TRADEMARKS - FILING OF ARTICLES OF INCORPORATION AS CONSTITUTING REGISTRATION OF THE CORPORATE NAME AS A TRADEMARK

TRADEMARKS - FILING OF ARTICLES OF INCORPORATION AS CONSTITUTING REGISTRATION OF THE CORPORATE NAME AS A TRADEMARK.

The filing of articles of incorporation does not constitute registration of a trademark under the trademark registration act.

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                                                                  March 16, 1959

Honorable Victor A. Meyers
Secretary of State
Legislative Building
Olympia, Washington                                                                                               Cite as:  AGO 59-60 No. 23

Dear Sir:

            You have requested a formal opinion from this office on a question which we paraphrase, for convenience, as follows:

            Does the filing of articles of incorporation constitute registration of the corporate name as a trademark under the Trademark Registration Act?

            We answer your question in the negative.

                                                                     ANALYSIS

            Articles of incorporation are required by RCW 23.01.030 to state the name of the corporation.

            RCW 23.01.040 which relates to corporate names provides in part as follows:

            ". . .

            "(2) The corporate name shall not be the same as, nor deceptively similar to the name of any other domestic corporation or of any foreign corporation authorized to do business in this state unless

             [[Orig. Op. Page 2]]

            "(a) such other domestic or foreign corporation is about to change its name, or to cease to do business, or is being wound up, or such foreign corporation is about to withdraw from doing business in this state, and

            "(b) the written consent of such other domestic or foreign corporation to the adoption of its name or a deceptively similar name has been given and is filed with the articles of incorporation.

            "(3) The corporate name shall not be the same as, nor deceptively similar to, the trade name of any person or unincorporated association doing business under such trade name in this state or elsewhere, if such person or unincorporated association has within the last preceding twelve months signified an intention to incorporate in this state under such name by filing notice of such intention with the secretary of state, unless the written consent to the adoption of such name or deceptively similar name has been given by such person or unincorporated association, and is filed with the articles of incorporation.

            "(4) The corporate name shall not be the same as, nor deceptively similar to, the name of any foreign corporation doing business elsewhere than in this state if such foreign corporation has within the last preceding twelve months signified an intention to secure incorporation in this state under such name, or to do business as a foreign corporation in this state under such name by filing notice of such intention with the secretary of state, unless the written consent to the adoption of such name or a deceptively similar name has been given by such foreign corporation and is filed with the articles of incorporation.

            "(5) Nothing in this section shall abrogate or limit the law as to unfair competition or unfair practices; nor derogate from the common law, the principles of equity, or the statutes of this state or of the United States with respect to the right to acquire and protect trade names.

             [[Orig. Op. Page 3]]

            ". . .

            "(8) The assumption of a name in violation of this section shall not affect or vitiate the corporate existence, but the courts of this state, having equity jurisdiction, may, upon the application of the state, or of any person, unincorporated association, or corporation interested or affected, enjoin such corporation from doing business under a name assumed in violation of this section, although its articles of incorporation may have been approved and a certificate of incorporation issued."

            The language of this statute makes it quite clear that the purpose of filing a corporate name is to appropriate that name for use.  By subsection (5),supra, the legislature has expressly indicated that the filing of a corporate name will not have the effect of derogating from statutes designed to protect trade names.  RCW 19.77.030 relating to the registration of trademarks provides in part 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: . . ."

            Thereafter there is set forth the information to be included in applications for trademark registration.

            RCW 19.77.020 provides:

            "A trademark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it:

            ". . .

            "(6) Consists of or comprises a trademark which so resembles a trademark registered in this state, or a trademark or trade name previously used in this state by another and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive."

             [[Orig. Op. Page 4]]

            RCW 19.77.900 provides as follows:

            "Nothing herein shall adversely affect the rights or the enforcement of rights in trademarks acquired in good faith at any time at common law."

            It has been well established that registration pursuant to this type of legislation, is merely a means of preserving evidence that a trademark has been appropriated, and does not constitute an appropriation of the trademark for use.  Cole of California v. Grayson Shops, 72 Cal.App. (2d) 772, 165 P. (2d) 963; Ward-Chandler Building Co. v. Caldwell, 8 Cal.App. (2d) 375, 47 Pac. (2d) 758.  Woodcock v. Guy, 33 Wash. 234, 74 Pac. 358.

            In the same manner, registration is not a condition precedent to relief against infringement of a common law trademark.  Adrian v. Unterman, 306 N.Y. 771, 118 N.E. (2d) 477; Corkran, Hill & Co., Inc., v. A. H. Kuhlemann Co., 136 Md. 525, 111 Atl. 471.

            It is our conclusion that chapter 19.77 RCW was intended to provide a procedure separate and apart from any other whereby trademarks may be registered with the secretary of state.  Filing of corporate articles does not of itself comply with chapter 19.77 RCW, and hence, does not constitute registration of the corporate name as a trademark.

            We trust the foregoing will be of assistance to you.

Very truly yours,

JOHN J. O'CONNELL
Attorney General

GERALD F. COLLIER
Assistant Attorney General