Christensen O Connor Johnson Kindness PLLC* Seattle, WA

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1 Last Updated: March 2017 Alaska Christensen O Connor Johnson Kindness PLLC* Seattle, WA A. State Trademark Registration Statute 1. Code Section The registration of a trademark in Alaska is governed by Alaska Statute ( Alaska Stat. ) et seq. 2. Model Act Provisions Alaska s trademark registration statute was enacted in 1961 and amended significantly in It is modeled after the 1992 version of the Model State Trademark Bill. Although Alaska s statute does not deviate from the substance of the Model State Trademark Bill, it does contain numerous non-substantive changes designed to improve its clarity and readability. 3. Administrator All communications should be addressed to: State of Alaska Division of Corporations, Business and Professional Licensing CORPORATIONS SECTION PO Box Juneau, AK * For over 80 years, Christensen O Connor Johnson Kindness PLLC has excelled at fulfilling our clients intellectual property needs and requirements. The firm specializes in all aspects of patent, trademark, copyright, and other intellectual property law matters. The firm also handles intellectual property litigation on a regional, national, and international basis. COJK effectively builds and maintains strong, long-term relationships with clients by defending and encouraging their ideas and the inventions upon which their businesses are based. Everett E. Fruehling, a member in the firm, prepared this entry with the assistance of Alina S. Morris, an associate with the firm. Other members in the firm include Margie B. Aoki, Matthew D. Balint, D.C. Peter Chu, Laura A. Cruz, John D. Denkenberger, Ryan E. Dodge, Casey Fitzpatrick, Brian F. McMahon, Jerald E. Nagae, Melissa A. Nowak, Emily C. Peyser, Brian W. Poor, George E. Renzoni, Brandon C. Stallman, L. Rhys Lawson, David P. Sheldon, and Adrian Mihailovic. AK-1

2 A.4.a. STATE TRADEMARK LAW Phone: (907) Fax: (907) Website: 4. Procedure for Applying for Registration a. Forms The use of a state-provided form is required. On request, the Department of Community and Economic Development will send an application form and instructions. Forms can also be accessed at: b. Number of Copies A separate application is required for each class of goods or services being registered. c. Fee The filing fee of $50 is prescribed by statute. Alaska Stat d. Specimens Three specimens showing the actual use of the mark on or in connection with the goods or services are required. Alaska Stat e. Drawing The Act does not include any provisions relating to special drawings. If drawings are submitted, the Department of Commerce, Community, and Economic Development prefers drawings that are not oversized. The mark must actually be used in commerce in Alaska before it can be registered. See Alaska Stat A mark cannot be reserved. 5. Intent to Use Provision The mark must actually be used in commerce in Alaska before it can be registered. A mark cannot be reserved. Alaska Stat Classification The establishment of a classification system is delegated to the Department of Commerce, Community, and Economic Development. To the extent practical, the Department is directed to conform its classification system to that adopted by the U.S. Patent and Trademark Office. Alaska Stat Search Prior to Application The state will conduct an informal search for word marks prior to AK-2

3 ALASKA A.15. filing if requested. The state conducts a more thorough search after an application is filed. The state does not guarantee the availability of a trademark based on an informal search. 8. Search Prior to Registration The state will not search its state trademark registration file, its state corporate and registered business database, or the federal register prior to issuance of registration. 9. Doing Business Requirement Except for the requirement that the mark be in actual use in Alaska, the state has no other requirement for doing business in Alaska. 10. Types of Marks Registrable Trademarks, service marks, certification marks, and collective marks are registrable in Alaska. Alaska Stat (6). 11. Restrictions The state has adopted the standards of Section 2 of the Model State Trademark Bill, although the text has been somewhat reworded. See Alaska Stat The state also does not allow registration of marks that are so similar to the name of another organized entity, or a reserved or registered name, that it is likely to cause confusion. Alaska Stat (a)(7); Use in State Use in Alaska is a prerequisite to registration. See Alaska Stat (3). 13. Term of Registration Registration of a mark is effective for a term of five years from the date of registration. Alaska Stat Renewal An application for renewal of a registration for a successive five-year term must be filed within the six-month period before the expiration of the registration term. Alaska Stat A written notification from the commissioner will be sent to the last known address of the registrant at least six months prior to expiration of the mark. Id. at Renewal Forms The commissioner has discretion to establish the requirements for renewal. A special form is no longer statutorily required; however, the AK-3

4 A.16. STATE TRADEMARK LAW state-provided registration renewal form can be used. Alaska Stat. US Other Forms Upon request, the state will supply an optional form for assignment of a trademark registration. Name change forms are also available. All forms are available at: cbpl/corporations/corpformsfees.aspx 17. Post-Registration Forms No other forms are required by statute. 18. Fees After Registration The fee for renewal is $50. Alaska Stat The fee for assignment is $25. Id. at The fee for change of registrant information is $25. Id. at Use Requirement for Renewal An application for renewal must include a signed statement that the mark has been used and is still in use. Three specimens showing actual use must be submitted with the renewal application. Alaska Stat (b). 20. Presumptions a. In Favor of Registrant The certificate of registration is admissible in evidence as competent and sufficient proof of the registration of the mark in an action or judicial proceeding in the state. Alaska Stat b. Presumption of Doing Business There is no statutory provision that trademark registration creates a presumption of doing business in Alaska. 21. Remedies for Infringement The registrant may enjoin the manufacture, use, display, or sale of a counterfeit or imitation mark. Alaska Stat The court may grant an injunction and may require the defendant to pay the profits derived from and the damages caused by the wrongful use. In addition, the court may order the destruction of all counterfeits or imitations in the possession of or under the control of the defendant. Id. Punitive damages may be awarded in an amount not to exceed three times the profits and damages. Id. A plaintiff may also seek any other remedies available, including attorney s fees, under other applicable laws. AK-4

5 ALASKA B Persons Entitled to Sue The registrant may sue to protect or enforce a mark. Alaska Stat Registrant means the person to whom the registration of a mark is issued, or a legal representative, successor, or assign of that person. Id. at (7). B. Dilution 1. Code Section Alaska Stat (d) provides remedies for the dilution of marks that are famous in the state. 2. Judicially Created Dilution Doctrine Not applicable. 3. Tarnishment The statute makes no provision for remedies for tarnishment. 4. Likelihood of Confusion Likelihood of confusion is not required by the statute. 5. Competition between the Parties The statute does not require competing or related goods. 6. Fame or Distinctiveness The statute protects marks that are famous in the state. Alaska Stat (d). In determining whether a mark is famous, a court may consider any factor, including several factors that are expressly enumerated by statute. Id. 7. Remedies A registrant that owns a mark that is famous in the state is entitled to an injunction against another s dilution of the mark. If the use was a willful attempt to trade on the registrant s reputation or to cause dilution of the mark, the registrant may also obtain the profits derived from and/or the damages suffered by reason of the unlawful use. The court may also order the destruction of the offending articles, and punitive damages in the amount not to exceed three times the profits and damages. Alaska Stat (b). 8. Leading Cases The Alaska dilution statute has not yet been judicially interpreted. AK-5

6 B.9. STATE TRADEMARK LAW 9. Extra-Territorial Effect No case has addressed the question whether an injunction under the Alaska dilution statute may have extra-territorial effect. 10. Preemption Cases None. C. Unfair Business Practices Acts (Little FTC Acts) 1. Code Section The Alaska statute relating to unfair business practices is entitled Unfair Trade Practices and Consumer Protection Act and is codified in Alaska Stat et seq. 2. Scope The Act, by its terms, broadly applies to unfair methods of competition and unfair or deceptive acts or practices in the conduct of trade or commerce. Alaska Stat (a). The Alaska Supreme Court has held that the Act does not apply to real estate purchases, State v. First Nat l. Bank of Anchorage, 660 P.2d 406, (Alaska 1982), and has stated that it only applies to acts associated with the sale of goods and services. Id. The Alaska Supreme Court has determined that timber is not a good. Instead, timber is considered real estate and, consequently, the act does not apply to timber sales. Aloha Lumber Corp. v. Univ. of Alaska, 994 P.2d 991, 1002 (Alaska 1999). While First National Bank and Aloha Lumber clearly hold that the Unfair Trade Practices and Consumer Protection Act does not apply to transactions involving real estate or timber, the Supreme Court of Alaska does not think that these cases should be interpreted to bar the application of the act to transactions between businesses involving services or commercial or consumer personal property. W. Star Trucks, Inc. v. Big Iron Equip. Serv. Inc., 101 P.3d (Alaska 2004). Whether an act constitutes a sale of goods or services may be a close question. For example, unfair debt collection practices were considered a service and therefore within the reach of the Act, State v. O Neill Investigations, Inc., 609 P.2d 520 (Alaska 1980), but a bank s activities in connection with a mortgage and mortgage loan servicing arrangements were held to be neither a good nor a service and therefore not covered by the Act, Barber v. Nat l Bank of Alaska, 815 P.2d 857 (Alaska 1991). The Act also applies to conduct creating a likelihood of confusion or of misunderstanding, and which misleads, deceives, or damages AK-6

7 ALASKA C.4.c. buyers or competitors in connection with the sale or advertisement of goods or services. Alaska Stat (b)(11). 3. Prohibited Activities The Act, in a general provision, adopts language similiar to Section 5(a)(1) of the Federal Trade Commission Act. See Alaska Stat (a). Additionally, the Act prohibits fifty-seven specific practices. Id. at (b). In implementing the general provision, the Act directs that due consideration and great weight should be given to interpretations of the FTC Act. Id. at The Alaska courts have adopted federal case law, including the three-part test for unfair practices contained in FTC v. Sperry & Hutchinson Co., 405 U.S. 233 (1972). See State v. O Neill Investigations, Inc., 609 P.2d 520, (Alaska 1980). The list of prohibited practices is therefore not intended to be exclusive. See also Alaska Stat (b) (noting that the Act is not limited to the listed practices). The Act would appear to cover trademark violations under several sections, including Section (b)(11) ( creating a likelihood of confusion ); (b)(3) ( causing a likelihood of confusion or misunderstanding as to the source, sponsorship, or approval ); (b)(4) (misrepresenting sponsorship, approval or affiliation); and (b)(6) (misrepresenting quality, grade, or style of goods). Except for the statute s treble damages provision, willfulness or intent are not elements of a violation under the Act. State v. O Neill Investigations, Inc., 609 P.2d 520, 535 (Alaska 1980). Alaska Stat (b)(14) prohibits representing that an agreement confers or involves rights, remedies, or obligations that it does not confer or involve, or which are prohibited by law. See W. Star Trucks, Inc. v. Big Iron Equip. Serv. Inc., 101 P.3d 1047 (Alaska 2004). 4. Remedies a. State Administrative Enforcement The Attorney General has extensive powers to investigate potential illegal trade practices, Alaska Stat ; restrain prohibited acts, id. at (a); enter into consent decrees, id. at ; and seek restitution, id. at (b). b. Criminal Enforcement There are no criminal penalties under the Act. c. Civil Penalties The Attorney General can seek restitution of money paid to a defendant as a result of an illegal practice. Alaska Stat (b). The Alaska Supreme Court has declined to decide whether the AK-7

8 C.4.d. STATE TRADEMARK LAW Attorney General can recover other damages as restitution. See State v. Grogan, 628 P.2d 570, 572 n.2, 575 n.8 (1981). The Act also authorizes the imposition of civil penalties. First, any person who violates the terms of an injunction or restraining order issued at the Attorney General s request shall forfeit and pay to the state a civil penalty of not more than $50,000 for each violation. Alaska Stat (a). Additionally, the Attorney General may recover not less than $1,000 and not more than $25,000 for any act determined to be prohibited or unlawful. Id. at (b). d. Private Actions and Remedies Private actions are available to all persons who suffer an ascertainable loss of money or property as a result of an act violation. Alaska Stat (a). The law is therefore available to competitors as well as consumers. However, a person may not commence an action more than two years after the person discovers or reasonably should have discovered that the loss resulted from actions prohibited under the Act. Alaska Stat (f). The plaintiff can recover three times the actual damages, or $500, whichever is greater. The court may grant other relief, including equitable relief. Alaska Stat (a). A prevailing plaintiff shall also be awarded costs as provided by court rule and full reasonable attorney fees at the prevailing reasonable rate. Id. at (a). It is important to note that if a manufacturer or supplier is at fault, the manufacturer or supplier is liable for damages awarded against a retailer. Alaska Stat (h). Unless the action is found to be frivolous, in an action brought by a private person under Alaska Stat , a prevailing defendant shall be awarded attorney fees and costs as provided by court rule. Alaska Stat (b). However, if the court finds either the action brought is frivolous or the action was brought by the plaintiff to obtain a competitive business advantage, full attorney fees at the prevailing reasonable rate will be awarded to the defendant. Alaska Stat (b), (c); and see also Garrison v. Dixon, 19 P.3d 1229 (Alaska 2001). If the court finds the action was brought to obtain a competitive business advantage, the court shall also award any damages suffered by the prevailing defendant as a result of the plaintiff s allegations. Alaska Stat (c). It is also important to note that if a person receives a punitive damages award under Alaska Stat (a), fifty percent of the punitive damage award shall be deposited into the general fund of Alaska. Alaska Stat (i). e. Class Actions Alaska Statute (b), which prescribed procedures for individu- AK-8

9 ALASKA C.4.i. al plaintiffs to bring class actions, was repealed in The current statute does not address class actions. Class actions remain available pursuant to Alaska Rule of Civil Procedure 23. f. Notice Any person who was the victim of the unlawful act, whether or not the person suffered actual damages, may bring an action to obtain an injunction prohibiting a seller or lessor from continuing to engage in an act or practice declared unlawful under Alaska Stat Alaska Stat (a). However, that person may not bring the action unless the person first provides written notice to the party engaged in the unlawful practice that the person will seek an injunction against the party if the party fails to promptly stop the unlawful act or practice and the party fails to promptly stop the unlawful act or practice after receiving the notice. Alaska Stat (b). g. Standing The Act provides a cause of action for all persons who suffer an ascertainable loss of money or property. Therefore, both consumers and competitors have standing to bring an action under the Act. Alaska Stat (a). h. Consumer Products The Alaska Supreme Court has stated that the Act is directed at regulating practices relating to transactions involving consumer goods and services. State v. First Nat l Bank of Anchorage, 660 P.2d 406, 412 (Alaska 1982). The act was also intended to protect businesses from deceptive trade practices by other businesses. W. Star Trucks, Inc. v. Big Iron Equip. Serv. Inc., 101 P.3d 1047 (Alaska 2004). Several nonpurchase transactions have been held to be within the scope of the Act, including the violation of the state Sherman Act, Matanuska Maid, Inc. v. State, 620 P.2d 182 (Alaska 1980), and unfair debt collection practices, State v. O Neill Investigations, Inc., 609 P.2d 520 (Alaska 1980). Other non-purchase transactions have been held to be beyond the scope of the Act, however, including a bank s activities in connection with a mortgage. See Barber v. Nat l Bank of Alaska, 815 P.2d 857 (Alaska 1991); discussion in C.2, above. i. Jurisdiction of Courts Actions by the Attorney General shall be brought in the superior court. Actions by private parties may be brought in either district or superior court, as applicable, because the statute does not address which court is proper. See Alaska Stat (a), AK-9

10 C.4.j. STATE TRADEMARK LAW j. Rules The Attorney General has authority to adopt implementing rules and regulations. Alaska Stat To date, regulations have been adopted regarding retail advertising, Alaska Admin. Code Title 9, ch. 5 (Oct. 1980), but for no other subject regarding unfair competition. k. Administrative Investigative Authority The Attorney General has extensive investigative authority. The Attorney General may issue subpoenas to require attendance of witnesses and compel production of documents and other evidence; hold hearings; and under order of court may impound samples of property as evidence. Alaska Stat Administrator The Act is administered by the Attorney General. Office of the Attorney General P.O. Box Juneau, AK Phone: (907) attorney.general@alaska.gov Website: 6. Leading Cases Alaska Trustee, LLC v. Bachmeier, 332 P.3d 1 (Alaska 2014). The court held that the UTPA did not apply to real property transactions or to non-judicial foreclosures. State v. First National Bank of Anchorage, 660 P.2d 406 (Alaska 1982). In First National Bank, a real estate developer made various misleading statements to purchasers regarding property lying in a flood plain. The state, after obtaining a preliminary injunction against the developer, sought to cancel the lot purchasers promissory notes, which the bank held as collateral for its loans to the developer. The court held that neither the bank nor the developer was subject to the Unfair Trade Practices Act because real estate transactions were not subject to the Act. Matanuska Maid, Inc. v. State, 620 P.2d 182 (Alaska 1980). This case involved an investigation by the Attorney General of alleged pricefixing in the sale of milk. The court held that the investigation did not fall under the regulated activities exception of the Act, despite the allegation of price-fixing under the state antitrust act. The court explained that for an activity to fall within the exception, Alaska Stat (1), the industry must be regulated and the alleged unfair acts must be prohibited. Since the milk industry was not a regulated industry, the court held that the exception to the Act did not apply. State v. O Neill Investigations, Inc., 609 P.2d 520 (Alaska 1980). The AK-10

11 ALASKA C.6. defendant in this action was guilty of unscrupulous debt collection practices. The court held that to form a prima facie case, the state must establish (1) that the defendant was engaged in trade or commerce and (2) that an unfair act occurred in the conduct of trade or commerce. The court then held that unfair debt collection practices were subject to the Act. The court incorporated federal case law interpreting the FTC Act into the state Unfair Trade Practices Act. Barber v. National Bank of Alaska, 815 P.2d 857 (Alaska 1991). In Barber, a borrower stopped making mortgage payments shortly after the loan closed. Although the defendant bank represented that it would suspend foreclosure proceedings pending an effort by the borrower to seek financial assistance, the bank in fact foreclosed the loan. The court held that the mortgage loan and related mortgage servicing activities were neither goods nor services and therefore were not within the scope of the Act. Western Star Trucks, Inc. v. Big Iron Equipment Service, Inc., 101 P.3d 1047 (Alaska 2004). The dealer sued the truck manufacturer for unfair trade practices, claiming that the manufacturer misrepresented the consequences of an oral agreement that the manufacturer made with the dealer. The Court of Alaska held that the Unfair Trade Practices and Consumer Protection Act prohibited misrepresenting the consequences of an oral agreement because of the plain language of the act. The Court concluded that the manufacturer s conduct violated Alaska Stat (b)(14), a portion of the Unfair Trade Practices and Consumer Protection Act. Borgen v. A&M Motors, Inc., 273 P.3d 575 (Alaska 2012). A dealer of used motorhomes sold a motorhome as a model year 2003 that was in fact a The dealer had relied on the title report it received from the State of Alaska that the motorhome was a 2003, but after sale and subsequent inquiry the dealer realized that the motorhome was actually a The Court held that unknowing, innocent misrepresentations of material facts will give rise to liability under the UPTA, even if the representation is made in good faith. Roberson v. Southwood Manor Associates, LLC, 249 P.3d 1059 (Alaska 2011). The court held that the Unfair Trade Practices and Consumer Protection Act does not apply to residential leases. See also Hallam v. Alaska Airlines, Inc., 91 P.3d 279 (Alaska 2004) (finding the Unfair Trade Practices Act preempted by the Airline Deregulation Act with respect to claims involving the price, route, or service of an air carrier); State v. Grogan, 628 P.2d 570 (Alaska 1981) (vandalizing customers property in retaliation for failure to pay bills is a violation of the Act). AK-11

12 D.1. STATE TRADEMARK LAW D. Uniform Deceptive Trade Practices Act 1. State Statute Alaska has not directly adopted the UDTPA or any variation of it. It has, however, adopted the list of deceptive trade practices contained in Section 2 of the Uniform Act by incorporating them into its Little FTC Act. See Alaska Stat (b)(1)-(11), (c). For a review of the terms of this Act, see section C, above. 2. Standing Competitors. The Act creates a cause of action on behalf of all persons who suffer an ascertainable loss of money or property as a result of an Act violation. Alaska Stat (a). Consumers. Consumers have a cause of action under the statute. Alaska Stat (a). Public Agencies. The Attorney General has a cause of action under the statute. Alaska Stat Class Actions. There is no specific provision for class actions within the Act. Class actions are available under the standards set forth in Alaska Rule of Civil Procedure Remedies The court may grant injunctions and monetary relief in consumer actions and may award injunctions and restitution in actions by the Attorney General. Alaska Stat , , Standard for Granting Relief Damages, if found, are mandatory in a private consumer action. Alaska Stat (a). Monetary relief is discretionary in actions by the Attorney General. Id Willfulness or intent is not specifically required by the Act. 5. Leading Cases See section C.6, above. E. Trademark Counterfeiting There is no separate civil statute that addresses trademark counterfeiting. Criminal statutes are discussed in section L, below. Trademark counterfeiting practices are addressed by the state s Unfair Business Practices Act, discussed in section C, above Not applicable. AK-12

13 ALASKA G.3. F. False Advertising There is no other civil statute that addresses false advertising except for a prohibition of false advertising concerning civil defense aids, i.e., a product, service, or structure intended to be used by a citizen as protection against a foreign attack. Alaska Stat A violation of sections is punishable by a fine of not more than $500, or by imprisonment for not more than six months, or, in the alternative, is subject to a civil penalty not more than $5,000. Alaska Stat Criminal statutes are discussed in section L, below. False advertising practices are addressed by the state s Unfair Business Practices Act, discussed in section C, above Not applicable. G. Corporate Name Reservation Prior to Incorporation 1. Statute Corporate name reservation is governed by Alaska Stat et seq. 2. Reservation Actual or potential domestic and foreign corporations may reserve the use of a corporate name under Alaska Stat a. Time Period A name may be reserved for one hundred twenty days. Alaska Stat b. Renewal The Alaska statute does not provide for a renewal of reservation. c. Fee The fee for reservation of a corporate name is $25. Alaska Admin. Code tit. 3, (2010). d. Prerequisite to Incorporation Reservation of a corporate name is not required prior to incorporation. 3. Conflicting Names A corporation seeking to reserve a name may not select a name that is indistinguishable on the records of the department from another name reserved or registered under the corporate name and trade name statutes. Alaska Stat A foreign corporation seeking a certificate of authority to transact business in Alaska may not have a AK-13

14 G.4. STATE TRADEMARK LAW name indistinguishable from the name of another corporation, a reserved corporate name, or a registered trade name. Id ; A person who has incorporated, received a certificate of authority, or registered a corporate name in Alaska may enjoin the use of an indistinguishable name by another and has a cause of action for damages. Id Restrictions on Use of Corp. and Similar Terms Alaska statutes expressly restrict the use of corporation, incorporated, limited, or similar terms to unincorporated businesses. Alaska Stat (c). 5. Required or Authorized Use of Corp. or Similar Terms A corporate name must contain the word corporation, company, incorporated, or limited, or an abbreviation of one of these words. Alaska Stat (a). 6. Search Provision The state will perform an informal name availability search if requested, but does not guarantee the use of any name based on this search. The state will perform a more thorough search when the application for name reservation or registration is received. 7. Policy Regarding Identical Words The state does not have a published policy regarding identical words in corporate names. The statute requires that names must be distinguishable on the records of the department from the name of any other organized entity and from a reserved or registered name. Alaska Stat Substantive Rights Alaska statutes do not provide for substantive trademark rights based on corporate or business name registration but do provide a cause of action to enjoin the use of an indistinguishable name and to seek damages. Alaska Stat Prohibited Terms The corporate name may not contain the word city, borough, or village, or otherwise imply that the corporation is a municipality. However, the name of an actual city, borough, or village may be used in a corporate name. Alaska Stat (b). Only cooperative associations incorporated under Alaska s cooperative corporation chapter may use the word cooperative or a variation thereof. Id. AK-14

15 ALASKA H Furthermore, only limited liability companies can use the terms limited liability company. Id Administrative Agency Corporate name registration and reservation is administered by: Department of Commerce, Community, and Economic Development Division of Corporations, Business, and Professional Licensing P.O. Box Juneau, Alaska Phone: (907) Fax: (907) Website: Forms Forms for reservation of corporate names and registration and renewal of corporate names are available from the Department of Community and Economic Development. Forms can also be downloaded from Fees The fee for the initial reservation or registration of a corporate name is $25. Renewal of a reserved or registered corporate name is $25. 3 Alaska Admin. Code Registration automatically expires at the end of every calendar year; an application for renewal may be filed between October 1 and December 31 of each year. Alaska Stat H. Trade Name Registration (Fictitious Name Statutes) 1. Purpose The Alaska trade name registration statute allows registration for the purpose of reserving to the registrant the exclusive right to use a trade name. Trade names appear to be referred to in the Alaska Statutes as business names. See generally Alaska Stat et seq. 2. Entities Required to File Trade name registration is not required in Alaska. Roeckl v. FDIC, 885 P.2d 1067 (Alaska 1994). AK-15

16 H.3. STATE TRADEMARK LAW 3. Limited Partnerships Limited partnerships are not required to register assumed names, except as required by the Limited Partnership Act, which requires that the partners file with the Department of Commerce, Community, and Economic Development. See Alaska Stat Where to File Business names may be registered at: Department of Commerce, Community, and Economic Development Division of Corporations, Business, and Professional Licensing Corporations Section P.O. Box Juneau, Alaska phone: (907) fax: (907) Fees The fee for trade name registration is $25. Alaska Admin. Code tit. 3, (2010). The registration is valid until the close of the fifth calendar year beginning with the year of initial registration. Alaska Stat A renewal for a five-year extension may be filed between October 1 and December 31 of any year. Id. at The fee for renewal is $25. Alaska Admin. Code tit. 3, (2010). 6. Publication There is no publication requirement. 7. Foreign Corporations The statute is equally applicable to domestic and foreign persons. Foreign corporations may register their names under Alaska s corporation code. See Alaska Stat et seq. 8. Civil Penalties Because registration of trade names is not required in Alaska, there are no penalties for failure to file. 9. Criminal Penalties There are no criminal penalties for nonfiling. 10. Certificate The state returns a stamped copy of the application as proof of registration. No separate certificate is issued. AK-16

17 ALASKA I Renewal or Deletion An application to renew may be filed between October 1 and December 31 of any year to extend the registration an additional five years. Alaska Stat The statute does not address discontinuance of name use. 12. Substantive Rights Registration of the name gives the exclusive right to use the name. The person who has registered the name may enjoin the use of an indistinguishable name and has an action for damages against anyone using such a name. Alaska Stat (b). 13. Search The state will perform an informal search, if requested by phone. The state will conduct a more thorough search upon receipt of the application. 14. Agent Corporations and limited liability companies must maintain a registered agent in Alaska. Alaska Stats and Mail Registration Registration may be accomplished by mail. I. State Statutory and/or Common Law Unfair Competition or Passing Off Provisions There is no separate state statute on unfair competition or passing off, other than as discussed above. See Alaska Stat (a) (declaring [u]nfair methods of competition to be unlawful); Alaska Interstate Const., LLC. v. Pacific Diversified Instruments, Inc. 279 P.3d 1156 (Alaska, 2012); and discussion in section C, above Not applicable. 6. Common Law Action for Unfair Competition The federal district court and pre-statehood federal courts have both adopted a common law cause of action for unfair competition. Although these decisions are not binding on the state courts, it is likely that the state courts will follow them. 7. Elements of a Common Law Cause of Action The courts addressing this cause of action have not spelled out the elements needed to establish an action, nor otherwise developed it to any significant extent. Accordingly, counsel should rely on leading AK-17

18 I.8. STATE TRADEMARK LAW cases from other jurisdictions to help flesh out the contours of the cause of action. As was stated by one court, The test appears basically to be whether there is likelihood in the advertising or business methods used of consumer confusion as to the source of the goods; or the simulation by one person of the name, symbols, or devices employed by a business rival, or the substitution of the goods or wares or services of one person for those of another, thus inducing the purchase of his wares or services under a false impression as to their origin, ownership, or authority, and thereby obtaining for himself the benefits properly belonging to his competitor. Alaska Sales & Serv., Inc. v. Rutledge, 128 F. Supp. 1, 2 (D. Alaska 1955). The cases have indicated the following acts would be actionable: (1) passing off one s goods or business as those of another; (2) using the word authorized when not an authorized or exclusive sales agency or dealer; and (3) appropriating the product of another leading to unjust enrichment (as established by Int l News Serv. v. Associated Press, 248 U.S. 215 (1918)). The cases, to date, have not made intent a required element of the common law cause of action. Therefore, a plaintiff most probably will not need to show intent to establish a prima facie case of unfair competition. See Alaska Sales & Serv., Inc. v. Rutledge, 128 F. Supp. 1 (D. Alaska 1955). 8. Remedies Remedies granted or recognized to date include injunction, Alaska Sales & Serv. Inc., Rutledge, 128 F. Supp. 1 (D. Alaska 1955); damages or constructive trust, if actual pecuniary loss or unjust enrichment is proved, Veatch v. Wagner, 116 F. Supp. 904, (D. Alaska 1953); and nominal damages, id. Additionally, the opinion in Veatch suggests that any other relief normally available in tort cases or in equity will be available. Id. 9. Leading Cases Alaskasland.com, LLC v. Cross, 357 P.3d 805 (Alaska 2015). The Alaska Supreme Court declined to formally recognize the tort of passing off in a case brought by a developer against a real estate agency, agents, and owners of property for misappropriation of advertising material, trademark and trade name infringement arising from defendants use of photographs contained in developer s marketing materials. The court found that even if Alaska recognized the common-law tort of passing off, plaintiff s claim would fail for lack of damages. Alaska Map Service, Inc. v. Roberts, 368 F. Supp. 578 (D. Alaska 1973). This is the only post-statehood case addressing common law unfair competi- AK-18

19 ALASKA J.1. tion. The case suggests an action for unfair competition may be available where the defendant copied the plaintiff s maps for her own use and publication. But cf. United States v. Hamilton, 583 F.2d 450 (9th Cir. 1978) (overruling case on issue of whether map can be copyrighted). Alaska Sales and Service, Inc. v. Rutledge, 128 F. Supp. 1 (D. Alaska 1955). The court held that a cause of action was available against an unauthorized car dealer or distributor falsely representing he was authorized. Veatch v. Wagner, 116 F. Supp. 904 (D. Alaska 1953), and Veatch v. Wagner, 109 F. Supp. 537 (D. Alaska 1953). The court held that a cause of action was available for a claim that it was unfair competition for a radio station to read news stories from a newspaper over the air without the newspaper s permission. Smith v. Surait, 7 Alaska 416 (D. Alaska 1926). A party of arctic explorers had been sponsored and partially financed by one news service. The court held that it was not unfair competition for a rival news agency to take pictures of the expedition to sell as news. J. Statutes of Special Application and Personal Name Statutes 1. Special Statutory Sections (a) Limited Partnerships. Use of a limited partner s name in a partnership s name is restricted. Alaska Stat The name of the limited partnership must contain the words limited partnership. Id. (b) Industrial Development Corporations. The name of the corporation shall include the words Industrial Development Corporation of the State of Alaska. Alaska Stat (a)(1). (c) Cooperatives. Only cooperative associations incorporated under the cooperative associations chapter of the Alaska Statutes shall use the term cooperative or a variation in its name. Any cooperative may enjoin a violation of this statute without a showing of damages to itself. Alaska Stat Foreign cooperatives can use the term cooperative if they qualify to do business in the state. Alaska Stat (d) Telephone Or Electricity Cooperatives. The name of the cooperative shall include the words electric or telephone, as appropriate to its purpose, and cooperative, and the abbreviation Inc. Alaska Stat (e) Construction Contractors. All construction contractors must operate under a name that is registered as a contractor. Alaska Stat Individuals, partners, and certain other persons must use AK-19

20 J.1. STATE TRADEMARK LAW their true names and addresses and the true name of the contractor firm at all times while acting in the capacity of a contractor or performing related activities. Id A knowing violation of the registration statute is a misdemeanor. Id (f) Collection Agencies. A collection agency must do business under its licensed name. Alaska Stat Violation of the licensing statute is a misdemeanor. Id (g) Professional Corporations. The corporate name of a professional corporation shall contain the last name of one or more of its shareholders, unless a regulatory exception applies. Alaska Stat (a). The name shall be ended by the word corporation, incorporated, or limited, an abbreviation thereof, or by the words a professional corporation or the abbreviation P.C. Id.; see also (changes of corporate name). (h) Insurers. An insurer may not be authorized to transact business if it uses a name (1) so similar to that of another authorized insurer that it is likely to mislead the public; or (2) that tends to deceive or mislead the public as to the type of organization of the insurer. Alaska Stat An agent for a title insurance company may not adopt a firm name containing the words Title Insurance, Title Guaranty, or Title Guarantee, unless the words are followed by the words Agent or Agency in the same size and type as the words preceding them, subject to a couple of exceptions. Alaska Stat (i) Hospital or Medical Service Corporations. A hospital or medical service corporation may not use a corporate or business name which includes the words insurance, casualty, surety, health and accident, mutual, or other term descriptive of an insurer or insurance business, nor may it use a name so similar to that of another corporation that it would confuse the public. Alaska Stat (j) Alaska Food, Drug, and Cosmetic Act. This statute prohibits misbranding or false advertising of any food, drug, medical device, or cosmetic. See generally Alaska Stat The specific prohibitions are lengthy and detailed, and accordingly are not repeated here. Additionally, the state has extensive authority, including injunction proceedings, to enforce the chapter. (k) The state also has name regulation for the medical, psychology, and accounting professions. See, e.g., Alaska Stat (medical); , , , (accounting); , (psychology). (l) Limited Liability Companies. Alaska allows the formation of limited liability companies including the rendering of a professional service under Alaska Stat et seq. Limited liability companies AK-20

21 ALASKA K.2. may reserve names, id , , and register names, id A limited liability company must include LLC, L.L.C., or limited liability company within its name. Id limited may be abbreviated as Ltd., and company may be abbreviated as Co. Id. 2. Use of Personal Name There are no other non-criminal statutes apart from statutes listed at J.1, above, that would prohibit use of a name of a living or deceased individual. Criminal impersonation in the second degree, i.e., assuming a false identity or falsely pretending to be the representative of some person or organization, with intent to defraud, is a Class A misdemeanor. Alaska Stat K. Right to Publicity 1. Recognition No courts in Alaska have recognized the right of publicity. Nevertheless, such a right may be recognized in Alaska given that Alaska courts generally adopt common law tort causes of action. The issue of right to publicity was raised in one pre-statehood case. In Smith v. Suratt, 7 Alaska 416 (D. Alaska 1926), the sponsors of an expedition intending to fly to the North Pole claimed they had an exclusive right to photograph and use or sell news film and photographs of the expedition. The sponsors accordingly sought to enjoin a news service not affiliated with the expedition from taking pictures of the expedition. The court held that because the expedition was of a public character and of public interest, no right to publicity existed against a news organization. 2. Applicable Statute The state s Little FTC Act potentially addresses the right to publicity. It makes illegal causing a likelihood of confusion or misunderstanding as to the source, sponsorship, or approval, or another person s affiliation, connection, or association with or certification of goods or services (emphasis added). Alaska Stat (b)(3). However, no statute grants an explicit right of publicity in the state Not applicable. Since state courts have not adopted this cause of action, no details exist regarding it. AK-21

22 L. STATE TRADEMARK LAW L. Criminal Statutes 1. Statutory Provision No state criminal statute specifically addresses the unauthorized use of trademarks. Nonetheless, such activity is potentially illegal under a number of other statutes. (a) Deceptive Business Practices (1) Statute: Alaska Stat (2) Prohibited Practices: A person commits the crime of deceptive business practices if the person sells, offers for sale, or exposes for sale mislabeled commodities. The definition of mislabeled includes falsely representing a product as being that of another. (3) Maximum Penalties: Committing deceptive business practices is a Class A misdemeanor. Alaska Stat (c). The maximum fine is $10,000; maximum imprisonment is one year. Deceptive business practices are a class C felony if the person uses the Internet or a computer network to commit the offense (d). The maximum fine is $50,000, and the maximum imprisonment is five years. (b) Criminal Simulation (1) Statute: Alaska Stat (2) Prohibited Practices: A person commits the crime of criminal simulation if, (a) with intent to defraud, the person makes or alters any object in such a manner that it appears to have a rarity, age, source, or authorship that it does not in fact possess; or (b) with knowledge of its true character and with intent to defraud, the person possesses or utters an object so simulated. (3) Maximum Penalties: (a) if the value of what the object purports to represent is $500 or more, criminal simulation is a Class C felony. The maximum fine is $50,000; maximum imprisonment is five years; (b) if the value of the purported object is $50 to $500, the crime is a Class A misdemeanor. The maximum fine is $10,000; maximum imprisonment is one year; (c) if the value of what the object purports to be is less than $50, the crime is a Class B misdemeanor. The maximum fine is $2,000; maximum imprisonment is ninety days. Alaska Stat ; If a defendant is required to serve a term of imprisonment under a separate judgment, any term of imprisonment imposed in a later judgment, amended judgment, or probation revocation shall be consecutive. If the defendant is being sentenced for two or more crimes in a single judgment, terms of imprisonment may be concurrent or partially concurrent. Alaska Stat (c) Criminal Impersonation AK-22

23 ALASKA L.1. (1) Statutes: Alaska Stat (first degree) and Alaska Stat (second degree) (2) Prohibited Practices: First Degree: A person commits the crime of criminal impersonation in the first degree if the person (1) possesses an access device or identification document of another person; (2) without the authorization of the other person, uses that access device or identification document to obtain a false identification document, open an account at a financial institution, obtain an access device, or obtain property or services; and (3) recklessly damages the financial reputation of the other person. Second Degree: A person commits the crime of criminal impersonation in the second degree if the person assumes a false identity or pretends to be a representative of some person or organization and does an act in the assumed character with the intent to defraud, commit a crime, or obtain a benefit to which the person is not entitled. (3) Maximum Penalties First Degree: Criminal impersonation in the first degree is a class B felony. The maximum fine is $100,000; maximum imprisonment is ten years. Second Degree: Criminal impersonation in the second degree is a class A misdemeanor. The maximum fine is $10,000; maximum imprisonment is one year. (d) Theft By Deception (1) Statute: Alaska Stat (2) Prohibited Practices: A person commits the crime of theft by deception if, with intent to deprive another of property or to appropriate property of another to oneself or a third person, the person obtains the property of another by deception. The definition of deception includes creating a false impression as to value, but does not include puffing. (3) Maximum Penalties: Maximum penalties vary depending on the value of the property taken. If the value of the theft is $25,000 or more, the crime is theft in the first degree, a Class B felony. The maximum fine is $100,000; maximum imprisonment is ten years. Alaska Stat If the value is $500 to $25,000 or the property taken is of certain enumerated types, the crime is theft in the second degree, a Class C felony; if the value is $50 to $500, the crime is theft in the third degree, a Class A misdemeanor; if the value is less than $50, the crime is theft in the fourth degree, a Class B misdemeanor. Punishments for AK-23

24 M.1. STATE TRADEMARK LAW these crimes are listed under criminal simulation at section L.1.b. above. (e) Alaska has not adopted either a civil or criminal RICO statute. Several RICO-type bills have been introduced in recent legislative sessions, but to date none has been enacted. (f) Unfair or Deceptive Practices concerning Civil Defense Aids (1) Statutes: Alaska Stat (2) Prohibited Practices: The following conduct is prohibited concerning the sale and advertising of civil defense aids (i.e. a product, service, or structure intended to be used by a citizen as protection against a foreign attack): (a) Exaggerated or misleading claims of protection afforded by shelters; (b) Use of misleading pictures; (c) Use of deceptive pricing practices; (d) Use of guarantees in such a manner as to constitute a misrepresentation; (e) Representations of endorsement by a governmental agency; and (f) Any unfair or deceptive practice. (3) Maximum Penalties: A violation of sections is punishable by a fine of not more than $500, or by imprisonment for not more than six months, or, in the alternative, is subject to a civil penalty not more than $5,000. Alaska Stat M. Trade Disparagement or Trade Libel 1. Statute or Common Law Doctrine [D]isparaging the goods, services, or business of another by false or misleading representations of fact is illegal under Alaska s Little FTC Act. Alaska Stat (b)(7). The Act provides a private cause of action for both consumers and competitors. Id (a). Additionally, the Alaska Supreme Court has recognized the tort of trade disparagement. See Urethane Specialties, Inc. v. Valdez, 620 P.2d 683 (Alaska 1980); Zamarello v. Yale, 514 P.2d 228 (Alaska 1973) (disparagement of title). 2. Elements of a Cause of Action The published opinions do not address the elements of a cause of action for trade disparagement. The cases do suggest (1) that negligent falsehood, as opposed to reckless falsehood is actionable, see Urethane Specialties, Inc., 620 P.2d at (where statement is conditionally privileged, plaintiff must prove knowing or reckless disregard of truth; this implies a lower standard would apply absent AK-24