SENATE BILL REPORT

SB 5733

BYSenators Nelson, Talmadge and Newhouse

Modifying the statute pertaining to trademark registration.

Senate Committee on Law & Justice

Senate Hearing Date(s):February 15, 1989

Majority Report:  That Substitute Senate Bill No. 5733 be substituted therefor, and the substitute bill do pass.

      Signed by Senators Pullen, Chairman; Hayner, Madsen, Nelson, Newhouse, Niemi, Rasmussen, Talmadge, Thorsness.

Senate Staff:Ben Barnes (786-7465)

                  March 1, 1989

AS REPORTED BY COMMITTEE ON LAW & JUSTICE, FEBRUARY 24, 1989

BACKGROUND:

Concern exists that current law governing the registration of trademarks in this state is outdated.  It is recommended that the present Trademarks Registration Act be modernized.

SUMMARY:

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

A certificate of registration constitutes prima facie evidence of the validity of the registration.  It also constitutes prima facie evidence of the registrant's ownership of and exclusive right to use the trademark within the state with regard to the goods or services specified.

Owners of famous trademarks may bring suit to enjoin dilution of their trademarks.

A court may only award attorneys' fees in an action brought under the act where exceptional circumstances exist.  Attorneys' fees may also be recovered from any person who obtains a trademark registration through false or fraudulent means.

The administrative cancellation procedure is deleted.

EFFECT OF PROPOSED SUBSTITUTE:

The courts of this state are required to consider the federal courts' interpretation of the federal Trademark Act when construing provisions of the Washington Trademark Registration Act.

Purchaser motivation is not a test for determining abandonment of a registered trademark.

Several technical corrections are made.

Appropriation:    none

Revenue:    none

Fiscal Note:      available

Senate Committee - Testified: Sherman H. Jensen, Business & Corporations Subcommittee, SKCBA Legislation Committee (pro); Don Whiting, Secretary of State's Office (pro); Al Richardson, Washington State Bar, Industrial Prop. Comm. (pro); Gary Smith, Ind. Bus. Association; Lynne Graybeal, Washington State Bar, IIP Section (pro)