TRADE‑MARKS ‑- TRADE NAMES ‑- FILING

TRADE‑MARKS ‑- TRADE NAMES ‑- FILING

"Cashway Lumber Company" appears to be only a phrase descriptive of the seller, and thus would amount only to a trade name and not within the coverage of our trade mark statutes.

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                                                                December 3, 1951

Honorable Earl Coe
Secretary of State
Legislative Building
Olympia, Washington                                                                                                              Cite as:  AGO 51-53 No. 183

Attention:  !ttMr. R. J. Yeoman
            Assistant Secretary of State

Dear Sir:

            This is to acknowledge your letter of October 4, 1951, in which you requested our opinion as to whether the name "Cashway Lumber Company" was entitled to be recorded under our trade mark statutes.

            Our conclusion may be stated as follows:

            "Cashway Lumber Company" appears to be only a phrase descriptive of the seller, and thus would amount only to a trade name and not within the coverage of our trade mark statutes.

                                                                     ANALYSIS

            Our trade mark statutes are to be found in R.R.S., §§ 11537, et seq.  These statutes are over a half century old, and do not today adequately reflect modern business customs and usage.

            Rem. Rev. Stat., § 11537, which purports to set out what may be filed, provides as follows:

             [[Orig. Op. Page 2]]

            "Whenever any person, or any association or union of workingmen has heretofore adopted or used, or shall hereafter adopt or use, and has filed as hereinafter provided anylabel, trademark, term, design, device or form of advertisement for the purpose of designating, making known, or distinguishing any goods, wares, merchandise or other product of labor, as having been made, manufactured, produced, prepared, packed or put on sale by such person or association or union of workingmen or by a member or members of such association or union, it shall be unlawful to counterfeit or imitate such label, trademark, term, design, device or form of advertisement, or to use, sell, offer for sale, or in any way utter or circulate any counterfeit or imitation of any such label, trade mark, term, design, device or form of advertisement."  (Emphasis supplied)

            It is to be noted at the outset that the phrase "trade name" is not included within those matters that may be filed under § 11537.  The applicable statutes, furthermore, do not offer any definition of the phrase "trade mark."

            At this point then it would seem to follow that "trade names" are not within the coverage of the foregoing statutes unless it could be said that a "trade name" is synonymous with a "trade mark" or that a particular trade name is at the same time a trade mark.

            There is unquestionably a technical distinction between a trade mark and a trade name.  SeeHartzler v. Goshen Churn and Ladder Company, 104 N.E. 34.  Generally the authorities define a trade mark as something referring to the article or thing sold which identifies the article, while a trade name embraces the individuality of the seller.  Eastern Outfitting Company v. Manheim, 59 Wash. 428, 110 Pac. 23.  This technical distinction is not always borne out when specific examples are referred to, as in many instances a trade mark is also the trade name.

            In the case ofBall v. Broadway Bazar, 106 N.Y.S. 249, 121 App. Div. 546, it was noted by the court that there are many instances in which the same signs, marks, and samples may serve both as trade marks and trade names.

             [[Orig. Op. Page 3]]

            In respect to "Cashway Lumber Company" we are not sufficiently informed concerning the company's operations to determine whether "Cashway Lumber Company" may also be said to be a trade mark.  It would appear to us that it is probably no more than a trade name.  This conclusion follows, we feel, because it appears that the words "Cashway Lumber Company" are merely descriptive of the seller.

            However, the fact that "Cashway Lumber Company" is an assumed business name would not, in our view, necessarily preclude the same from also being a trade mark, but in the absence of any showing that "Cashway Lumber Company" is no more than descriptive of the seller, we conclude that this name is only a trade name, and accordingly, not within the coverage of Rem. Rev. Stat., §§ 11537, et seq.

            Our remarks herein are not intended to voice any opinion, however, on the right of "Cashway Lumber Company" to have the exclusive use of this name.  That is another problem.

Very truly yours,

SMITH TROY
Attorney General

ROBERT L. SIMPSON
Assistant Attorney General