Washington State TradeMark Registration
Washington State Trademark Registration. The registration of a trademark in Washington is governed by RCW 19.77.010 et seq. Several state have registration statutes that share the Washington statute’s structure and import because the Washington registration statute, adopted in 1955, and amended in each of 1989, 1994, 1998, 2003, 2010, and 2011 generally follows the Model State Trademark Bill (“MSTB”). Versions of the MSTB form the foundation of state trademark law in 46 states. As with corporation, limited liability company and false name registrations, the Secretary of State is designate as the registrar of trademarks. As such, the staff that serves the public in the Secretary’s Office, will endeavor to answer all communications, correspondence and documents relating to state registration as the potential applicant may address to them at:
Washington Secretary of State
Corporations Division
801 Capital Way S.
PO Box 40234
Olympia, WA 98504-0234
(360) 725-0377
e-mail: [email protected]
The registration procedure, as is the case of a federal registration, is purely a creature of statute, and is set forth in RCW 19.77.030. Likewise, the filing fee is set by rule by the Secretary of State. The fee established by the Secretary may vary based upon the number of categories listed in the application. The fee is currently $55 per classification number as each classification subsists independently of others. When one application includes goods/services that fall within multiple classes, payment of a fee for each class may be required. RCW 19.77.115. Classifications have been selected, largely, to define distinct markets, even if there are actually related markets. The classification of goods and services is established by the Secretary of State and largely conform to the U.S. classification system. A single application may include any or all goods/services upon which the mark is being used indicating the appropriate class or classes. The Secretary’s classifications provide bright lines to calculate fees.
To demonstrate the use of the trademark, as it is to be protected by the registration, the applicant must provide three specimens or facsimiles, including one original, are required for each of the goods or services for which registration is requested.
Registration subsists for a period of five years. RCW 19.77.050. An application for renewal of a registration may be filed with the Secretary of State six months prior to the date of expiration of the registration and, as with the original application, must be accompanied by three samples, including one original specimen as currently used. The renewal application requires all the allegations of an application for original registration. The registration may only be renewed for goods or services for which the trademark is still in use in Washington for successive terms of five years. Notification of the necessity for renewal is sent to the registrant, or to its agent for service of record, within the year but not less than six months next preceding the expiration of the original registration or renewal term. RCW 19.77.050 states that neither the Secretary of State’s failure to notify a registrant nor the registrant’s nonreceipt of notice will extend the registration term or excuse registrant’s failure to renew.
The application for registration and the application for renewal of a registration are made on the same form provided by the Secretary of State. The distinction between registration and renewal of registration is indicated by filling out the appropriate box. The renewal fee is set by rule by the Secretary of State, and is currently $50 per classification number. The trademark registration/renewal form is available electronically at http://www.sos.wa.gov/corps/registration_forms.aspx
Just as in the case of the federal statute, the Washington statute includes a provision for the reservation of a mark with intent to register it in the future. The exclusive right to use a trademark may be reserved by a person intending to register a trademark, or a foreign or domestic corporation intending to change its trademark. The reservation can be made by filing an application to reserve a specified trademark or service mark with the Secretary of State. However, the reservation is limited to one filing. The term of such a reservation is one hundred eighty (180) days. RCW 19.77.015.
The Washington state registration only confers rights within Washington and, in fact, the nature and depth of examination that accompanies the application is, because of the limited scope of coverage, not as extensive as that of the federal trademark system. The fees paid to the state will support the conduct of a search for potential marks prior to accepting the filing an application for registration. The search includes only trademarks previously registered in Washington assuring that marks existing outside of the state of Washington will not be given cross-border statutory rights without actually filing in Washington state.
While word marks are inherently susceptible to text-based searches, Design marks present a special challenge to characterize the designs thereby to enable searching. design marks are indexed by means of a word or words describing the design. It is these descriptors that are searched so it is possible that nearly identical design marks could exist on the Washington registry without being found in response the preapproval search. Searching is purely text-based and where two such marks are registered, to the extent necessary, the courts will harmonize the registrations. For either word or design marks, the records are searched according to the terms describing the mark regardless of class. Where no conflict is noted, the application moves to registration.
Washington does not have a “doing business in Washington” requirement for registration of a trademark; however, the application for trademark registration must include a statement that the trademark is presently in use in Washington by the applicant. RCW 19.77.030(1)(e). A collective trademark, collective trade mark, or collective mark is a trademark owned by an organization (such as an association), used by its members them to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization. Collective trademarks are exceptions to the underlying principle of trademarks in that most trademarks serve as “badges of origin”; they indicate the individual source of the goods or services. A collective trademark, however, can be used by a variety of traders, rather than just one individual concern, provided that the trader belongs to the association. Collective trademarks differ from certification marks. The main difference is that collective trademarks may be used by particular members of the organization which owns them, while certification marks may be used by anybody who complies with the standards defined by the owner of the particular certification mark. The Washington statute provides for registration only of trademarks and service marks. There are no provisions for the registration of certification and collective marks.
There are restrictions in Washington relating to the registrability of marks containing certain words or terms are set forth in RCW 19.77.020. No mark shall be registered if it:
a. Consists of or comprises immoral, deceptive, or scandalous matter; or
b. Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; or
c. Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulation thereof; or
d. Consists of or comprises the name, portrait, or signature identifying a particular living individual who has not consented in writing to its registration; or
e. Consists of or comprises a trademark which so resembles a trademark registered in this state, or a trademark or trade name used in this state by another prior to the date of the applicant’s or applicant’s predecessor’s first use in this state and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive.
These restrictions are nearly identical to the restrictions set forth in Section 2 of the Model Act, except with regard to marks which are merely descriptive, geographically descriptive, or primarily merely a surname. RCW 19.77.030(1)(e) requires a statement in the application for registration that the trademark is presently in use in Washington by the applicant.
The fee of $10 is required for recording an assignment of a trademark, registration, or application as such is set by rule by the Secretary of State. For issuing new registration certificate to assignee, the current fee is $5. RCW 19.77.060. The assignment of registration of trademark form is available electronically at:
http://www.sos.wa.gov/corps/registration_forms.aspx
The Washington statute included presumptions which attach to registration that favor the registrant and motivate registration. The certificate of registration is prima facie evidence of the validity of the registration, registrant’s ownership of the trademark, and registrant’s exclusive right to use the trademark within the state in connection with the goods or services specified. RCW 19.77.040. There is not, however, a presumption of the basic underlying fact, i.e. there is no statutory presumption to the effect that trademark registration creates a presumption of doing business in Washington.
Because the registration is a creature of a Washington statute, the remedies for infringement are effected in Washington state courts. A mark registrant is entitled to injunction against infringing use: RCW 19.77.150 provides for injunctive relief for owners of registered marks. The court may order an infringer to deliver all counterfeits or imitations under its possession or control to an officer of the court or to the registrant, to be destroyed. Also, a registrant can expect to assert an action for monetary damages: An infringer may be required to pay all profits derived from or all damages suffered by reason of the unlawful use of the registrant’s trademark. The court may award reasonable attorney’s fees or an amount not to exceed three times profits and damages to the prevailing party in cases where it finds wrongful acts in bad faith or otherwise according to the circumstances of the case.
The statute provides only for injunctive relief against another person’s commercial use. However, if willful intent is proven, the owner shall be entitled to other remedies set forth in the trademark chapter. No cases have been decided solely under the revised statute. The trademark claim was dismissed in the most recent case involving RCW 19.77.160. See JZK, Inc. v. Glandon, 95 Wash. App. 1030 (Div. 2,1999). In the other reported cases to date, alleged violations of RCW 19.77.160 were also pleaded as violations of the Lanham Act §43 (federal unfair competition statute). See Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 2006 WL 3761367 (W.D. Wash.); eAcceleration Corp. v. Trend Micro, Inc., 408 F. Supp. 2d 1110 (W.D. Wash. 2006); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996); Lamb-Weston, Inc. v. McCain Foods, Inc., 818 F. Supp. 1376 (E.D. Wash. 1993); Hard Rock Cafe´ Licensing Corp. v. Pacific Graphics, Inc., 776 F. Supp. 1454 (W.D. Wash. 1991).
The registrant may sue for infringement. RCW 19.77.150. Where the registrant is not a United States citizen, the scrutiny of the courts, as to the use of the mark is triggered. Washington is a defined geographic market as discussed above and use outside of Washington will not give the alien an advantageous position. Damages or equitable relief may not be awarded in favor of an alien person (non-U.S. citizen) against a domestic person (U.S. citizen) unless:
a. the alien used the mark within the U.S. prior to the domestic person’s use in Washington; or
b. the mark was federally registered in the U.S. or reserved by the Secretary of State to the alien at the time the domestic person commenced use. RCW 19.77.170.
Just as under the federal Lanham act, the Washington state act recognizes that a famous mark can be damaged by the introduction of inferior or different products bearing that famous mark RCW 19.77.160. governs injury to marks that are ‘‘famous’’ in the state. Unlike the Lanham act, dilution is only recognized in the context of the statute. There is no judicially-created dilution doctrine nor what the federal statute and case law calls “tarnishment.” In the same vein, if the requirements of the statute are met, dilution is found; there is no requirement to also prove a likelihood of confusion or association. The statute is applicable notwithstanding the absence of competition between the parties. However, fair use of a famous mark by another person in comparative commercial advertising or promotion is not actionable.
Under Washington law, relative only to a state registration, a court, in determining whether a mark is famous and has a distinctive quality, will consider all relevant factors. The following eight nonexclusive factors are set forth in the statute:
· inherent or acquired distinctiveness of the mark in the state,
· duration and extent of use in connection with the goods or services with which the mark is used,
· advertising and publicity in the state,
· geographical trading area,
· channels of trade,
· degree of recognition in the trading areas and channels of trade in the state of Washington used by the mark’s owner and the other party,
· use of the same or similar marks by third parties, and
· state or federal registration.
· Washington Prohibits Unfair Business Practices Just as under the federal statutes, the Washington statute relating to unfair business practices is entitled “Unfair Business Practices - Consumer Protection,” and is codified in RCW 19.86.010 et seq. Known as the mini-FTC act, the prohibitions under the Washington statute are similar to those set forth in related federal statutes. In particular, RCW 19.86.020 is similar to Section 5(a)(1) of the Federal Trade Commission Act, 15 U.S.C. §45(a)(1); RCW 19.86.030 is similar to Section 1 of the Sherman Antitrust Act, 15 U.S.C. §1; and RCW 19.86.040 is similar to sections of the Clayton Act, 15 U.S.C. §14. The Washington Act also includes provisions that touch on federal conceptions of anti-trust, such as RCW 19.86.050, relating to agreements not to use or deal in a competitor’s goods or services, and RCW 19.86.060 relating to the acquisition of corporate stock by another corporation to lessen competition.
The Washington statute was enacted in 1961, and originally provided only for actions by the Washington Attorney General. In 1970, the statute was amended to provide standing to a private party ‘‘who is injured in his business or property’’ by unfair methods of competition or unfair deceptive acts or practices. In Nordstrom, Inc. v. Tampourlos, 107 Wash. 2d 735, 733 P.2d 208 (1987), the Washington Supreme Court held that the wrongful appropriation of a trade name of another business is an unfair practice in violation of RCW 19.86.020. See also Fish v. Koldkist Beverage Ice, 60 Wash. App. 122 (1991). In Fisher v. World-Wide Trophy Outfitters, 15 Wash. App. 742, 551 P.2d 1398 (1976), the Washington Court of Appeals held that the placement of deceptive advertisements in a magazine of general circulation was privately actionable under RCW 19.86.020. It is a violation of the Consumer Protection Act to label any agricultural commodity with the words ‘‘Washington State grown’’ when the labelled commodity was not, in fact, grown or raised in Washington. RCW 15.04.410.
In an action brought by the Attorney General, in the name of the state when injured directly or indirectly, or as parens patriae on behalf of persons who are purchasers of the goods or services to which a mark applies and are residing in the state, the court may act to restrain and prevent any unlawful act and to restore to any person in interest any monies or property that were acquired by means of the unlawful acts. RCW 19.86.080, 090. In such actions, RCW 19.86.140 provides for a civil penalty of not more than $2,000 for each violation of RCW 19.86.020 and not more than $25,000 for violation of an injunction under RCW 19.86.010 et seq. RCW 19.86.140 provides a civil penalty of not more than $100,000 for any person who violates RCW 19.86.030 or RCW 19.86.040, and a civil penalty of not more than $500,000 for any corporation that violates RCW 19.86.030 or
In contrast, when the party is a private person or entity, RCW 19.86.090 provides a private cause of action to any person injured by means of an unfair method of competition or unfair deceptive acts or practices. In a private action, the court may issue an injunction and/or award actual damages sustained by the injured party. The court may also award costs of the suit, including reasonable attorney’s fees, and the court may also increase the award of damages up to an amount not to exceed three times the actual damages, provided that the increased damage award does not exceed $10,000. For causes of action that accrue on or after July 26, 2009, the amount may not exceed $25,000. If the private action is brought in a state court of limited jurisdiction in Washington (district court), then the actual damage award may not exceed $75,000. RCW 3.66.020. Generally, the statute of limitations for an action brought under RCW 19.86.090 is four years after the cause of action accrues. RCW 19.86.120. There is no provision of the Washington statute that allows for class actions. There is no indication, in either Washington statutes or case law, that class actions would not be allowable under the general civil practice of the state, though given the sweeping nature of class action remedies, this commentator believes that the court would require specific statutory authority to entertain a class action law suit under the statute.
If a person outside the state has engaged in conduct that has had an impact in Washington which RCW 19.86 prohibits, that person has submitted to the jurisidiction of Washington courts. Personal service of any process may then be made upon that person. RCW 19.86.160. While the statute appears in chapters devoted to consumer protection, the criterion is “damaged” by the action and private actions brought by competitors are specifically allowed. In a similar vein, the statute is not explicitly limited to consumer products. However, the statute has been limited by the Washington courts to conduct that affects the public interest. See Segal Co. v. Amazon.com, 280 F. Supp. 2d 1229 (W.D. Wash. 2003).
Washington has no trademark counterfeiting statute aside from the trademark registration statute, and the criminal statute that defines “false advertising” as a misdemeanor. RCW 19.77.140 and RCW 19.77.150 prohibit trademark imitation and counterfeiting and provide remedies for such acts. RCW 9.04.010 et seq. defines ‘‘false advertising’’ as the making, publishing, disseminating, circulating, or placing before the public an advertisement regarding merchandise, securities, services, or anything so offered to the public, which contains any assertion, representation, or statement of fact which is untrue, deceptive, or misleading, with the requisite intent or scienter to induce the public to enter any obligation or transaction relating thereto. RCW 9.04.010 et seq. applies to any goods or services offered to the public. Exceptions are provided for parties who make, publish, disseminate, circulate, or place before the public a false advertisement in good faith without knowledge of its falsity. Because of the criminal nature of the defined conduct, RCW 9.04.060 provides that the only Attorney General or the prosecuting attorneys may bring an action to restrain and prevent false advertising. Any person who violates an order or injunction issued pursuant to RCW 9.04.010 et seq. shall be subject to a fine of not more than $5,000, or imprisonment for not more than 90 days, or both. RCW 9.04.070.
· Specific Issues Relating to Business Names The Washington Business Corporation Act is codified in Title 23B of the Revised Code of Washington. While not specifically a trademark issue, the requirements for registration and renewal of a corporate name are RCW 23B.04.030. Washington allows a person to reserve a corporate name prior to incorporation. RCW 23B.04.020. The name of a for-profit or a nonprofit corporation may be reserved for a nonrenewable period of one hundred eighty days. RCW 23B.04.020, RCW 24.03.046. Substantially similar provisions apply to nonprofit corporations. RCW 24.03.046-048 and RCW 24.06.046-048. There is a $30 fee for reservation of a corporate name. The nonprofit name registration fee is $20. For registration with expedited service, there is an additional fee of $50. Reservation prior to incorporation is not required.
Just as with trademarks, there is an interest that corporate names ought not to be confusingly similar. RCW 23B.04.010 specifies that a corporate name must be distinguishable from the corporate name of a corporation authorized to do business in the state, or any corporate name that has been reserved or registered by another corporation. RCW 23B.15.060 specifies that the name under which a foreign corporation applies for a certificate of authority to transact business in the state must be distinguishable from the name of any domestic corporation or any foreign corporation authorized to transact business in the state, or to any name that has been reserved or registered by another corporation. RCW 23B.04.010(5) specifies that a corporate name shall not be considered distinguishable from an earlier reserved or registered corporate name by virtue of a variation in the use of ‘‘Corporation,’’ ‘‘incorporated,’’ ‘‘Company,’’ ‘‘Limited,’’ ‘‘partnership,’’ ‘‘limited partnership,’’ ‘‘limited liability company,’’ ‘‘limited liability partnership,’’ ‘‘Corp.,’’ ‘‘Inc.,’’ ‘‘Co.,’’ ‘‘LP,’’ ‘‘L.P.,’’ ‘‘LLP,’’ ‘‘L.L.P.,’’ ‘‘LLC,’’ ‘‘L.L.C.’’ or ‘‘LTD.’’ Furthermore, the addition or deletion of an article such as ‘‘the’’ or ‘‘and’’ from the name will not suffice. Punctuation, capitalization, special characters or symbols, or use of abbreviation or the plural form of a word in the same name will not be considered to distinguish the name from earlier reserved or registered names. RCW 24.03.045 states similar nonconflicting name rules for nonprofit corporations.
There is no provision in the Washington Business Corporation Act restricting the use of ‘‘Corporation’’ or ‘‘Inc.,’’ etc., as against businesses that are not incorporated. However, use of such terms by a nonprofit corporation is prohibited. RCW 24.03.045; RCW 24.06.045. Because the corporate structure changes issues of liability of principals, Washington requires that the corporate name must include the word ‘‘Corporation,’’ ‘‘Company,’’ ‘‘Incorporated,’’ or ‘‘Limited,’’ or an abbreviation of one of such words. In the case of a foreign corporation not having such words or abbreviations in its name, the foreign corporation must add one or more of such words or abbreviations to its name for use in Washington.
Just as in the case of a trademark, prior to allowing registration, a search is conducted by the Secretary of State. The Secretary of State’s Office may permit identical words in the names of different corporations, so long as the names as a whole are not substantially identical. Unlike trademark, however, there are no statutes or case law to the effect that substantive trademark or service mark rights are created by incorporation. At best a corporate registration of a name is simply a proof against similar corporate registrations. In the law, there is and ought to be a distinction between the identity of a single good and a company that might make or distribute that good. Application for reservation/renewal of corporate name is available from the Secretary of State. The form is available online at:
http://www.sos.wa.gov/corps/registration_forms.aspx
Just as in the case of the federal law, the laws that institute banks are distinct from those related to the institution of other business entities. RCW 23B.04.010 prohibits the use of any of the following words or phrases in corporate names: ‘‘bank,’’ ‘‘banking,’’ ‘‘banker,’’ ‘‘trust,’’ ‘‘cooperative,’’ or any combination of the words ‘‘Industrial’’ and ‘‘Loan’’ or any two or more of the following words: ‘‘building,’’ ‘‘savings,’’ ‘‘loan,’’ ‘‘home,’’ ‘‘association,’’ ‘‘society,’’ or any word or phrase otherwise prohibited by statute. In Pioneer First Federal Savings & Loan Ass’n v. Pioneer National Bank, 30 Wash. App. 597, 637 P.2d 661 (1981), aff’d in part, rev’d in part, 98 Wash. 2d 853, 659 P.2d 481 (1983), the Washington Supreme Court held that state unfair competition laws relating to national bank names were preempted by the National Banking Act, 12 U.S.C. Ch. 2. In Pioneer, the court also indicated that trade name protection was limited to the extent of competition in a given market area, and therefore presumably held that the right of expansion does not exist in Washington.
Washington has a “fictitious name” statute to provide a means of finding the underlying business entity that “does business as” a distinct name. Washington’s trade name registration statute was enacted in 1984, and is codified as RCW 19.80.001 et seq. The purpose of the statute is to require each person who is conducting business in the state of Washington under a trade name to disclose the true and real name of each person or entity conducting that business, and to provide a central registry of businesses operating under a trade name in the State of Washington. RCW 19.80.001. The statute uses the term ‘‘trade name’’ to designate only a fictitious or assumed business name. The Washington courts have stated that the purpose of Washington’s prior trade name registration statute was to advise anyone extending credit to a business that operated under an assumed name of the names of the real persons conducting the business. See Hanson v. Roesch, 104 Wash. 257, 176 P. 349 (1918).
The statute requires registration by any person who shall carry on, conduct, or transact business in the state under any trade name. RCW 19.80.010. ‘‘Trade name’’ is defined as a word or a name, or any combination of word or name, used by a person to identify the person’s business, that does not include the true and real names of all persons conducting the business, or that does include words that suggest additional parties of interest such as ‘‘Company,’’ ‘‘and Sons,’’ or ‘‘and Associates.’’ RCW 19.80.005(4). The expression ‘‘true and real name’’ means:
1) the surname of an individual coupled with one or more of the individual’s other names, one or more of the individual’s initials, or any combination thereof;
2) the designation or appellation by which an individual is best known and called in the business community where that individual transacts business, if this is used as that individual’s signature;
3) the registered corporate name of a domestic or foreign corporation as filed with the Secretary of State;
4) the registered partnership name of a domestic or foreign limited partnership as filed with the Secretary of State; or
5) the name of a general partnership which includes in its name the true and real names, as defined above, of each general partner. RCW 19.80.005(5).
· Limited partnerships are required to register.
Washington has a single, centralized filing system in which registration of trade names is made with the Department of Revenue rather than with the Secretary of State. Registration forms may be obtained from, and should be filed with,
State of Washington
Business Licensing Service
PO Box 9034
Olympia, WA 98507-9034
Telephone: 1-800-451-7985
web site: http://bls.dor.wa.gov
All forms necessary to file a trade name are also available electronically at http://bls.dor.wa.gov/forms. The registration fee is $5 with an application fee of $15.
The trade name registration statute also applies to any foreign corporation that is carrying on, conducting, or transacting business in the state under any trade name. The courts of the state of Washington can only recognize a registered entity thus, no person transacting business under a trade name is entitled to maintain a suit in any of the courts of the state until the person has properly completed a trade name registration. Failure to register does not impair the validity of any contract or act, and does not prevent a person from defending a suit. The Washington Court of Appeals has held that under a prior trade name registration statute, failure to register a trade name must be raised by the defendant in its answer or in an earlier pleading, or else it is waived. See Dearborn Lumber Co. v. Upton Enterprises, Inc., 34 Wash. App. 490, 662 P.2d 76 (1983).
RCW 19.80.025(2) provides that a notice of cancellation is to be filed with the Department of Revenue when use of a trade name is discontinued. The statute also provides for filing an amendment when a change occurs in the true and real names of persons conducting a business under a trade name, or in any mailing address set forth in the registration, or in a subsequently filed amendment. A notice of cancellation is to be filed, together with a new registration, when a change of person or persons conducting business under a registered trade name occurs, or when there is a change in the wording or spelling of a registered trade name.
The Washington courts have recognized a state common law action for imitation of unregistered trade names and trademarks similar to that available for a federal registration under the Lanham Act. The Washington courts follow and frequently cite the following eight precepts in cases involving common law trade name infringement.
1. The right to use a particular name as a trade name belongs to the one who first appropriates and uses it in connection with a particular business.
2. A person, whether individual or corporate, may not use any name, not even his or its own, which is the distinctive feature of a trade name already in use by another, if such use by the one person tends to confuse, in the public mind, the business of such person with that of the other.
3. The prior user may be entitled to relief regardless of actual fraud or intent to deceive on the part of a subsequent appropriator.
4. To acquire the right to use a particular name, it is not necessary that the name be used for any considerable length of time. It is enough to show that one was actually using it before it was begun to be used by the other.
5. A trade name may be abandoned or given up by the original proprietor and, when it is so abandoned or given up, any other person has the right to seize upon it immediately, and make use of it, and thus acquire a right to it superior not only to the right of the original user, but to all the world.
6. Use of a trade name, in order to be an infringement upon another, need not be exactly like it in form and sound. It is enough if the one so resembles another as to deceive or mislead persons of ordinary caution into the belief that they are dealing with one concern when, in fact, they are dealing with the other.
7. The rule is no different when the name, or some part thereof, is a geographical name, or contains descriptive words which have acquired a second meaning.
8. Prior right to the use of a name will be protected by injunction against others using it unfairly.
These eight rules were initially adopted in state jurisprudence by the Washington Supreme Court in Seattle Street Railway & Municipal Employees Relief Ass’n v. Amalgamated Ass’n of Street, Electric Railway & Motor Coach Employees of America, 3 Wash. 2d 520, 101 P.2d 338 (1940). A number of cases cited by the court in Seattle Street Railway were trademark cases or mixed trademark/trade name cases. See, e.g., Queen Anne Candy Co. v. F.W. Woolworth Co., 165 Wash. 143, 4 P.2d 844 (1931); and Olympia Brewing Co. v. Northwest Brewing Co., 178 Wash. 533, 35 P.2d 104 (1934). Washington courts would apply the rules in trademark cases as well as in trade name cases.
Because the scope of trade protection models the federal law, the Washington Court of Appeals has stated that an action for trade dress infringement is actionable in Washington, although, under the particular facts of the case, no infringement was found. Cedar-Al Products, Inc. v. Chamberlain, 38 Wash. App. 626, 687 P.2d 880 (1984). The Cedar-Al case also held that color alone cannot be used to distinguish a product.
Injunctions are available for infringement of a trade name or trademark. The scope of an injunction in a trade name case is governed by four factors:
1) whether the trade name was vaguely descriptive or clearly nondescriptive, i.e., the appropriability of the name;
2) the originality of the name;
3) whether or not the defendant acted in good faith; and
4) the extent of competition between plaintiff’s and defendant’s businesses.
See Bishop v. Hanenburg, 39 Wash. App. 734, 695 P.2d 607 (1985). Similar factors would probably be applicable in a trademark case.
There is a strong tendency in common law trade name infringement cases to grant a limited injunction that requires the defendant to add one or more qualifying words to its trade name. For example, in a case in which the plaintiff’s trade name was ‘‘Puget Sound Rendering, Inc.,’’ the defendant’s trade name was ‘‘Puget Sound By-Products,’’ the parties were engaged in substantially identical businesses, and significant evidence of actual confusion was presented, the Washington Court of Appeals held that even where the public has been confused because certain key words are identical, Washington courts have allowed continued use of identical words subject to safeguards designed to avoid confusion. Puget Sound Rendering, Inc. v. Puget Sound By-Products, 26 Wash. App. 724, 615 P.2d 504 (1980). The court further stated that the factors listed above might in some instances support totally prohibiting the use of certain words, although such extreme relief was not warranted in the case at hand. There is no Washington common law dealing with the awarding of damages. Realize, however, the issue is made more confusing by the fact that the similar nature of the names relies upon a geographic location, Puget Sound, and in a slightly different context, the Court might be willing to require somewhat greater qualification to prevent confusion of the public.
· Washington Recognizes Publicity Rights as an Impediment to Registration A further factor in name selection is that Washington recognizes a common law right of publicity. The defining Washington case relating to the right of publicity is State ex rel. La Follette v. Hinkle, 131 Wash. 86, 229 P. 317 (1924). In this case, the court held that the plaintiff, who was the Progressive Party candidate for the presidency of the United States, had the right to prevent a second party, known as the La Follette State Party, from nominating candidates for state office under the La Follette State Party designation. The court held that the persons organizing the La Follette State Party had no right to use Mr. La Follette’s name in that connection against his wishes, stating that nothing so exclusively belongs to a man or is so personal and valuable to him as his name. The court further stated that in such a case, it is not necessary to allege or prove that such unauthorized use will damage the plaintiff, and that the law will presume such damage.
Over time, the Washington legislature codified the publicity rights at RCW 63.60.010 et seq, adopted in 1998. established a statutory basis for publicity or personality rights in Washington state. RCW 63.60.010 defines the use of a person’s name, voice, signature, photograph, or likeness as a property right. The statute prohibits any person from using the voice, name, signature, photograph, or likeness of anyone, living or deceased, in or on goods, merchandise, products, or advertising for any of the above, or for fundraising or solicitation of donations in the state, without consent of the owner of the right. RCW 63.60.050. Consent includes both written and oral, express and implied consent. In order to be a violation of the statute, the infringer must make more than an insignificant, de minimus, or incidental use.
The statute does differentiate between ‘‘individuals’’ and ‘‘personalities.’’ According to the statute, an individual is any person, living or dead, who died after January 1, 1988. A personality is a person whose name, voice, signature, photograph, or likeness had a commercial value at the time of death and who died after January 1, 1948. The right to publicity extends to both individuals and personalities after their death, and extends to both whether they died before or after enactment of the statute. RCW 63.60.040. The term of survival is 10 years after death for an individual, and 75 years after death for a personality. RCW 63.60.040. The courts may grant injunctions to prevent or restrain unauthorized use of personality rights. The court may even authorize the destruction or other reasonable disposition of any materials made in violation of the injured party’s rights. The infringer will be liable for up to $1500 or the actual damages due to the result of the infringement, whichever is larger, and all profits made from the infringement. The prevailing party in an action brought under this section may recover attorney’s fees and costs along with the other remedies to which they are entitled. RCW 63.60.060.
It is not a violation of the statute if a person’s personality rights are used for cultural, historical, political, religious, educational, newsworthy, or public interest matters, including matters of comment, criticism, satire, and parody. RCW 63.60.70(1). The statute also does not apply to using those rights in single, not widely reproduced, works of fine art, literary, theatrical, film, radio, musical, online, television, magazine works or news stories, public affairs reports, sports broadcasts, and political campaigns, where the use does not inaccurately claim or state an endorsement by the individual or personality. Personality rights may also be used for the advertisement of non-infringing uses without gaining consent from the owner of the rights. RCW 63.60.070(2). The statute also does not apply to uses of a name, when that name is used fairly and in good faith for a merely descriptive purpose for the identification or description of something other than the individual or personality, such as to denote a style, theory, or place. RCW 63.60.070(5). Owners or employees of a medium used for advertising who have published or disseminated any infringing advertisements or solicitations, unless the advertisements or solicitations were intended to promote the medium itself, are not liable. RCW 63.60.070(4).
· Deceptive Use of a Trademark is Criminal in Washington The deceptive use of marks or brands may be punishable criminally in Washington:
· RCW 9.16.005 et seq. was the chapter of the Washington Criminal Code dealing with crimes relating to brands and trademarks, but effective July 25, 1999, it was amended to be a more general counterfeiting statute.
· For crimes relating to the use of a counterfeit trademark or trade name in connection with a controlled substance, see RCW 69.50.416.
· RCW 9.16.020 relates to the imitation of brands. RCW 9.16.030 states that any person who wilfully and knowingly, and for financial gain, manufactures, uses, displays, advertises, distributes, offers for sale, sells or possesses with intent to sell or distribute any item, or offers any services, bearing or identified by a counterfeit mark, is guilty of the crime of counterfeiting. Any state or federal certificate of registration of any intellectual property is prima facie evidence of the facts stated in the certificate. Counterfeiting can be a misdemeanor up to a class C felony according to criteria laid out in RCW 9.16.035. RCW 9.16.060 relates to fraudulent registration of a trademark. Violation is a misdemeanor.
· RCW 9.16.100 and 9.16.120 relate to the improper use of the words ‘‘sterling silver’’ and ‘‘coin silver.’’ Violation is a gross misdemeanor. RCW 9.16.110 and 9.16.130 relate to the improper use of the words ‘‘coin silver.’’ Violation is a gross misdemeanor. RCW 9.16.140 relates to the unlawful marking of gold articles. Violation is a gross misdemeanor.
Washington does not have a RICO statute, per se, but does have the Criminal Profiteering Act, RCW 9A.82, which allows persons who have sustained personal, business, or property damage by an act of criminal profiteering to file for recovery of damages and cost of litigation.
Washington Secretary of State
Corporations Division
801 Capital Way S.
PO Box 40234
Olympia, WA 98504-0234
(360) 725-0377
e-mail: [email protected]
The registration procedure, as is the case of a federal registration, is purely a creature of statute, and is set forth in RCW 19.77.030. Likewise, the filing fee is set by rule by the Secretary of State. The fee established by the Secretary may vary based upon the number of categories listed in the application. The fee is currently $55 per classification number as each classification subsists independently of others. When one application includes goods/services that fall within multiple classes, payment of a fee for each class may be required. RCW 19.77.115. Classifications have been selected, largely, to define distinct markets, even if there are actually related markets. The classification of goods and services is established by the Secretary of State and largely conform to the U.S. classification system. A single application may include any or all goods/services upon which the mark is being used indicating the appropriate class or classes. The Secretary’s classifications provide bright lines to calculate fees.
To demonstrate the use of the trademark, as it is to be protected by the registration, the applicant must provide three specimens or facsimiles, including one original, are required for each of the goods or services for which registration is requested.
Registration subsists for a period of five years. RCW 19.77.050. An application for renewal of a registration may be filed with the Secretary of State six months prior to the date of expiration of the registration and, as with the original application, must be accompanied by three samples, including one original specimen as currently used. The renewal application requires all the allegations of an application for original registration. The registration may only be renewed for goods or services for which the trademark is still in use in Washington for successive terms of five years. Notification of the necessity for renewal is sent to the registrant, or to its agent for service of record, within the year but not less than six months next preceding the expiration of the original registration or renewal term. RCW 19.77.050 states that neither the Secretary of State’s failure to notify a registrant nor the registrant’s nonreceipt of notice will extend the registration term or excuse registrant’s failure to renew.
The application for registration and the application for renewal of a registration are made on the same form provided by the Secretary of State. The distinction between registration and renewal of registration is indicated by filling out the appropriate box. The renewal fee is set by rule by the Secretary of State, and is currently $50 per classification number. The trademark registration/renewal form is available electronically at http://www.sos.wa.gov/corps/registration_forms.aspx
Just as in the case of the federal statute, the Washington statute includes a provision for the reservation of a mark with intent to register it in the future. The exclusive right to use a trademark may be reserved by a person intending to register a trademark, or a foreign or domestic corporation intending to change its trademark. The reservation can be made by filing an application to reserve a specified trademark or service mark with the Secretary of State. However, the reservation is limited to one filing. The term of such a reservation is one hundred eighty (180) days. RCW 19.77.015.
The Washington state registration only confers rights within Washington and, in fact, the nature and depth of examination that accompanies the application is, because of the limited scope of coverage, not as extensive as that of the federal trademark system. The fees paid to the state will support the conduct of a search for potential marks prior to accepting the filing an application for registration. The search includes only trademarks previously registered in Washington assuring that marks existing outside of the state of Washington will not be given cross-border statutory rights without actually filing in Washington state.
While word marks are inherently susceptible to text-based searches, Design marks present a special challenge to characterize the designs thereby to enable searching. design marks are indexed by means of a word or words describing the design. It is these descriptors that are searched so it is possible that nearly identical design marks could exist on the Washington registry without being found in response the preapproval search. Searching is purely text-based and where two such marks are registered, to the extent necessary, the courts will harmonize the registrations. For either word or design marks, the records are searched according to the terms describing the mark regardless of class. Where no conflict is noted, the application moves to registration.
Washington does not have a “doing business in Washington” requirement for registration of a trademark; however, the application for trademark registration must include a statement that the trademark is presently in use in Washington by the applicant. RCW 19.77.030(1)(e). A collective trademark, collective trade mark, or collective mark is a trademark owned by an organization (such as an association), used by its members them to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization. Collective trademarks are exceptions to the underlying principle of trademarks in that most trademarks serve as “badges of origin”; they indicate the individual source of the goods or services. A collective trademark, however, can be used by a variety of traders, rather than just one individual concern, provided that the trader belongs to the association. Collective trademarks differ from certification marks. The main difference is that collective trademarks may be used by particular members of the organization which owns them, while certification marks may be used by anybody who complies with the standards defined by the owner of the particular certification mark. The Washington statute provides for registration only of trademarks and service marks. There are no provisions for the registration of certification and collective marks.
There are restrictions in Washington relating to the registrability of marks containing certain words or terms are set forth in RCW 19.77.020. No mark shall be registered if it:
a. Consists of or comprises immoral, deceptive, or scandalous matter; or
b. Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; or
c. Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulation thereof; or
d. Consists of or comprises the name, portrait, or signature identifying a particular living individual who has not consented in writing to its registration; or
e. Consists of or comprises a trademark which so resembles a trademark registered in this state, or a trademark or trade name used in this state by another prior to the date of the applicant’s or applicant’s predecessor’s first use in this state and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive.
These restrictions are nearly identical to the restrictions set forth in Section 2 of the Model Act, except with regard to marks which are merely descriptive, geographically descriptive, or primarily merely a surname. RCW 19.77.030(1)(e) requires a statement in the application for registration that the trademark is presently in use in Washington by the applicant.
The fee of $10 is required for recording an assignment of a trademark, registration, or application as such is set by rule by the Secretary of State. For issuing new registration certificate to assignee, the current fee is $5. RCW 19.77.060. The assignment of registration of trademark form is available electronically at:
http://www.sos.wa.gov/corps/registration_forms.aspx
The Washington statute included presumptions which attach to registration that favor the registrant and motivate registration. The certificate of registration is prima facie evidence of the validity of the registration, registrant’s ownership of the trademark, and registrant’s exclusive right to use the trademark within the state in connection with the goods or services specified. RCW 19.77.040. There is not, however, a presumption of the basic underlying fact, i.e. there is no statutory presumption to the effect that trademark registration creates a presumption of doing business in Washington.
Because the registration is a creature of a Washington statute, the remedies for infringement are effected in Washington state courts. A mark registrant is entitled to injunction against infringing use: RCW 19.77.150 provides for injunctive relief for owners of registered marks. The court may order an infringer to deliver all counterfeits or imitations under its possession or control to an officer of the court or to the registrant, to be destroyed. Also, a registrant can expect to assert an action for monetary damages: An infringer may be required to pay all profits derived from or all damages suffered by reason of the unlawful use of the registrant’s trademark. The court may award reasonable attorney’s fees or an amount not to exceed three times profits and damages to the prevailing party in cases where it finds wrongful acts in bad faith or otherwise according to the circumstances of the case.
The statute provides only for injunctive relief against another person’s commercial use. However, if willful intent is proven, the owner shall be entitled to other remedies set forth in the trademark chapter. No cases have been decided solely under the revised statute. The trademark claim was dismissed in the most recent case involving RCW 19.77.160. See JZK, Inc. v. Glandon, 95 Wash. App. 1030 (Div. 2,1999). In the other reported cases to date, alleged violations of RCW 19.77.160 were also pleaded as violations of the Lanham Act §43 (federal unfair competition statute). See Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 2006 WL 3761367 (W.D. Wash.); eAcceleration Corp. v. Trend Micro, Inc., 408 F. Supp. 2d 1110 (W.D. Wash. 2006); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996); Lamb-Weston, Inc. v. McCain Foods, Inc., 818 F. Supp. 1376 (E.D. Wash. 1993); Hard Rock Cafe´ Licensing Corp. v. Pacific Graphics, Inc., 776 F. Supp. 1454 (W.D. Wash. 1991).
The registrant may sue for infringement. RCW 19.77.150. Where the registrant is not a United States citizen, the scrutiny of the courts, as to the use of the mark is triggered. Washington is a defined geographic market as discussed above and use outside of Washington will not give the alien an advantageous position. Damages or equitable relief may not be awarded in favor of an alien person (non-U.S. citizen) against a domestic person (U.S. citizen) unless:
a. the alien used the mark within the U.S. prior to the domestic person’s use in Washington; or
b. the mark was federally registered in the U.S. or reserved by the Secretary of State to the alien at the time the domestic person commenced use. RCW 19.77.170.
Just as under the federal Lanham act, the Washington state act recognizes that a famous mark can be damaged by the introduction of inferior or different products bearing that famous mark RCW 19.77.160. governs injury to marks that are ‘‘famous’’ in the state. Unlike the Lanham act, dilution is only recognized in the context of the statute. There is no judicially-created dilution doctrine nor what the federal statute and case law calls “tarnishment.” In the same vein, if the requirements of the statute are met, dilution is found; there is no requirement to also prove a likelihood of confusion or association. The statute is applicable notwithstanding the absence of competition between the parties. However, fair use of a famous mark by another person in comparative commercial advertising or promotion is not actionable.
Under Washington law, relative only to a state registration, a court, in determining whether a mark is famous and has a distinctive quality, will consider all relevant factors. The following eight nonexclusive factors are set forth in the statute:
· inherent or acquired distinctiveness of the mark in the state,
· duration and extent of use in connection with the goods or services with which the mark is used,
· advertising and publicity in the state,
· geographical trading area,
· channels of trade,
· degree of recognition in the trading areas and channels of trade in the state of Washington used by the mark’s owner and the other party,
· use of the same or similar marks by third parties, and
· state or federal registration.
· Washington Prohibits Unfair Business Practices Just as under the federal statutes, the Washington statute relating to unfair business practices is entitled “Unfair Business Practices - Consumer Protection,” and is codified in RCW 19.86.010 et seq. Known as the mini-FTC act, the prohibitions under the Washington statute are similar to those set forth in related federal statutes. In particular, RCW 19.86.020 is similar to Section 5(a)(1) of the Federal Trade Commission Act, 15 U.S.C. §45(a)(1); RCW 19.86.030 is similar to Section 1 of the Sherman Antitrust Act, 15 U.S.C. §1; and RCW 19.86.040 is similar to sections of the Clayton Act, 15 U.S.C. §14. The Washington Act also includes provisions that touch on federal conceptions of anti-trust, such as RCW 19.86.050, relating to agreements not to use or deal in a competitor’s goods or services, and RCW 19.86.060 relating to the acquisition of corporate stock by another corporation to lessen competition.
The Washington statute was enacted in 1961, and originally provided only for actions by the Washington Attorney General. In 1970, the statute was amended to provide standing to a private party ‘‘who is injured in his business or property’’ by unfair methods of competition or unfair deceptive acts or practices. In Nordstrom, Inc. v. Tampourlos, 107 Wash. 2d 735, 733 P.2d 208 (1987), the Washington Supreme Court held that the wrongful appropriation of a trade name of another business is an unfair practice in violation of RCW 19.86.020. See also Fish v. Koldkist Beverage Ice, 60 Wash. App. 122 (1991). In Fisher v. World-Wide Trophy Outfitters, 15 Wash. App. 742, 551 P.2d 1398 (1976), the Washington Court of Appeals held that the placement of deceptive advertisements in a magazine of general circulation was privately actionable under RCW 19.86.020. It is a violation of the Consumer Protection Act to label any agricultural commodity with the words ‘‘Washington State grown’’ when the labelled commodity was not, in fact, grown or raised in Washington. RCW 15.04.410.
In an action brought by the Attorney General, in the name of the state when injured directly or indirectly, or as parens patriae on behalf of persons who are purchasers of the goods or services to which a mark applies and are residing in the state, the court may act to restrain and prevent any unlawful act and to restore to any person in interest any monies or property that were acquired by means of the unlawful acts. RCW 19.86.080, 090. In such actions, RCW 19.86.140 provides for a civil penalty of not more than $2,000 for each violation of RCW 19.86.020 and not more than $25,000 for violation of an injunction under RCW 19.86.010 et seq. RCW 19.86.140 provides a civil penalty of not more than $100,000 for any person who violates RCW 19.86.030 or RCW 19.86.040, and a civil penalty of not more than $500,000 for any corporation that violates RCW 19.86.030 or
In contrast, when the party is a private person or entity, RCW 19.86.090 provides a private cause of action to any person injured by means of an unfair method of competition or unfair deceptive acts or practices. In a private action, the court may issue an injunction and/or award actual damages sustained by the injured party. The court may also award costs of the suit, including reasonable attorney’s fees, and the court may also increase the award of damages up to an amount not to exceed three times the actual damages, provided that the increased damage award does not exceed $10,000. For causes of action that accrue on or after July 26, 2009, the amount may not exceed $25,000. If the private action is brought in a state court of limited jurisdiction in Washington (district court), then the actual damage award may not exceed $75,000. RCW 3.66.020. Generally, the statute of limitations for an action brought under RCW 19.86.090 is four years after the cause of action accrues. RCW 19.86.120. There is no provision of the Washington statute that allows for class actions. There is no indication, in either Washington statutes or case law, that class actions would not be allowable under the general civil practice of the state, though given the sweeping nature of class action remedies, this commentator believes that the court would require specific statutory authority to entertain a class action law suit under the statute.
If a person outside the state has engaged in conduct that has had an impact in Washington which RCW 19.86 prohibits, that person has submitted to the jurisidiction of Washington courts. Personal service of any process may then be made upon that person. RCW 19.86.160. While the statute appears in chapters devoted to consumer protection, the criterion is “damaged” by the action and private actions brought by competitors are specifically allowed. In a similar vein, the statute is not explicitly limited to consumer products. However, the statute has been limited by the Washington courts to conduct that affects the public interest. See Segal Co. v. Amazon.com, 280 F. Supp. 2d 1229 (W.D. Wash. 2003).
Washington has no trademark counterfeiting statute aside from the trademark registration statute, and the criminal statute that defines “false advertising” as a misdemeanor. RCW 19.77.140 and RCW 19.77.150 prohibit trademark imitation and counterfeiting and provide remedies for such acts. RCW 9.04.010 et seq. defines ‘‘false advertising’’ as the making, publishing, disseminating, circulating, or placing before the public an advertisement regarding merchandise, securities, services, or anything so offered to the public, which contains any assertion, representation, or statement of fact which is untrue, deceptive, or misleading, with the requisite intent or scienter to induce the public to enter any obligation or transaction relating thereto. RCW 9.04.010 et seq. applies to any goods or services offered to the public. Exceptions are provided for parties who make, publish, disseminate, circulate, or place before the public a false advertisement in good faith without knowledge of its falsity. Because of the criminal nature of the defined conduct, RCW 9.04.060 provides that the only Attorney General or the prosecuting attorneys may bring an action to restrain and prevent false advertising. Any person who violates an order or injunction issued pursuant to RCW 9.04.010 et seq. shall be subject to a fine of not more than $5,000, or imprisonment for not more than 90 days, or both. RCW 9.04.070.
· Specific Issues Relating to Business Names The Washington Business Corporation Act is codified in Title 23B of the Revised Code of Washington. While not specifically a trademark issue, the requirements for registration and renewal of a corporate name are RCW 23B.04.030. Washington allows a person to reserve a corporate name prior to incorporation. RCW 23B.04.020. The name of a for-profit or a nonprofit corporation may be reserved for a nonrenewable period of one hundred eighty days. RCW 23B.04.020, RCW 24.03.046. Substantially similar provisions apply to nonprofit corporations. RCW 24.03.046-048 and RCW 24.06.046-048. There is a $30 fee for reservation of a corporate name. The nonprofit name registration fee is $20. For registration with expedited service, there is an additional fee of $50. Reservation prior to incorporation is not required.
Just as with trademarks, there is an interest that corporate names ought not to be confusingly similar. RCW 23B.04.010 specifies that a corporate name must be distinguishable from the corporate name of a corporation authorized to do business in the state, or any corporate name that has been reserved or registered by another corporation. RCW 23B.15.060 specifies that the name under which a foreign corporation applies for a certificate of authority to transact business in the state must be distinguishable from the name of any domestic corporation or any foreign corporation authorized to transact business in the state, or to any name that has been reserved or registered by another corporation. RCW 23B.04.010(5) specifies that a corporate name shall not be considered distinguishable from an earlier reserved or registered corporate name by virtue of a variation in the use of ‘‘Corporation,’’ ‘‘incorporated,’’ ‘‘Company,’’ ‘‘Limited,’’ ‘‘partnership,’’ ‘‘limited partnership,’’ ‘‘limited liability company,’’ ‘‘limited liability partnership,’’ ‘‘Corp.,’’ ‘‘Inc.,’’ ‘‘Co.,’’ ‘‘LP,’’ ‘‘L.P.,’’ ‘‘LLP,’’ ‘‘L.L.P.,’’ ‘‘LLC,’’ ‘‘L.L.C.’’ or ‘‘LTD.’’ Furthermore, the addition or deletion of an article such as ‘‘the’’ or ‘‘and’’ from the name will not suffice. Punctuation, capitalization, special characters or symbols, or use of abbreviation or the plural form of a word in the same name will not be considered to distinguish the name from earlier reserved or registered names. RCW 24.03.045 states similar nonconflicting name rules for nonprofit corporations.
There is no provision in the Washington Business Corporation Act restricting the use of ‘‘Corporation’’ or ‘‘Inc.,’’ etc., as against businesses that are not incorporated. However, use of such terms by a nonprofit corporation is prohibited. RCW 24.03.045; RCW 24.06.045. Because the corporate structure changes issues of liability of principals, Washington requires that the corporate name must include the word ‘‘Corporation,’’ ‘‘Company,’’ ‘‘Incorporated,’’ or ‘‘Limited,’’ or an abbreviation of one of such words. In the case of a foreign corporation not having such words or abbreviations in its name, the foreign corporation must add one or more of such words or abbreviations to its name for use in Washington.
Just as in the case of a trademark, prior to allowing registration, a search is conducted by the Secretary of State. The Secretary of State’s Office may permit identical words in the names of different corporations, so long as the names as a whole are not substantially identical. Unlike trademark, however, there are no statutes or case law to the effect that substantive trademark or service mark rights are created by incorporation. At best a corporate registration of a name is simply a proof against similar corporate registrations. In the law, there is and ought to be a distinction between the identity of a single good and a company that might make or distribute that good. Application for reservation/renewal of corporate name is available from the Secretary of State. The form is available online at:
http://www.sos.wa.gov/corps/registration_forms.aspx
Just as in the case of the federal law, the laws that institute banks are distinct from those related to the institution of other business entities. RCW 23B.04.010 prohibits the use of any of the following words or phrases in corporate names: ‘‘bank,’’ ‘‘banking,’’ ‘‘banker,’’ ‘‘trust,’’ ‘‘cooperative,’’ or any combination of the words ‘‘Industrial’’ and ‘‘Loan’’ or any two or more of the following words: ‘‘building,’’ ‘‘savings,’’ ‘‘loan,’’ ‘‘home,’’ ‘‘association,’’ ‘‘society,’’ or any word or phrase otherwise prohibited by statute. In Pioneer First Federal Savings & Loan Ass’n v. Pioneer National Bank, 30 Wash. App. 597, 637 P.2d 661 (1981), aff’d in part, rev’d in part, 98 Wash. 2d 853, 659 P.2d 481 (1983), the Washington Supreme Court held that state unfair competition laws relating to national bank names were preempted by the National Banking Act, 12 U.S.C. Ch. 2. In Pioneer, the court also indicated that trade name protection was limited to the extent of competition in a given market area, and therefore presumably held that the right of expansion does not exist in Washington.
Washington has a “fictitious name” statute to provide a means of finding the underlying business entity that “does business as” a distinct name. Washington’s trade name registration statute was enacted in 1984, and is codified as RCW 19.80.001 et seq. The purpose of the statute is to require each person who is conducting business in the state of Washington under a trade name to disclose the true and real name of each person or entity conducting that business, and to provide a central registry of businesses operating under a trade name in the State of Washington. RCW 19.80.001. The statute uses the term ‘‘trade name’’ to designate only a fictitious or assumed business name. The Washington courts have stated that the purpose of Washington’s prior trade name registration statute was to advise anyone extending credit to a business that operated under an assumed name of the names of the real persons conducting the business. See Hanson v. Roesch, 104 Wash. 257, 176 P. 349 (1918).
The statute requires registration by any person who shall carry on, conduct, or transact business in the state under any trade name. RCW 19.80.010. ‘‘Trade name’’ is defined as a word or a name, or any combination of word or name, used by a person to identify the person’s business, that does not include the true and real names of all persons conducting the business, or that does include words that suggest additional parties of interest such as ‘‘Company,’’ ‘‘and Sons,’’ or ‘‘and Associates.’’ RCW 19.80.005(4). The expression ‘‘true and real name’’ means:
1) the surname of an individual coupled with one or more of the individual’s other names, one or more of the individual’s initials, or any combination thereof;
2) the designation or appellation by which an individual is best known and called in the business community where that individual transacts business, if this is used as that individual’s signature;
3) the registered corporate name of a domestic or foreign corporation as filed with the Secretary of State;
4) the registered partnership name of a domestic or foreign limited partnership as filed with the Secretary of State; or
5) the name of a general partnership which includes in its name the true and real names, as defined above, of each general partner. RCW 19.80.005(5).
· Limited partnerships are required to register.
Washington has a single, centralized filing system in which registration of trade names is made with the Department of Revenue rather than with the Secretary of State. Registration forms may be obtained from, and should be filed with,
State of Washington
Business Licensing Service
PO Box 9034
Olympia, WA 98507-9034
Telephone: 1-800-451-7985
web site: http://bls.dor.wa.gov
All forms necessary to file a trade name are also available electronically at http://bls.dor.wa.gov/forms. The registration fee is $5 with an application fee of $15.
The trade name registration statute also applies to any foreign corporation that is carrying on, conducting, or transacting business in the state under any trade name. The courts of the state of Washington can only recognize a registered entity thus, no person transacting business under a trade name is entitled to maintain a suit in any of the courts of the state until the person has properly completed a trade name registration. Failure to register does not impair the validity of any contract or act, and does not prevent a person from defending a suit. The Washington Court of Appeals has held that under a prior trade name registration statute, failure to register a trade name must be raised by the defendant in its answer or in an earlier pleading, or else it is waived. See Dearborn Lumber Co. v. Upton Enterprises, Inc., 34 Wash. App. 490, 662 P.2d 76 (1983).
RCW 19.80.025(2) provides that a notice of cancellation is to be filed with the Department of Revenue when use of a trade name is discontinued. The statute also provides for filing an amendment when a change occurs in the true and real names of persons conducting a business under a trade name, or in any mailing address set forth in the registration, or in a subsequently filed amendment. A notice of cancellation is to be filed, together with a new registration, when a change of person or persons conducting business under a registered trade name occurs, or when there is a change in the wording or spelling of a registered trade name.
The Washington courts have recognized a state common law action for imitation of unregistered trade names and trademarks similar to that available for a federal registration under the Lanham Act. The Washington courts follow and frequently cite the following eight precepts in cases involving common law trade name infringement.
1. The right to use a particular name as a trade name belongs to the one who first appropriates and uses it in connection with a particular business.
2. A person, whether individual or corporate, may not use any name, not even his or its own, which is the distinctive feature of a trade name already in use by another, if such use by the one person tends to confuse, in the public mind, the business of such person with that of the other.
3. The prior user may be entitled to relief regardless of actual fraud or intent to deceive on the part of a subsequent appropriator.
4. To acquire the right to use a particular name, it is not necessary that the name be used for any considerable length of time. It is enough to show that one was actually using it before it was begun to be used by the other.
5. A trade name may be abandoned or given up by the original proprietor and, when it is so abandoned or given up, any other person has the right to seize upon it immediately, and make use of it, and thus acquire a right to it superior not only to the right of the original user, but to all the world.
6. Use of a trade name, in order to be an infringement upon another, need not be exactly like it in form and sound. It is enough if the one so resembles another as to deceive or mislead persons of ordinary caution into the belief that they are dealing with one concern when, in fact, they are dealing with the other.
7. The rule is no different when the name, or some part thereof, is a geographical name, or contains descriptive words which have acquired a second meaning.
8. Prior right to the use of a name will be protected by injunction against others using it unfairly.
These eight rules were initially adopted in state jurisprudence by the Washington Supreme Court in Seattle Street Railway & Municipal Employees Relief Ass’n v. Amalgamated Ass’n of Street, Electric Railway & Motor Coach Employees of America, 3 Wash. 2d 520, 101 P.2d 338 (1940). A number of cases cited by the court in Seattle Street Railway were trademark cases or mixed trademark/trade name cases. See, e.g., Queen Anne Candy Co. v. F.W. Woolworth Co., 165 Wash. 143, 4 P.2d 844 (1931); and Olympia Brewing Co. v. Northwest Brewing Co., 178 Wash. 533, 35 P.2d 104 (1934). Washington courts would apply the rules in trademark cases as well as in trade name cases.
Because the scope of trade protection models the federal law, the Washington Court of Appeals has stated that an action for trade dress infringement is actionable in Washington, although, under the particular facts of the case, no infringement was found. Cedar-Al Products, Inc. v. Chamberlain, 38 Wash. App. 626, 687 P.2d 880 (1984). The Cedar-Al case also held that color alone cannot be used to distinguish a product.
Injunctions are available for infringement of a trade name or trademark. The scope of an injunction in a trade name case is governed by four factors:
1) whether the trade name was vaguely descriptive or clearly nondescriptive, i.e., the appropriability of the name;
2) the originality of the name;
3) whether or not the defendant acted in good faith; and
4) the extent of competition between plaintiff’s and defendant’s businesses.
See Bishop v. Hanenburg, 39 Wash. App. 734, 695 P.2d 607 (1985). Similar factors would probably be applicable in a trademark case.
There is a strong tendency in common law trade name infringement cases to grant a limited injunction that requires the defendant to add one or more qualifying words to its trade name. For example, in a case in which the plaintiff’s trade name was ‘‘Puget Sound Rendering, Inc.,’’ the defendant’s trade name was ‘‘Puget Sound By-Products,’’ the parties were engaged in substantially identical businesses, and significant evidence of actual confusion was presented, the Washington Court of Appeals held that even where the public has been confused because certain key words are identical, Washington courts have allowed continued use of identical words subject to safeguards designed to avoid confusion. Puget Sound Rendering, Inc. v. Puget Sound By-Products, 26 Wash. App. 724, 615 P.2d 504 (1980). The court further stated that the factors listed above might in some instances support totally prohibiting the use of certain words, although such extreme relief was not warranted in the case at hand. There is no Washington common law dealing with the awarding of damages. Realize, however, the issue is made more confusing by the fact that the similar nature of the names relies upon a geographic location, Puget Sound, and in a slightly different context, the Court might be willing to require somewhat greater qualification to prevent confusion of the public.
· Washington Recognizes Publicity Rights as an Impediment to Registration A further factor in name selection is that Washington recognizes a common law right of publicity. The defining Washington case relating to the right of publicity is State ex rel. La Follette v. Hinkle, 131 Wash. 86, 229 P. 317 (1924). In this case, the court held that the plaintiff, who was the Progressive Party candidate for the presidency of the United States, had the right to prevent a second party, known as the La Follette State Party, from nominating candidates for state office under the La Follette State Party designation. The court held that the persons organizing the La Follette State Party had no right to use Mr. La Follette’s name in that connection against his wishes, stating that nothing so exclusively belongs to a man or is so personal and valuable to him as his name. The court further stated that in such a case, it is not necessary to allege or prove that such unauthorized use will damage the plaintiff, and that the law will presume such damage.
Over time, the Washington legislature codified the publicity rights at RCW 63.60.010 et seq, adopted in 1998. established a statutory basis for publicity or personality rights in Washington state. RCW 63.60.010 defines the use of a person’s name, voice, signature, photograph, or likeness as a property right. The statute prohibits any person from using the voice, name, signature, photograph, or likeness of anyone, living or deceased, in or on goods, merchandise, products, or advertising for any of the above, or for fundraising or solicitation of donations in the state, without consent of the owner of the right. RCW 63.60.050. Consent includes both written and oral, express and implied consent. In order to be a violation of the statute, the infringer must make more than an insignificant, de minimus, or incidental use.
The statute does differentiate between ‘‘individuals’’ and ‘‘personalities.’’ According to the statute, an individual is any person, living or dead, who died after January 1, 1988. A personality is a person whose name, voice, signature, photograph, or likeness had a commercial value at the time of death and who died after January 1, 1948. The right to publicity extends to both individuals and personalities after their death, and extends to both whether they died before or after enactment of the statute. RCW 63.60.040. The term of survival is 10 years after death for an individual, and 75 years after death for a personality. RCW 63.60.040. The courts may grant injunctions to prevent or restrain unauthorized use of personality rights. The court may even authorize the destruction or other reasonable disposition of any materials made in violation of the injured party’s rights. The infringer will be liable for up to $1500 or the actual damages due to the result of the infringement, whichever is larger, and all profits made from the infringement. The prevailing party in an action brought under this section may recover attorney’s fees and costs along with the other remedies to which they are entitled. RCW 63.60.060.
It is not a violation of the statute if a person’s personality rights are used for cultural, historical, political, religious, educational, newsworthy, or public interest matters, including matters of comment, criticism, satire, and parody. RCW 63.60.70(1). The statute also does not apply to using those rights in single, not widely reproduced, works of fine art, literary, theatrical, film, radio, musical, online, television, magazine works or news stories, public affairs reports, sports broadcasts, and political campaigns, where the use does not inaccurately claim or state an endorsement by the individual or personality. Personality rights may also be used for the advertisement of non-infringing uses without gaining consent from the owner of the rights. RCW 63.60.070(2). The statute also does not apply to uses of a name, when that name is used fairly and in good faith for a merely descriptive purpose for the identification or description of something other than the individual or personality, such as to denote a style, theory, or place. RCW 63.60.070(5). Owners or employees of a medium used for advertising who have published or disseminated any infringing advertisements or solicitations, unless the advertisements or solicitations were intended to promote the medium itself, are not liable. RCW 63.60.070(4).
· Deceptive Use of a Trademark is Criminal in Washington The deceptive use of marks or brands may be punishable criminally in Washington:
· RCW 9.16.005 et seq. was the chapter of the Washington Criminal Code dealing with crimes relating to brands and trademarks, but effective July 25, 1999, it was amended to be a more general counterfeiting statute.
· For crimes relating to the use of a counterfeit trademark or trade name in connection with a controlled substance, see RCW 69.50.416.
· RCW 9.16.020 relates to the imitation of brands. RCW 9.16.030 states that any person who wilfully and knowingly, and for financial gain, manufactures, uses, displays, advertises, distributes, offers for sale, sells or possesses with intent to sell or distribute any item, or offers any services, bearing or identified by a counterfeit mark, is guilty of the crime of counterfeiting. Any state or federal certificate of registration of any intellectual property is prima facie evidence of the facts stated in the certificate. Counterfeiting can be a misdemeanor up to a class C felony according to criteria laid out in RCW 9.16.035. RCW 9.16.060 relates to fraudulent registration of a trademark. Violation is a misdemeanor.
· RCW 9.16.100 and 9.16.120 relate to the improper use of the words ‘‘sterling silver’’ and ‘‘coin silver.’’ Violation is a gross misdemeanor. RCW 9.16.110 and 9.16.130 relate to the improper use of the words ‘‘coin silver.’’ Violation is a gross misdemeanor. RCW 9.16.140 relates to the unlawful marking of gold articles. Violation is a gross misdemeanor.
Washington does not have a RICO statute, per se, but does have the Criminal Profiteering Act, RCW 9A.82, which allows persons who have sustained personal, business, or property damage by an act of criminal profiteering to file for recovery of damages and cost of litigation.