Updated: Sep 11
The basics of trademark law and registration in Vancouver, Washington
What is a trademark in the State of Washington?
A trademark is a commercial symbol that a manufacturer places on its goods so they can be readily identified in the marketplace. Trademarks may also be used to identify particular services offered by a business. These commercial symbols may involve a design, logo, phrase, distinctive mark, name, or word. They may involve the look and the feel of a product, which is called trade dress. When one party uses a trademark owned by another party without their permission, this may give rise to a claim of trademark infringement.
Originally, protections against trademark infringement developed through judicial opinions. Since 1947, the main laws governing trademarks are the federal statutes known as The Lanham Act. The Lanham Act provides a process for registering trademarks with the federal government, as well as a national database to search for existing trademarks.
Registration is good for 10 years, at which time the trademark may be renewed, if it is still being used by the current owner. As long as the owner continues to use the trademark, it can be renewed every 10 years indefinitely. Trademarks can also be registered with the State of Washington, by filing paperwork with the WA Secretary of State.
Why register a trademark?
The Lanham Act provides several advantages to registered trademark owners:
nationwide notice of trademark owner’s claim
a legal presumption of the registrant’s ownership of the mark in the event of a dispute
federal court jurisdiction
forming the basis for obtaining registration in other nations
filing the registration with US Customs Service to help prevent importation of foreign goods that infringe on the trademark
Registrations can be done online at uspto.gov. Along with a filing fee, a specimen of the trademark is submitted, showing the way(s) it is used by the applicant. The applicant will also sign a declaration that, to the best of the applicant's knowledge, the mark does not conflict with other marks. The applicant can search existing trademarks to ensure theirs would not be confused with other marks.
Which trademarks can be registered?
Trademarks must be distinctive enough to be considered the intellectual property of the purported owner. In other words, there are no legal protections for those who attempt to register generic marks, such as attempting to register the word "car" to describe a manufacturer's automobile.
The US Patent and Trademark Office classifies a trademark's distinctive nature using the four categories below, with generic marks receiving no protection and arbitrary and fanciful trademarks receiving the most protection.
arbitrary and fanciful: most favored by courts because they are inherently distinctive and not related to the product or service (such as "Amazon" to describe a retailer.)
suggestive: slightly less protection, but still strong, merely hinting at the product (such as "Chicken of the Sea" tuna.)
descriptive: less protection, as they simply describe the product (such as "Holiday Inn")
descriptive marks only receive protection if there is proof of customer recognition in the marketplace
generic: no protection under the law, as they use common descriptive words that do not indicate products are from a specific producer
Extent of trademark coverage:
In general, trademark owners cannot claim protection beyond the goods and services offered by the owner. In other words, the owner of a deli may be able to stop other food service businesses from using their trademark, but not construction company. Where a trademark has enough recognition, such as Coca-Cola, the trademark's legal protections extend beyond the particular goods offered by the trademark owner through a legal theory called trademark dilution.
If you have more questions about trademarks in Vancouver, Washington, contact In-house | On-site to speak with a WA lawyer with knowledge of WA trademark law.