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Quirks, Advantages, and Tips for Using State Trademark

Registrations

By Cassandra Mercer

Roadmap• What is a trademark?• Developing rights and identifying branding and

trademarks• Options for protecting trademarks – why to register,

considerations for choosing state vs. federal• What you get from registration – federal vs. state• How you get a state registration• Washington Trademark Registration Story• Oregon Differences• Other states of interest • Conclusion

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What is a trademark?• A word, name, symbol or device, or any

combination thereof, that is used by a person to identify and distinguish his or her goods in commerce.

• Service marks identify and distinguish services

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Developing and Identifying Trademarks

• Under both state and federal law, rights are developed from use of the mark in commerce –selling your goods and services under your mark

• Tip: counsel clients on distinctive marks

• Tip: Work with clients to document first use and ongoing use

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Clearing Trademarks

• Before investing in a mark, businesses should first clear the mark

• Corporate name search is not enough• Search federal register, state registry, common

law, domain names, statutes

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Sources of Trademark Rights• Common law rights arise automatically with use

of a mark in commerce• Registration is optional, but it can help protect,

strengthen and expand your common law rights• 2 non-exclusive avenues for registration –

federal and state

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Why register?• Expand trademark rights in space and time• Notice to other trademark users that the mark is

taken• Useful for enforcement• Useful for defending your rights• Tangible evidence of intangible property - useful

for business transactions• Registration good for 10 years (federal) / 5 years

(state), renewable as long as mark is in use

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What does registration get you?Federal• Proof of ownership and validity of the mark, exclusive

right to use the mark in association with the registered goods and services

• Nationwide coverage, from the application date, for as long as you use the mark

• Basis for enforcement in federal and state courts• Option for intent-to-use• Option to use as basis for international/foreign

registrations• Use ® to give notice• Record registration with customs

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What does registration get you?State• Proof of (your claim of) ownership and validity of

the mark, exclusive right to use the mark in association with the registered goods and services

• Statewide coverage, from the grant date, for as long as you use the mark

• Basis for enforcement actions in state court (e.g., fighting counterfeits, infringement or dilution claims) and enforcement locally

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How do you choose?• Geography of client’s business

– Intrastate only or interstate? Expanding?– Are competitors local or in other states?

• Nature of client’s business• Cost

– Federal: $225-$375 per international class– State: WA - $55 per class, OR - $50

• Timeline– Federal 9-12 months– State as little as 1 week to 1 month in OR & WA

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Interstate Commerce RequirementDoctor’s Associates Inc. v. Janco, LLC (TTAB Jan. 7, 2016)Applicant Janco Opposer Subway

Janco is single-location restaurant, senior user. Subway, junior user, wants to register, so Subway attacked Janco’s use. Janco’s evidence: photo of menu, website, judicial notice of its location in Bothell, Wa. Board held no use “in commerce”, Janco’s application void ab initio.

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FLATIZZA FLATIZZA

First use: Sept. 27, 2012Filed: Feb. 24, 2014

First use: Feb. 15, 2013Filed: April 14, 2014

Interstate Commerce Requirementadidas AG v. Christian Faith Fellowship Church (TTAB Sept. 14, 2015)Registrant CFFC (2 marks) Applicant/Petitioner adidas

CFFC in Zion, IL, near Wisconsin border, members come from both states. Sells apparel in church bookstore. adidas applied for registration of ADIZERO, but was blocked by CFFC’s prior registrations. adidas petitioned to cancel based on nonuse.

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ADD A ZERO ADIZERO

First use: Jan. 09, 2005Registered: Nov. 21, 2006Goods: clothing, hats

First use: Feb. 15, 2013Filed: April 14, 2014

Interstate Commerce Requirementadidas AG v. Christian Faith Fellowship Church (TTAB Sept. 14, 2015)

Evidence: CFFC produced evidence of 2 sales transactions to two different individuals. Second purchaser paid with check having Wisconsin address, crossed state lines to make purchase of two caps.

Held: Church activities did not have an effect on interstate commerce. Not like a gas station on an interstate, where there is a direct effect on interstate commerce. Not like a local wine shop which imports foreign wine. Not like a single-location restaurant that served interstate travelers.

“[T]he sale of two ADD A ZERO caps at a minimal cost within the state of Illinois to Ms. Howard [the second purchaser], who resides outside the state, does not affect interstate commerce that Congress can regulate such that the transaction would constitute use in commerce for purposes of registration."

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Locally Regulated Industry

Recreational Cannabis SalesColorado (since Jan. 1, 2014)Washington (since July 8, 2014)Oregon (since Oct. 1, 2015)Alaska (license applications opened Feb. 24, 2016)

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Locally Regulated Industry

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Nuts and Bolts of Applying for a State Registration:

Washington

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Pre-filing searchClear with WA Secretary of State• Call or write to verify

registry is clear• Send in image of

design marks (office searches design marks manually)

Caution: Washington State digital archives only have trademarks from 1888 to 2011

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Washington Application

• Use must generally be by trademark owner• Carefully review licensee or distributor situations

• 3-page PDF: 2 page application, 1 page instructions• Available online from Washington Secretary of State

Optional –Reserve a Mark

One-time filing

Reservation prior to use for up to 180 days

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• Carefully review which client entity owns the mark and which uses it - sometimes these are different, need a license in place

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• Specimens• Description• Classification• Goods and services


• Specimens: WAC 434-12-025

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Description• Standard character marks, design marks, composite

Classification of goods and services• Can attach additional sheet(s) to application


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• Generally follows the Nice Classification• More detailed listing at WAC 434-12-015,

http://apps.leg.wa.gov/wac/default.aspx?cite=434-12-015

http://apps.leg.wa.gov/wac/default.aspx?cite=434-12-015


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Same form is used for renewals• Tip: on renewal, must submit all the above information

– verify goods still in use, new specimens

Marking description

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First use dates• Be careful of different first use dates for different goods

and services • Tip: advise clients to start maintaining evidence file to

substantiate first use date – first invoices and sales information, records of when website went live, catalogs and samples of marketing efforts over the years, etc.

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Note the verified statement of ownership, use, belief in right to use

Submission options• Mail packet with application, specimens, check for fee

to Secretary of State, Corporations Division• In-person delivery• Online application coming (hopefully summer 2016)

Next Steps• Secretary of State examines application

– Prohibited Marks• Immoral deceptive or scandalous matter;• Marks 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;

• Flag or coat of arms or other insignia of the U.S., a state or municipality, or any foreign nation;

• Name, portrait, or signature of living individual without consent;

• Confusingly similar to a prior mark registered or used in Washington.

– Note: no bar to registration of descriptive marks29

Next Steps

• Assuming no substantive objection, mark is cleared for registration

• No publication period• No opposition by third parties• Registration issues• Receive registration in the mail a few

weeks later along with stamped copy of application

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Registration Quirks in Action: A Washington State Trademark

Tale…

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• Company M is based in Seattle, WA• Makes cannabis goods – naturally refined

medicinal and recreational hash oil for dabbing and smoking in vaporizer pens, vaporizer pens and parts, related accessories

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About the Trademark Owner

• Adopts a mark and starts using it in 2013

• Selling throughout Washington in various retail outlets

• By 2015, Company M starts recognizing other users in Washington using similar mark on similar goods, especially Company Y– Company M establishes that they are a senior user to

Company Y– Need to enforce the mark– Consider options for enforcement

• Letter based on common law rights• Letter with registration behind it

• 33

Competition

Washington PresumptionsRCW 19.77.040 - In Washington state courts, a Washington trademark registration is prima facie evidence of:• Registrant’s ownership of the mark• Validity of registration • Registrant’s exclusive right to use the mark in

WA in connection with registered goods/services

Also provides constructive notice of registrant’s claim of ownership throughout the state.

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Decision to Apply for State Mark• Go through steps to apply

– Search – Advise Company M on application

• Verify ownership entity• Verify what goods are actually in use, decide on

classification • Verify first use dates in WA and anywhere• Gather and review specimens

– Send application packet in– 1 week later…

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Registration issues!

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Several weeks later…

Company M has registration, ready to enforce.

Call from Washington Secretary of State about the registration…

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Registration revoked!

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How could this happen?RCW 19.77.030(7): If the secretary of state determines within ninety days of issuance, that a certificate of registration was issued in error, then the secretary may cancel the certificate of registration. The secretary shall promptly notify the registrant of the cancellation in writing.

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MARK vs. MARKOur client’s goods• Class 31: cannabis products,

hash oil• Class 34: atomizer cartridges

filled with has oil for use with e-cigarettes; cartridges for use with e-cigarettes

Blocking mark’s goods• Class 3: beauty care products• Class 44: salon and spa

services in the beauty care industry

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Likelihood of ConfusionRCW 19.77.020 (1) A trademark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it:

(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.

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Investigation• Procedure similar to business name registry –

compare only marks, not goods/services– Particularly for 1-word, standard character marks– If the marks are identical, no registration

• This has “always” been the procedure • No avenue for appeal to Secretary of State’s

Office or response by Applicant to Secretary of State

• What to do? Change the procedure!

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How to Appeal• RCW 19.77.030: File for judicial

review of the administrative action in the Thurston County Superior Court (Olympia, WA)

• Resources – State court rules and RCW– Washington Administrative Law

Practice Manual (Admin. Law Section of Washington State Bar)

– Thurston County Clerk’s Roadmap

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What happened…• Assuming moving forward with briefing, educate

court on trademark law• Then, request for conference from Attorney

General’s Office• AG’s office read the pleading, did investigation,

came to same conclusion• Solution – Emergency Rule

– Enacted emergency rule WSR 15-19-106, so that goods and services are now considered (sort of)

– 120 day wait for rule to become permanent44

Washington – WAC Update• 434-12-025 – Document and specimen

standards amended

WAC 434-12-025 (3) Corporations division staff may reject submissions based on the following criteria:(c): Trademark is not distinguishable from another on file in the secretary's office by comparing:

(i) Similarity or dissimilarity of marks in their entireties to appearance; or(ii) Similarity or dissimilarity of goods and services classifications.

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Registration Re-issued

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Washington Tips• 90 days to correct an application if there is an incorrect

statement or defective execution, signature, acknowledgment (cannot change mark itself)

• Can amend if Applicant changes the categories in which it does business (cannot change mark itself)

• Renewal filed within six months prior to expiration (use same form as application)– Secretary of State should send a reminder between 1 year and 6

months before deadline (keep address up to date)– Failure to send a reminder does not excuse failure to renew

• Caution: Abandonment with 2 years of non-use (federal is 3)

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Washington Tips

• Hold on to the stamped copy of your application, this is the document that has legal effect – Registered goods and services goes by stamped

application, not registration certificate • Admitted to the bar in WA?

– Sec. of State’s Office – does not matter– Washington Bar Association’s recommendation –

have a Washington-admitted attorney submit• Feel free to call the Secretary of State’s office

with questions48

Sources for Washington Trademark Law

• Statute: RCW 19.77.010 – 19.77.940• Administrative Code: WAC Title 434-12

– 2015 updates to WACs• WAC 434-12-005 – Trademark filing-Fees• WAC 434-12-015 – Classification of goods and services• WAC 434-12-025 – Document and specimen standards for

trademark filing

• About 5,754 active registrations on file• Filings increasing: 185 in Jan. 2016, 300 in Feb.

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Oregon Overview• Trademarks/Service marks in use in OR• No reservation or intent to use option• Provides “competent and sufficient proof of the

registration of the mark in an action or proceeding brought in a court in this state.”

• 5-year duration, renewable while mark is in use• Application online at Secretary of State’s Office

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Oregon Applications• Clearance options

– http://sos.oregon.gov/business/Pages/trademarks.aspx• Updated monthly, so current month filings not available• Keyword only• Very limited information available – no list of goods or services or classes,

no image of mark• Occasional technical issues, cannot always click though to TIFF scans of

filings

– By request of Sec. of State (fees for searches at OAR 160-005-0007)

• Flat $50 application fee– NOTE: ORS 647.024 states Sec. of State “may” collect a $50 for each class –

possible change to be aware of

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http://sos.oregon.gov/business/Pages/trademarks.aspx

Oregon Overview• Only 1 specimen needed• Descriptive marks not registrable without

evidence of acquired distinctiveness – Disclaimer can be required – It the disclaimed matter has become distinctive,

disclaimer does not affect Applicant’s rights• Office action process provided for in statute• No registration certificate, office issues a

stamped “filed” copy of application as the registration

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Could the same thing happen in Oregon?

• Similar law, but follows Model Bill more closely• Examination by discretion – ORS 647.029

gives Secretary of State sole discretion whether to conduct examination or investigation in connection with an application

• Appeal by seeking writ of mandamus under ORS 34.105 to 34.240– Costs and damages cannot be assessed against

Sec. of State53

Oregon Sources of Trademark Law

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• Statute: – ORS 647.005 through 647.105(1)– 647.115 – application fee at ORS 56.140(4) and 647.024

• Administrative code: – 160-010-0210 through 160-010-0240 – fee information for searching by Office at 160-

005-0007

Other states of interest• Colorado

– Colo. Rev. Stat. Sections 7-70-101 to 7-70-109– http://www.sos.state.co.us/pubs/business/FAQs/trademarks.ht

ml

• Alaska– Alaska Stat. 45.50.010 et seq. – https://www.commerce.alaska.gov/web/cbpl/Corporations/Trade

markRegistration.aspx

• California– Cal. Business and Professions Code Sections14200-14272– http://www.sos.ca.gov/business-programs/ts

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http://www.sos.state.co.us/pubs/business/FAQs/trademarks.html

https://www.commerce.alaska.gov/web/cbpl/Corporations/TrademarkRegistration.aspx

http://www.sos.ca.gov/business-programs/ts

Conclusion

Issues that arise with protecting rights• Recognize trademarks and identify branding• Strategy for registration approach – state and federal• Clearance searching• Document first use• Maintaining registrations• Enforce property rights

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