AN ACT Relating to
trademarks; amending RCW 19.77.030, 19.77.050, 19.77.060, 43.07.120, and
19.77.010; and adding new sections to chapter 19.77 RCW.
BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF
WASHINGTON:
Sec. 1. RCW 19.77.030 and 1989 c
72 s 3 are each amended to read as follows:
Subject to the
limitations set forth in this chapter, any person who has adopted and is using
a trademark in this state may file in the office of the secretary of state, on
a form to be furnished by the secretary of state, an application for
registration of that trademark setting forth, but not limited to, the following
information:
(1) The name and
business address of the applicant, and, if the applicant is a corporation, its
state of incorporation;
(2) The particular
goods or services in connection with which the trademark is used and the class
in which such goods or services fall;
(3) The manner in which
the trademark is placed on or affixed to the goods or containers, or displayed
in connection with such goods, or used in connection with the sale or
advertising of the services;
(4) The date when the
trademark was first used with such goods or services anywhere and the date when
it was first used with such goods or services in this state by the applicant or
his predecessor in business;
(5) A statement that
the trademark is presently in use in this state by the applicant;
(6) A statement that
the applicant believes himself to be the owner of the trademark and believes
that no other person has the right to use such trademark in connection with the
same or similar goods or services in this state either in the identical form or
in such near resemblance thereto as to be likely, when used on or in connection
with the goods or services of such other person, to cause confusion or mistake
or to deceive; and
(7) Such additional
information or documents as the secretary of state may reasonably require.
A single application for
registration of a trademark may specify all goods or services in a single class
for which the trademark is actually being used, but may not specify goods or
services in different classes.
The application shall
be signed by the applicant individual, or by a member of the applicant firm, or
by an officer of the applicant corporation, association, union or other
organization.
The application shall
be accompanied by three specimens or facsimiles of the trademark for at least
one of the goods or services for which its registration is requested, and a
filing fee ((of fifty dollars)), as set by rule by the secretary of
state, payable to the secretary of state.
NEW SECTION. Sec.
2. A new section is added to
chapter 19.77 RCW to read as follows:
The exclusive right to the
use of a trademark may be reserved by:
(1) A person intending to
register a trademark under this title; or
(2) A domestic or foreign
corporation intending to change its trademark.
The reservation shall be
made by filing with the secretary of state an application to reserve a
specified trademark or service mark, executed by or on behalf of the applicant,
one copy of the trademark artwork, and fees as set by rule by the secretary of
state. If the secretary of state finds that the trademark is available for
use, the secretary of state shall reserve the trademark for the exclusive use
of the applicant for a period of one hundred eighty days. The reservation is
limited to one filing.
Sec. 3. RCW 19.77.050 and 1989 c
72 s 5 are each amended to read as follows:
Registration of a trademark
hereunder shall be effective for a term of ((ten)) six years from
the date of registration. Upon application filed within six months prior to
the expiration of such term, on a form to be furnished by the secretary of
state requiring all the allegations of an application for original
registration, the registration may be renewed for successive terms of ((ten))
six years as to the goods or services for which the trademark is still
in use in this state. A renewal fee ((of fifty dollars)) as set by
rule by the secretary of state, payable to the secretary of state, shall
accompany each application for renewal of the registration.
The secretary of state
shall notify registrants of trademarks hereunder or their agents for service of
record with the secretary of state of the necessity of renewal within the year,
but not less than six months, next preceding the expiration of the unexpired
original or renewed term by writing to the last known address of the
registrants or their agents according to the files of the secretary of state.
Neither the secretary of state's failure to notify a registrant nor the registrant's
nonreceipt of a notice under this section shall extend the term of a
registration or excuse the registrant's failure to renew a registration.
Sec. 4. RCW 19.77.060 and 1982 c
35 s 183 are each amended to read as follows:
Any trademark and its
registration or application for registration hereunder shall be assignable with
the good will of the business in which the trademark is used, or with that part
of the good will of the business connected with the use of and symbolized by
the trademark. An assignment by an instrument in writing duly executed and
acknowledged, or the designation of a legal representative, successor, or agent
for service shall be recorded by the secretary of state on request when
accompanied by a fee ((of ten dollars)), as set by rule by the
secretary of state, payable to the secretary of state. On request, upon
recording of the assignment and payment of a further fee of five dollars, the
secretary of state shall issue in the name of the assignee a new certificate
for the remainder of the unexpired original or renewal term of the
registration. An assignment of any registration or application for
registration under this chapter shall be void as against any subsequent
purchaser for a valuable consideration without notice, unless it is recorded
with the secretary of state within three months after the date thereof or prior
to such subsequent purchase.
Sec. 5. RCW 43.07.120 and 1993 c
269 s 15 are each amended to read as follows:
(1) The secretary of state
shall establish by rule and collect the fees in this subsection:
(a) For a copy of any law,
resolution, record, or other document or paper on file in the secretary's
office;
(b) For any certificate
under seal;
(c) For filing and
recording trademark;
(d) For each deed or patent
of land issued by the governor;
(e) For recording
miscellaneous records, papers, or other documents.
(2) The secretary of state
may adopt rules under chapter 34.05 RCW establishing reasonable fees for the
following services rendered under Title 23B RCW, chapter 18.100, 19.77,
23.86, 23.90, 24.03, 24.06, 24.12, 24.20, 24.24, 24.28, 24.36, or 25.10 RCW:
(a) Any service rendered
in-person at the secretary of state's office;
(b) Any expedited service;
(c) The electronic or
facsimile transmittal of information from corporation records or copies of
documents;
(d) The providing of
information by micrographic or other reduced-format compilation;
(e) The handling of checks,
drafts, or credit or debit cards upon adoption of rules authorizing their use
for which sufficient funds are not on deposit; and
(f) Special search charges.
(3) To facilitate the
collection of fees, the secretary of state may establish accounts for deposits
by persons who may frequently be assessed such fees to pay the fees as they are
assessed. The secretary of state may make whatever arrangements with those
persons as may be necessary to carry out this section.
(4) The secretary of state
may adopt rules for the use of credit or debit cards for payment of fees.
(5) No member of the
legislature, state officer, justice of the supreme court, judge of the court of
appeals, or judge of the superior court shall be charged for any search
relative to matters pertaining to the duties of his or her office; nor may such
official be charged for a certified copy of any law or resolution passed by the
legislature relative to his or her official duties, if such law has not been
published as a state law.
Sec. 6. RCW 19.77.010 and 1989 c
72 s 1 are each amended to read as follows:
As used in this chapter:
(1) "Alien"
when used with reference to a person means a person who is not a citizen of the
United States;
(2)
"Applicant" means the person filing an application for registration
of a trademark under this chapter, his legal representatives, successors, or
assigns of record with the secretary of state;
(((2))) (3)
"Domestic" when used with reference to a person means a person who is
a citizen of the United States;
(4) The term
"colorable imitation" includes any mark which so resembles a
registered mark as to be likely to cause confusion or mistake or to deceive;
(((3))) (5) A
"counterfeit" is a spurious mark which is identical with, or
substantially indistinguishable from, a registered mark;
(((4))) (6)
"Dilution" means the material reduction of the distinctive quality of
a famous mark through use of a mark by another person, regardless of the
presence or absence of (a) competition between the users of the mark, or (b)
likelihood of confusion, mistake, or deception arising from that use;
(((5))) (7)
"Person" means any individual, firm, partnership, corporation,
association, union, or other organization;
(((6))) (8)
"Registered mark" means a trademark registered under this chapter;
(((7))) (9)
"Registrant" means the person to whom the registration of a trademark
under this chapter is issued, his legal representatives, successors, or assigns
of record with the secretary of state;
(((8))) (10)
"Trademark" or "mark" means any word, name, symbol, or
device or any combination thereof adopted and used by a person to identify
goods made or sold by him and to distinguish them from goods made or sold by
others, and any word, name, symbol, or device, or any combination thereof, and
any title, designation, slogan, character name, and distinctive feature of
radio or television programs used in the sale or advertising of services to
identify the services of one person and distinguish them from the services of
others;
(((9))) (11)
A trademark shall be deemed to be "used" in this state when it is
placed in any manner on the goods or their containers, or on tabs or labels
affixed thereto, or displayed in connection with such goods, and such goods are
sold or otherwise distributed in this state, or when it is used or displayed in
the sale or advertising of services rendered in this state;
(((10))) (12)
"Trade name" shall have the same definition as under RCW
19.80.005(1);
(((11))) (13)
A mark shall be deemed to be "abandoned":
(a) When its use has been
discontinued with intent not to resume. Intent not to resume may be inferred
from circumstances. Nonuse for two consecutive years shall be prima facie
abandonment; or
(b) When any course of
conduct of the registrant, including acts of omission as well as commission,
causes the mark to lose its significance as an indication of origin. Purchaser
motivation shall not be a test for determining abandonment under this
subsection.
NEW SECTION. Sec.
7. A new section is added to
chapter 19.77 RCW to read as follows:
Damages or equitable relief
of any nature may not be awarded in any pending or future legal procedure in
favor of an alien person against a domestic person on account of the domestic
person's use of a trademark or trade name in this state that is employed by the
alien person outside of the United States, absent proof that:
(1) The alien person had
commenced to employ the trademark or trade name in connection with the sale of
its goods or services within the United States prior to the time the domestic
person commenced to use the trademark or trade name in this state; or
(2) That the
trademark was registered by the United States patent and trademark office or
reserved by the secretary of state to the alien person at the time the domestic
person commenced to use it. This section applies regardless of the nature of
the claim asserted and whether the claim upon which any such relief is sought arises
by statute, under the common law, or otherwise.
