New State Trademark Filings Eliminate Goods and Services Descriptions

The Secretary of State quietly changed an important feature of Washington State trademark filings. They re-did their application form for trademark registrations. And, in doing so, they eliminated the applicant’s description of its branded goods and services.

So now, it’s possible to claim the entirety of a classification. Rather than say “Class 35 - Retail clothing store services,” for example, applicants now are prompted to just identify “Class 35 - Advertising & Business.”

It’s a curious departure from U.S. Patent and Trademark Office practice, which requires applicants to specify the goods and services for which they seek expanded rights. It’s closer to foreign trademark schemes that only recognize rights if a mark is registered. In those registration-based countries — which make up most of the world, but differ from use-based countries like the States — it’s common for applicants to list all imaginable goods and services in an effort to occupy the field for a particular trademark.

I thought this change was strange, so I asked about it. Washington’s trademark office told me it was intended to bring Washington’s filing scheme more in line with the authorizing statute.

In the end, Washington’s trademark statute is the same, so trademark rights presumably are the same. Trademark owners are protected against a “likelihood of confusion” with later-adopted marks, and a state registration certificate gives the presumption of trademark rights statewide. But do these rights now encompass the entirety of a class if that’s what’s listed on the registration certificate? Or are they limited to the branded goods and services the registrant actually provides in commerce? It’s not clear.

For now, applicants will likely be motivated to claim the entirety of a class (or multiple classes) if they’re not forced to limit their claim to the particular goods and services they sell. After all, more seems better than less. When enforcing one’s rights, however, I imagine courts will pare back overly broad claims to reflect how the mark is actually used.

It’s just a little curious the State has broken with the USPTO’s identification requirements in issuing trademark registrations in favor of those more frequently seen abroad. The uncertainty the new scheme introduces seems like a shame.

Uber Lawsuit Highlights Data Breach Disclosure Requirements

The Washington attorney general’s lawsuit against Uber highlights an organization’s disclosure obligations in Washington State in the event of a data breach.

The Nov. 28 suit, filed in King County Superior Court, is thought to be the first time Washington’s data disclosure statute has been pressed in court. It alleges that Uber Technologies, Inc., violated RCW 19.255 by keeping the fact of its data breach by a hacker secret for about a year. The suit alleges the breach affected more than 10,000 Washington residents.

RCW 19.255.010, enacted in 2015, applies to any person or business that conducts business in Washington that owns or licenses data that includes “personal information.” The statute defines “personal information” as a person’s first and last name, in conjunction with his or her social security number, driver’s license number, or account or credit card number, and security code or password that would permit access to the person’s account. 

It requires the notification of affected persons and the attorney general within 45 days of the discovery that personal information “was, or is reasonably believed to have been, acquired by an unauthorized person and the personal information was not secured.” 

The statute defines “secured” in this context as being “encrypted in a manner that meets or exceeds the national institute of standards and technology (NIST) standard or is otherwise modified so that the personal information is rendered unreadable, unusable, or undecipherable by an unauthorized person.”

Required notifications must be made in writing, and include: (a) the name and contact information of the person or business making the report; (b) a list of the types of personal information that were or are reasonably believed to have been disclosed; and (c) the addresses and toll-free telephone numbers of the major credit reporting agencies.

Violators of this RCW 19.255 are subject to suit by both the affected persons and the attorney general.

The takeaways from ths lawsuit are obvious but important: (1) if your organization stores personal information, make sure it doesn’t get out; (2) encrypt all stored information in accordance with NIST standards; and (3) immediately fess up to any data breach in the form the statute requires so you don’t get into more trouble than you’re already in.

Washington State Trademarks Are Now Searchable

The Washington Secretary of State’s database of trademark filings is now searchable (accessible here, at the bottom of the page).

This is a big improvement. Before, searching state records was a hit-and-miss (and mostly miss) affair with the Washington State Digital Archives. Or it meant spending time on the phone. Or paying to access third-party databases, which was a bit galling, since trademark filings are public.

Be galled no more. Users can now search Washington trademark filings by trademark number, owner name, trademark word elements, or Uniform Business Identifier (UBI) number. Once a filing is found, you can click a hyperlink and see PDFs of the as-filed documents. The interface is publicly-available, and it’s free.

That’s not to say it’s perfect. Those are the only searches available. You can’t search by attorney, or goods and services, or use Boolean operators. Those features would be nice, but they’re icing on the cake. It would also help to know the currency of the database, i.e., the date through which the information is accurate. However, this is such a great leap forward, I’m not complaining.

What’s important is the database is meaningfully populated with relevant data. It’s a useful tool that trademark owners should search before making their own filings in Washington.

Amazon Gives Additional Benefits to Trademark Registrants

Amazon gives trademark owners a new reason to register their brands: it’s a ticket to enrolling in the Amazon Brand Registry program.

Enrollment gives trademark owners access to enforcement tools within the Amazon marketplace, including what Amazon describes as “proprietary text and image search, predictive automation based on your reports of suspected intellectual property rights violations, and increased authority over product listings with your brand name.”

This is becoming increasingly popular with clients.

To qualify, brand owners first need to register their marks with a government trademark office in the U.S., Canada, Mexico, India, Japan, France, Germany, Italy, Spain, the United Kingdom, and the European Union. Only standard character marks (word marks) qualify — design marks (logos) are not included. The subject trademark also “must match the brand name printed on products and/or packaging.”

Enrollees in Amazon’s previous program must re-enroll to get the benefits of the new program. However, any brand owner (enrolled or not) can still lodge an intellectual property infringement complaint with Amazon through its public interface (though that tool has mixed reviews at best).

It remains to be seen whether Amazon’s new program will live up to its promise. However, I’m all in favor of the stated goal: to help trademark owners and Amazon “work together to reduce potential intellectual property rights violations and promote an accurate representation of [trademark owners’ brands] on Amazon.”

Floodgates on "Offensive" Trademarks Not Open Yet

Section 2(a) of the Lanham Act bars registration of trademarks that may “disparage” persons, institutions, beliefs, or national symbols, or bring them into “contempt, or disrepute” (the “disparagement” clause); or that include “immoral” or “scandalous” matter (the “scandalousness” clause).

In June, the Supreme Court held that the disparagement clause violates the First Amendment. See Matal v. Tam, 582 U.S. ___ (2017). In that case, the Court found that the disparagement clause-based denial of an application to register THE SLANTS by the Asian-American lead singer of the Portland-based band of that name infringed the applicant’s free speech rights (and, indeed, his effort to claim a racial slur as a badge of honor). For this reason, the disparagement clause is no longer a ground on which the U.S. Patent and Trademark Office will deny an application for federal trademark registration.

Importantly, however, this decision doesn’t extend to the scandalousness clause. While the constitutionality of that provision is separately being challenged, the case hasn’t yet been decided. See In re Brunetti, No. 15-1109 (Federal Circuit) (considering the registrability of the trademark FUCT for apparel). For now, therefore, any trademark the USPTO deems to be “immoral” or “scandalous” will be placed into suspension (i.e., frozen) until the Bruenetti case directs how those trademarks should be examined.

While trademark law is moving in the right direction, the floodgates have not yet opened on profanity or other trademark elements that some may consider offensive. That time probably will come, but pending the Federal Circuit’s decision in Bruenetti, it’s not here quite yet.

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