Quirks, Advantages, and Tips for Using State Trademark ... · Quirks, Advantages, and Tips for...
Transcript of Quirks, Advantages, and Tips for Using State Trademark ... · Quirks, Advantages, and Tips for...
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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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
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Washington Application
• 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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Washington Application
Description• Standard character marks, design marks, composite
Classification of goods and services• Can attach additional sheet(s) to application
Washington 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
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Washington Application
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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Washington Application
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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Washington Application
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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• 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
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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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Several weeks later…
Company M has registration, ready to enforce.
Call from Washington Secretary of State about the registration…
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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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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
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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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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
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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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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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Questions?
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Cassandra MercerAlleman Hall McCoy Russell & Tuttle LLP
Prepared for OSB IP Section Brown Bag Lunch CLE, March 2016Copyright 2016 AHMRT. All rights reserved.