settlement conference;amending
1.4Minnesota Statutes 2010, section 333.18, by adding subdivisions; proposing
1.5coding for new law in Minnesota Statutes, chapter 333.
1.6BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MINNESOTA:
1.7 Section 1. Minnesota Statutes 2010, section 333.18, is amended by adding a
1.8subdivision to read:
1.9 Subd. 9. Trademark bullying. "Trademark bullying" as used in sections 333.18
1.10to 333.31 means the practice of a trademark holder using litigation tactics in an attempt
1.11to enforce trademark rights beyond a reasonable interpretation of the scope of the rights
1.12granted to the trademark holder.
1.13 Sec. 2. Minnesota Statutes 2010, section 333.18, is amended by adding a subdivision
1.14to read:
1.15 Subd. 10. Trademark dispute. "Trademark dispute" means a dispute that arises
1.16under sections 333.28 and 333.285, or the Federal Lanham Act, United States Code, title
1.1715, sections 1051 et seq.
1.18 Sec. 3. Minnesota Statutes 2010, section 333.18, is amended by adding a subdivision
1.19to read:
1.20 Subd. 11. Administrative law judge summary. "Administrative law judge
1.21summary" has the meaning given in section 333.283.
1.22 Sec. 4. [333.283] TRADEMARK DISPUTE SETTLEMENT CONFERENCE.
2.1 Subdivision 1. Settlement conference. Each party named in a trademark dispute
2.2has the option to request a settlement conference through the Minnesota Office of
2.3Administrative Hearings as provided in subdivisions 2 to 7. Upon the request of any party
2.4to a trademark dispute, the Office of Administrative Hearings shall conduct a trademark
2.5settlement conference using the procedures provided in this section and Minnesota Rules,
2.6part 1400.6550. A settlement conference permitted under this section is not available
2.7after suit has been commenced by any party.
2.8 Subd. 2. Purpose. A settlement conference is for the primary purpose of assisting
2.9the parties in resolving disputes and for the secondary purpose of identifying and labeling
2.10cases of trademark bullying between companies.
2.11 Subd. 3. Scheduling. Upon request of any party or the initially assigned
2.12administrative law judge, the chief judge shall assign the case to another judge for the
2.13purpose of conducting a settlement conference. The conference shall be conducted at a
2.14time and place agreeable to all parties and the judge, but not to exceed 30 days from the
2.15initial date of request by the named party. It shall be conducted by telephone if any party
2.16would be required to travel more than 50 miles to attend, unless that party agrees to travel
2.17to the location set for the conference. If a telephone conference is scheduled, the parties
2.18must be available by phone at the time of the conference. The conference shall not exceed
2.19eight hours unless all parties and the judge agree there is good cause for a continuance.
2.20 Subd. 4. Procedures at conference. All parties shall attend or be represented at a
2.21settlement conference. Parties or their representatives attending a settlement conference
2.22shall be prepared to participate in meaningful settlement discussions.
2.23 Subd. 5. Pre-conference discussions. The parties shall discuss the possibility
2.24of settlement before a settlement conference if they believe that a reasonable basis for
2.25settlement exists.
2.26 Subd. 6. Information provided. At the settlement conference, the parties shall be
2.27prepared to provide the information and to discuss all matters pertaining to the trademark
2.28dispute. At its own cost, any party may provide information included but not limited to
2.29expert testimony, industry practice standards, and evidence of trademark use in commerce.
2.30 Subd. 7. Orders. If, following the settlement conference, a settlement has not
2.31been reached but the parties have reached an agreement on any fact or other issue, the
2.32administrative law judge presiding over the settlement conference shall issue an order
2.33confirming and approving, if necessary, those matters agreed upon. The order is binding
2.34on any Minnesota state district court judge who is later assigned to hear a related civil
2.35action involving substantially the same issues and parties.
3.1 Subd. 8. Administrative law judge summary. If no settlement has been reached at
3.2the settlement conference, any party may request the issuance of an administrative law
3.3judge summary. The judge may issue an administrative law judge summary without the
3.4request of any party if the judge believes that the claim brought is a case of trademark
3.5bullying.
3.6 Subd. 9. Penalty. If the party alleging trademark infringement refuses to participate
3.7in the settlement conference as described in this section, that party is liable for a fine of
3.8$1,500 and the attorney fees, costs, and disbursements incurred by the party holding
3.9the disputed trademark.
3.10 Subd. 10. Remedies; treble damages; involuntary dissolution. (a) If, after
3.11penalties are assessed under subdivision 9, the party holding the disputed trademark
3.12prevails in subsequent litigation regarding the dispute, and a Minnesota state district
3.13court has found the case to be one of trademark bullying, the Minnesota state district
3.14court may award treble damages.
3.15(b) If a party is found by a Minnesota state district court or the Office of
3.16Administrative Hearings to have engaged in trademark bullying more than two times
3.17in a period of ten years:
3.18(1) and the party is a domestic business entity, the Minnesota state district court may
3.19direct the secretary of state to issue a certificate of dissolution of that domestic entity under
3.20the statutory dissolution procedure that applies to that type of domestic business entity.
3.21(2) and the party is a foreign business entity, the Minnesota state district court
3.22may direct the secretary of state to revoke the entity's certificate of authority to transact
3.23business in this state under the statutory revocation procedure that applies to that type of
3.24foreign business entity.
3.25 Subd. 11. Cost. The plaintiff and defendant must split the cost of the settlement
3.26conference equally, unless the judge orders otherwise.
3.27 Subd. 12. Cease-and-desist letter requirement. All trademark cease-and-desist
3.28letters sent to a Minnesota entity by an entity with a presence in Minnesota must contain
3.29the following language in 12-point font clearly displayed at the beginning or end of the
3.30letter:
3.31"Right of Settlement Conference. All parties named in this letter may exercise
3.32their right to a settlement conference regarding this dispute under Minnesota Statutes,
3.33section 333.283."
3.34 Sec. 5. EFFECTIVE DATE.
4.1This act is effective August 1, 2012, and applies to disputes evidenced by
4.2cease-and-desist letters and similar communications sent on or after that date.
1.3Protection Act; providing for a dispute settlement conference;amending
1.4Minnesota Statutes 2010, section 333.18, by adding subdivisions; proposing
1.5coding for new law in Minnesota Statutes, chapter 333.
1.6BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MINNESOTA:
1.7 Section 1. Minnesota Statutes 2010, section 333.18, is amended by adding a
1.8subdivision to read:
1.9 Subd. 9. Trademark bullying. "Trademark bullying" as used in sections 333.18
1.10to 333.31 means the practice of a trademark holder using litigation tactics in an attempt
1.11to enforce trademark rights beyond a reasonable interpretation of the scope of the rights
1.12granted to the trademark holder.
1.13 Sec. 2. Minnesota Statutes 2010, section 333.18, is amended by adding a subdivision
1.14to read:
1.15 Subd. 10. Trademark dispute. "Trademark dispute" means a dispute that arises
1.16under sections 333.28 and 333.285, or the Federal Lanham Act, United States Code, title
1.1715, sections 1051 et seq.
1.18 Sec. 3. Minnesota Statutes 2010, section 333.18, is amended by adding a subdivision
1.19to read:
1.20 Subd. 11. Administrative law judge summary. "Administrative law judge
1.21summary" has the meaning given in section 333.283.
1.22 Sec. 4. [333.283] TRADEMARK DISPUTE SETTLEMENT CONFERENCE.
2.1 Subdivision 1. Settlement conference. Each party named in a trademark dispute
2.2has the option to request a settlement conference through the Minnesota Office of
2.3Administrative Hearings as provided in subdivisions 2 to 7. Upon the request of any party
2.4to a trademark dispute, the Office of Administrative Hearings shall conduct a trademark
2.5settlement conference using the procedures provided in this section and Minnesota Rules,
2.6part 1400.6550. A settlement conference permitted under this section is not available
2.7after suit has been commenced by any party.
2.8 Subd. 2. Purpose. A settlement conference is for the primary purpose of assisting
2.9the parties in resolving disputes and for the secondary purpose of identifying and labeling
2.10cases of trademark bullying between companies.
2.11 Subd. 3. Scheduling. Upon request of any party or the initially assigned
2.12administrative law judge, the chief judge shall assign the case to another judge for the
2.13purpose of conducting a settlement conference. The conference shall be conducted at a
2.14time and place agreeable to all parties and the judge, but not to exceed 30 days from the
2.15initial date of request by the named party. It shall be conducted by telephone if any party
2.16would be required to travel more than 50 miles to attend, unless that party agrees to travel
2.17to the location set for the conference. If a telephone conference is scheduled, the parties
2.18must be available by phone at the time of the conference. The conference shall not exceed
2.19eight hours unless all parties and the judge agree there is good cause for a continuance.
2.20 Subd. 4. Procedures at conference. All parties shall attend or be represented at a
2.21settlement conference. Parties or their representatives attending a settlement conference
2.22shall be prepared to participate in meaningful settlement discussions.
2.23 Subd. 5. Pre-conference discussions. The parties shall discuss the possibility
2.24of settlement before a settlement conference if they believe that a reasonable basis for
2.25settlement exists.
2.26 Subd. 6. Information provided. At the settlement conference, the parties shall be
2.27prepared to provide the information and to discuss all matters pertaining to the trademark
2.28dispute. At its own cost, any party may provide information included but not limited to
2.29expert testimony, industry practice standards, and evidence of trademark use in commerce.
2.30 Subd. 7. Orders. If, following the settlement conference, a settlement has not
2.31been reached but the parties have reached an agreement on any fact or other issue, the
2.32administrative law judge presiding over the settlement conference shall issue an order
2.33confirming and approving, if necessary, those matters agreed upon. The order is binding
2.34on any Minnesota state district court judge who is later assigned to hear a related civil
2.35action involving substantially the same issues and parties.
3.1 Subd. 8. Administrative law judge summary. If no settlement has been reached at
3.2the settlement conference, any party may request the issuance of an administrative law
3.3judge summary. The judge may issue an administrative law judge summary without the
3.4request of any party if the judge believes that the claim brought is a case of trademark
3.5bullying.
3.6 Subd. 9. Penalty. If the party alleging trademark infringement refuses to participate
3.7in the settlement conference as described in this section, that party is liable for a fine of
3.8$1,500 and the attorney fees, costs, and disbursements incurred by the party holding
3.9the disputed trademark.
3.10 Subd. 10. Remedies; treble damages; involuntary dissolution. (a) If, after
3.11penalties are assessed under subdivision 9, the party holding the disputed trademark
3.12prevails in subsequent litigation regarding the dispute, and a Minnesota state district
3.13court has found the case to be one of trademark bullying, the Minnesota state district
3.14court may award treble damages.
3.15(b) If a party is found by a Minnesota state district court or the Office of
3.16Administrative Hearings to have engaged in trademark bullying more than two times
3.17in a period of ten years:
3.18(1) and the party is a domestic business entity, the Minnesota state district court may
3.19direct the secretary of state to issue a certificate of dissolution of that domestic entity under
3.20the statutory dissolution procedure that applies to that type of domestic business entity.
3.21(2) and the party is a foreign business entity, the Minnesota state district court
3.22may direct the secretary of state to revoke the entity's certificate of authority to transact
3.23business in this state under the statutory revocation procedure that applies to that type of
3.24foreign business entity.
3.25 Subd. 11. Cost. The plaintiff and defendant must split the cost of the settlement
3.26conference equally, unless the judge orders otherwise.
3.27 Subd. 12. Cease-and-desist letter requirement. All trademark cease-and-desist
3.28letters sent to a Minnesota entity by an entity with a presence in Minnesota must contain
3.29the following language in 12-point font clearly displayed at the beginning or end of the
3.30letter:
3.31"Right of Settlement Conference. All parties named in this letter may exercise
3.32their right to a settlement conference regarding this dispute under Minnesota Statutes,
3.33section 333.283."
3.34 Sec. 5. EFFECTIVE DATE.
4.1This act is effective August 1, 2012, and applies to disputes evidenced by
4.2cease-and-desist letters and similar communications sent on or after that date.
