HOUSE BILL REPORT

SSB 5733

BYSenate Committee on Law & Justice (originally sponsored by Senators Nelson, Talmadge and Newhouse)

Modifying the statute pertaining to trademark registration.

House Committe on Judiciary

Majority Report:  Do pass.  (17)

      Signed by Representatives Appelwick, Chair; Crane, Vice Chair; Padden, Ranking Republican Member; Belcher, Brough, Dellwo, Hargrove, Inslee, P. King, R. Meyers, Moyer, H. Myers, Patrick, Schmidt, Scott, D. Sommers and Tate.

House Staff:Regina Jones (786-7191)

AS PASSED HOUSE APRIL 4, 1989

BACKGROUND:

Chapter 19.77 RCW governs Washington trademark registration and protection. Certain provisions and protections for trademark owners under the Model Trademark Act and the federal Lantham Act differ from those provided under Washington law.  Concern exists that Washington law in this area should be clarified and made more compatible with the Model Trademark Act and the federal Lantham Act.

SUMMARY:

A certificate of registration constitutes prima facie evidence of (1) the validity of the registration, (2) the registrant's ownership of the trademark, and (3) the registrant's exclusive right to use the trademark in this state as specified in the certificate of registration.

Registration under the act constitutes constructive notice of the registrant's claim of ownership of the trademark throughout the state.

The International Classification of Goods and Services to Which Trademarks Are Applied is added to aid in the administration of Washington trademark law.

Any person damaged by a false or fraudulent registration may recover attorneys' fees from persons who obtain a trademark registration through false or fraudulent means.

A cause of action is created for owners of famous trademarks to prevent dilution of their trademarks. The owner may bring a suit to enjoin a material reduction of the distinctive quality of a famous trademark. If the owner proves that a subsequent user wilfully intended to trade on the owner's reputation or wilfully caused dilution of the owner's mark, remedies in addition to injunctive relief are available to the owner.

In suits to enjoin use of colorable imitations of a registered trademark, a court may award the prevailing party costs and attorneys' fees in exceptional cases.

Courts are to be guided by the federal courts' interpretation of the Federal Trademark Act of 1946 in interpreting Chapter 19.77 RCW, the Washington Trademark Act.

The act applies prospectively only and not retroactively.

The administrative cancellation procedure is repealed.

Several technical corrections are made.

Fiscal Note:      Not Requested.

House Committee ‑ Testified For:    H. Albert Richardson, Jackson & Richardson.

House Committee - Testified Against:      None Presented.

House Committee - Testimony For:    The bill improves Washington law by making it compatible with the Model Trademark Act and the federal Lantham Act.

House Committee - Testimony Against:      None Presented.