West Virginia. Last Updated: June A. State Trademark Registration Statute

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1 Last Updated: June 2018 West Virginia Dunlap Bennett & Ludwig PLLC* Leesburg, VA; Vienna VA; Richmond, VA; Washington, DC; New York, NY; London, UK; Atlanta, GA; Fort Collins, CO; Pasadena, CA; West Palm Beach, CA A. State Trademark Registration Statute 1. Code Section The registration of a trademark in West Virginia is governed by W. Va. Code et seq. and regulations promulgated there under (W. Va. Code St. R et. seq.). 2. Model Act Provisions West Virginia has adopted the Model Act, with the only deviation in sections A.13 and A.14 infra. Acts 1996, c. 249, amended and reenacted the West Virginia trademark article, substituting present to for former , a, to (enacted by Acts 1901, c. 5 and amended by Code 1923, c. 62E, Acts 1939, c. 150, 1941, c. 126, 1955, c. 152, and 1965, c. 144). 3. Administrator West Virginia Secretary of State Corporations Division Building 1, Suite 157-K 1900 Kanawha Blvd., East *The firm of Dunlap Bennett & Ludwig was established in 2001 in Leesburg, Virginia, by Thomas Dunlap, later joined by Ellis Bennett and David Ludwig. Currently maintaining offices in Virginia, Washington, D.C., New York, California, Georgia, Florida, and Colorado, in addition to the UK, the firm is staffed with more than 40 attorneys offering expertise in state, national, and international patent and trademark law, in addition to litigation, government contracts, real estate transactions, corporate, employment, insurance defense, lender representation, construction, military law, import/export, homeownersˆ associations, and other civil matters. The firm is active in the district courts of West Virginia, the United States Supreme Court, the Trademark Trial and Appeal Board, and many other federal and state entities. WV-1

2 A.4.a. STATE TRADEMARK LAW Charleston, West Virginia (304) Procedure for Applying for Registration a. Forms The Secretary of State provides an application form. Use of the form is required per W. Va. Code St. R The application must include, but is not limited to, the following information: the name(s) and business address of the applicant, the state of incorporation if the applicant is a corporation, the state in which the partnership is organized and its general partners if the applicant is a partnership, the goods or services on or in connection with which the mark is used, the mode or manner in which the mark is used, the date when the mark was first used anywhere, the date when the mark was first used in West Virginia, and a statement that the applicant is the owner of the mark, that the mark is in use, and that, to the knowledge of the person verifying the application, no other person has registered nor has the right to use the mark, nor is the mark likely to cause confusion to another mark. W. Va. Code (a). b. Number of Copies Original only is required. W. Va. Code c. Fee There is a $50.00 filing fee payable to the Secretary of State. W. Va. Code (a). There is a $50.00 fee for each additional classification over two. W. Va. Code St. R a. d. Specimens The application must be filed with three (3) specimens showing the mark as actually used. W. Va. Code (e). e. Drawing The Secretary of State may also require that a drawing of the mark accompany the application. W. Va. Code (c). 5. Intent to Use Provision West Virginia does not have an intent to use provision. 6. Classification West Virginia uses the same classification system adopted by the United States Patent and Trademark Office. W. Va. Code ; W. Va. Code St. R WV-2

3 WEST VIRGINIA A Search Prior to Application Upon written request, the Secretary of State s office will conduct a trademark search for a fee of $5/search if records are on-site. If records are archived off-site, then the fee is increased to $10/search plus $10 each additional hour. Copy fees are $1 for the first page, plus $.50 each added page. 8. Search Prior to Registration The Secretary of State conducts a search prior to the issuance of a registration. The search includes West Virginia trademark registrations as well as West Virginia business name and fictitious/assumed name reservations and registrations. W. Va. Code (6); W. Va. Code St. R ; W. Va. Code St. R a. 9. Doing Business Requirement There is no doing business requirement for registering a mark. The applicant is required only to be using the mark in West Virginia. 10. Type of Marks Registrable Trademarks and service marks are registerable. West Virginia does not provide for the registration of collective marks or certification marks. 11. Restrictions An applicant may register a mark by which the goods and services of the applicant are distinguished from the goods or services of others. Restrictions on registrability in West Virginia conform to those in the Model Act. See W. Va. Code Use in State Actual use of a mark in West Virginia is a prerequisite to registration. W. Va. Code (a)(3). 13. Term of Registration Registration is effective for ten (10) years from the date of registration. W. Va. Code Renewal Upon application for renewal filed within six (6) months prior to the expiration of the term, registration may be renewed for successive periods of ten (10) years. All applications for renewal must include: (1) a verified statement that the mark has been and is still in use, and (2) a specimen showing actual use of the mark on or in connection with the goods or services. W. Va. Code WV-3

4 A.15. STATE TRADEMARK LAW 15. Renewal Form There is no separate renewal application form. A renewal applicant may use an original application form and indicate thereon that it is a renewal, and not an original, application. The use of the form is not required, but is preferred and encouraged. 16. Other Forms No other forms are available. 17. Post-Registration Forms No post-registration forms are available. 18. Fees After Registration There are the following fees after registration: Renewal Application, $50.00, and $50.00 for each additional classification over two; Certificate of Registration, $25.00; and Assignment, $ W. Va. Code Use Requirement for Renewal See A.14 supra. A renewal application must include: (1) a verified statement that the mark has been and is still in use, and (2) a specimen showing actual use of the mark on or in connection with the goods or services. W. Va. Code Presumptions a. In Favor of Registrant Any certificate of registration is admissible in evidence in any action or judicial proceedings in any West Virginia court as competent and sufficient proof of the registration of the mark. W. Va. Code There are no other statutory presumptions in favor of registrant. Under case law, however, registration of a mark confers procedural advantages on the part of the registrant and may constitute prima facie evidence that the registrant is entitled to the mark. W. E. Long Co. - Independent Bakers Cooperative v. Burdett, 147 W. Va. 177, 126 S.E.2d 181 (1962). b. Presumption of Doing Business Registration does not create a presumption of doing business. 21. Remedies for Infringement Any West Virginia court of competent jurisdiction may grant the following remedies: (1) grant an injunction to restrain the manufacture, use, display or sale of any counterfeits or imitations thereof; (2) require the defendant(s) to pay all profits derived from and/or WV-4

5 WEST VIRGINIA B.6. damages suffered by reason of such wrongful manufacture, use, display or sale; (3) order any counterfeits or imitations in the possession or under the control of the defendant(s) to be delivered to be destroyed; and (4) in the court s discretion, enter judgment for an amount not to exceed three times such profits and damages and/or reasonable attorneys fees where the court finds the defendant(s) committed such wrongful acts with knowledge or in bad faith. W. Va. Code (a). 22. Persons Entitled to Sue Any owner of a registered mark may sue for infringement. W. Va. Code (a). B. Dilution 1. Code Section Injury to business reputation and dilution of a trademark in West Virginia is governed by W. Va. Code Judicially Created Dilution Doctrine West Virginia does not recognize a common law dilution doctrine. 3. Tarnishment Actual tarnishment or injury to business reputation is not required. The Code does require, however, that an owner of a mark is only entitled to relief after the owner s mark becomes famous and the defendant(s) cause dilution of the distinctive quality of the owner s mark. W. Va. Code Likelihood of Confusion There is no requirement of likelihood of confusion between an owner s mark and a subsequent owner s mark. However, a court will take into account the nature and extent of use of the same or similar mark in determining whether the owner s mark is famous. W. Va. Code Competition Between the Parties There is no requirement pertaining to competitive or noncompetitive goods and services between the parties. 6. Fame or Distinctiveness The mark must be famous before the owner has a valid cause of action. In determining whether a mark is famous, a court may consider, but is not limited to, the following factors: (1) the degree of WV-5

6 B.7. STATE TRADEMARK LAW inherent or acquired distinctiveness of the mark in West Virginia; (2) the duration and extent of use of the mark in connection with the goods and services; (3) the duration and extent of advertising and publicity of the mark in West Virginia; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the owner s mark is used; (6) the degree of recognition of the owner s mark in its and in the other s trading areas and channels of trade in West Virginia; and (7) the nature and extent of use of the same or similar mark by third parties. W. Va. Code (a). 7. Remedies A court may grant an injunction against a subsequent user s use of a mark. Further, an owner is entitled to the remedies set forth in the Code, see A.21 supra, subject to the court s discretion and the principles of equity, if the owner proves the subsequent user willfully intended to trade on the owner s reputation or to cause dilution of the owner s mark. W. Va. Code (b). 8. Leading Cases There are no dilution cases in West Virginia. 9. Extraterritorial Effect Not applicable. 10. Preemption Cases There are no cases in West Virginia regarding preemption. C. Unfair Business Practices Acts (Little FTC Acts) 1. Code Section West Virginia s consumer protection statutes are contained in W. Va. Code 46A et seq. (General Consumer Credit and Protection), 46A-6A-1 et seq. (Consumer Protection - New Motor Vehicle Warranties), 46A-6B-1 et seq. (Consumer Protection - Automotive Crash Parts), 46A-6C-1 et seq. (Credit Services Organizations), 46A-6D-1 et seq. (Prizes and Gifts), and 46A et seq. (Administration). 2. Scope The express purpose of the General Consumer Protection article is to complement the body of federal law governing unfair competition and unfair, deceptive and fraudulent acts or practices in order to WV-6

7 WEST VIRGINIA C.3. protect the public and foster fair and honest competition. In construing the statute, courts [are to] be guided by... the interpretations given by the... federal courts to the various... federal statutes dealing with the same or similar matters. The article is to be liberally construed so its beneficial purposes may be served. W. Va. Code 46A et seq.; McGraw v. Imperial Mktg., 196 W. Va. 346, 472 S.E.2d 792 (1996); Rice v. Mike Ferrell Ford, Inc., 184 W. Va. 757, 403 S.E.2d 774 (1991). The express purpose of the Consumer Protection - New Motor Vehicle Warranties article is to place upon the manufacturers of motor vehicles the duty to meet their obligations and responsibilities under the terms of the express warranties extended to the consumers in West Virginia. W. Va. Code 46A-6A-1; Adams v. Nissan Motor Corp. in U.S., 182 W. Va. 234, 387 S.E.2d 288 (1989). The express purpose of the Consumer Protection - Automotive Crash Parts article is to require disclosure to motor vehicle owners of information on certain replacement crash parts for repairs to their motor vehicles and to prevent both motor vehicle body shops and insurance companies from requiring the use of aftermarket crash parts for repair unless the motor vehicle owner consents in writing of the time of the repair. W. Va. Code 46A-6B-1. The purpose of the Credit Service Organizations article is to protect consumers in West Virginia from deceptive practices of credit organizations. W. Va. Code 46A-6C-1 et seq. The purpose of the Prizes and Gifts article is to protect consumers in West Virginia from deceptive practices pertaining to the notification or receipt of a gift or prize. W. Va. Code 46A-6D-1 et seq.; State v. Imperial Mktg., 196 W. Va. 346, 472 S.E.2d 792 (1996). 3. Prohibited Activities W. Va. Code 46A of the General Consumer Protection article contains a broad prohibition against unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce within the state. W. Va. Code 46A-6-102(7) provides an illustrative, but not exclusive, list of unfair methods of competition and unfair or deceptive acts or practices. W. Va. Code 46A-6A-3 of the Consumer Protection - New Motor Vehicle Warranties article provides that a manufacturer has a duty to make any necessary repairs to conform a new motor vehicle purchased in West Virginia to all express warranties during the term of the express warranty or during the period of one year following the date of original delivery, whichever is later. If the manufacturer is unable to repair the new motor vehicle, the manufacturer shall replace WV-7

8 C.4.a. STATE TRADEMARK LAW the vehicle with a comparable new vehicle. In addition, W. Va. Code 46A-6A-3a provides that all authorized dealers of new motor vehicles purchased in West Virginia must provide to any consumer a written disclosure of any repairs to a new motor vehicle which have a retail value of five percent of the manufacturer s suggested retail price or more and were performed after shipment from the manufacturer to the dealer. W. Va. Code 46A-6B-3 of the Consumer Protection-Automotive Crash Parts article provides that for all motor vehicles requiring repair in the year of their manufacture or in the two succeeding years, a motor vehicle body shop must use genuine crash parts sufficient to maintain the manufacturer s warranty unless the motor vehicle owner consents in writing to the use of aftermarket crash parts. A motor vehicle body shop must also disclose a list of replacement crash parts intended to be used to make the repairs, and identify each replacement part as a genuine or aftermarket crash part. W. Va. Code 46A- 6B-4. W. Va. Code 46A-6C-3 of the Credit Service Organizations article expressly prohibits a credit service organization from: (1) charging a buyer before completing performance of all services the credit service organization has agreed to perform; (2) charging a buyer solely for referral of the buyer to a retail seller; and (3) making or using false or misleading representations in the offer or sale of the services of a credit service organization. W. Va. Code 46A-6D-4 of the Prizes and Gifts article prohibits a person from representing that another person is eligible to win a prize or gift without clearly disclosing on whose behalf the contest is conducted; all material conditions which the participant must satisfy; and the number, and value, and odds of receiving each prize or gift. A person is also prohibited from representing that another person has been especially selected, unless the selection process is designed to reach a particular type or types of persons (W. Va. Code 46A-6D-5), from issuing simulated checks or invoices (W. Va. Code 46A-6D-6), and from requiring the other person to pay excessive handling or shipping charges (W. Va. Code 46A-6D-7). 4. Remedies a. State Administrative Enforcement The Attorney General may investigate an alleged violation of a consumer protection statute and, if appropriate, hold an administrative hearing. Upon finding a violation, the Attorney General may order a creditor or other person to cease and desist. W. Va. Code 46A to The Attorney General may also bring a civil WV-8

9 WEST VIRGINIA C.4.d. action to restrain a person from violating the consumer protection statute. More specifically, the Attorney General may seek an injunction and other appropriate relief. W. Va. Code 46A-7-108; State v. Imperial Mktg., 196 W. Va. 346, 472 S.E.2d 792 (1996). In a subsequent action of the State against Imperial Marketing, the West Virginia Supreme Court stated that the legislature meant that other appropriate relief included the full array of equitable relief to be available in suits brought by the Attorney General. State v. Imperial Mktg., 203 W. Va. 203, 506 S.E.2d 799, (1998). b. Criminal Enforcement Under the Credit Service Organizations article, W. Va. Code 46A-6C- 10 provides that a person convicted of violating this consumer protection article is guilty of a misdemeanor and shall be fined not less than $1,000, imprisoned for not more than one year, or both fined and imprisoned. c. Civil Penalties W. Va. Code 46A-7-111(2) permits the Attorney General to bring a civil action for willful violations of the consumer protection statutes. If the court finds that the defendant has engaged in a course of repeated and willful violations, the court may assess a civil penalty of up to $5,000 for each violation of this chapter. There is a special four year statute of limitations applicable to the civil action. d. Private Actions and Remedies Under the General Consumer Protection article, W. Va. Code 46A permits an aggrieved person to bring a private action against a violator of the consumer protection law and recover actual damages or $200, whichever is greater. The court may also provide equitable relief. A successful plaintiff may also recover court costs. Although there is no explicit provision for the recovery of attorney fees, a successful plaintiff may recover reasonable attorney fees if the plaintiff asserts a cause of action pursuant to a federal statute that provides for the recovery of attorney fees in conjunction with the plaintiff s West Virginia Consumer Credit and Protection Act claim. Rice v. Mike Ferrell Ford, Inc., 184 W. Va. 757, 403 S.E.2d 774 (1991). Under the Consumer Protection - New Motor Vehicle Warranties article, W. Va. Code 46A-6A-4 permits a consumer to bring a civil action against a manufacturer and be awarded: (1) revocation of acceptance and refund of the purchase price, (2) damages for cost of repairs, (3) damages for loss of use, annoyance or inconvenience resulting from the non-conformity, and (4) reasonable attorney fees. There is a special one year statute of limitations at the expiration of the WV-9

10 C.4.e. STATE TRADEMARK LAW express warranty term. In addition, W. Va. Code 46A-6A-8 provides the Attorney General with the power to develop a qualified third party dispute resolution process. If the Attorney General develops a qualified third-party dispute resolution process and the consumer receives timely notification in writing of the process, the consumer must use the process prior to initiating a civil action under W. Va. Code 46A-6A-4. If the Attorney General does not develop a qualified third party dispute resolution process, or if the consumer is dissatisfied with the third party decision, or if the manufacturer fails to satisfy the terms of the third party decision, the consumer may assert a civil cause of action under W. Va. Code 46A-6A-4. Under the Consumer Protection - Automotive Crash Parts article, W. Va. Code 46A-6B-5 permits a person to bring a civil action for damages against a body shop. The person is not required to exhaust any administrative remedies prior to filing suit. Under the Credit Service Organizations article, W. Va. Code 46A- 6C-9 permits a buyer to bring a civil action for damages. Awarded damages may not be less than the amount paid by the buyer to the credit service organization plus reasonable attorney fees and court costs. The buyer may also be awarded punitive damages. Under the Prizes and Gifts article, W. Va. Code 46A-6D-8, a consumer may bring a civil action to enforce the provisions of this article. A successful consumer may recover reasonable attorney fees and court costs incurred by bringing the action. e. Class Actions There is no statutory provision dealing with class actions. However, in re West Virginia Rezulin Litigation, 214 W. Va. 52, 585 S.E.2d 52 (2003), the court outlined the factors to be considered in deciding whether a class action may be maintained under West Virginia Rules of Civil Procedure 23. f. Notice There are no statutory pre-suit notice requirements. g. Standing A suit may be brought under the General Consumer Protection article by either the West Virginia Attorney General or any person who purchases or leases goods or services and thereby suffers any ascertainable loss of money or property, real or personal, as a result of a violation of the Consumer Protection Act. W. Va. Code 46A-6-106, 46A A suit may be brought under the Consumer Protection - New Motor Vehicle Warranties article by either the West Virginia Attorney WV-10

11 WEST VIRGINIA C.4.k. General or a purchaser of a new motor vehicle in the State. W. Va. Code 46A-6A-4, 46A A suit may be brought under the Consumer Protection - Automotive Crash Parts article by either the West Virginia Attorney General or a vehicle owner. W. Va. Code 46A-6B-5, 46A A suit may be brought under the Credit Services Organizations article by either the West Virginia Attorney General or a buyer who is solicited to purchase or who purchases the services of a credit service organization. W. Va. Code 46A-6C-1, -9, 46A A suit may be brought under the Prizes and Gifts article by either the West Virginia Attorney General s Office or any consumer who suffers a loss. W. Va. Code 46A-6D-8, 46A h. Consumer Products The General Consumer Protection article applies to all prohibited acts or practices in the conduct of any trade or commerce. Trade or commerce is defined as the advertising, offering for sale, sale or distribution of any goods or services and shall include any trade or commerce, directly or indirectly, affecting the people of this state. W. Va. Code 46A-6-102, The statute is not limited to consumer transactions except insofar as it selectively grants standing to consumers and, further, protects consumers in certain consumer transactions. W. Va. Code 46A-6-106, -107, i. Jurisdiction of Courts West Virginia circuit courts have jurisdiction. W. Va. Code 46A-6-106, 46A j. Rules W. Va. Code 46A of the General Consumer Protection article authorizes the Attorney General to promulgate rules and regulations. The code section also provides that the rules and regulations must conform as nearly as practicable to the rules, regulations, and decisions of the Federal Trade Commission and to the decisions of federal courts in interpreting the provisions of the Federal Trade Commission Act. k. Administrative Investigative Authority Pursuant to W. Va. Code 46A-7-104, the Attorney General may conduct an investigation if he has probable cause to believe that an act in violation of the statute has been committed. To the extent necessary to further the investigation, the Attorney General may administer oaths or affirmations; subpoena witnesses; adduce evidence; and require the production of books, documents, records, or other tangible things, and the identity and location of persons having knowledge of relevant facts or any other matter reasonably calculated to lead to the WV-11

12 C.5. STATE TRADEMARK LAW discovery of admissible evidence. The Attorney General may compel compliance upon a person failing, without lawful purpose, to obey a subpoena or to give testimony. In addition, the Attorney General will not make public the name or identity of a person whose acts or conduct he investigates or the facts disclosed in the investigation. 5. Administrator The Attorney General is vested with the authority to administer the consumer protection actions. W. Va. Code 46A et seq. 6. Leading Cases (1) State ex rel. McGraw v. Scott Runyan Pontiac-Buick, Inc., 194 W. Va. 770, 461 S.E.2d 516 (1995). The Attorney General has the right to bring a civil action against an assignee to collect a refund of an excess charge imposed upon a consumer regardless of whether the assignee committed any wrongdoing. (2) Bostic v. Mallard Coach Co., 185 W. Va. 294, 406 S.E.2d 725 (1991). Once a consumer establishes that manufacturer failed its duty to repair or replace a motor vehicle, consumer has a cause of action under lemon law against manufacturer, provided that manufacturer has had notice and opportunity to repair defect. (3) Orlando v. Finance One of W. Va., Inc., 179 W. Va. 447, 369 S.E.2d 882 (1988). Under the Consumer Credit and Protection Act, the lender must take affirmative action towards an unfair credit practice in order for a borrower to recover damages from the lender. (4) U.S. Life Credit Corp. v. Wilson, 171 W. Va. 538, 301 S.E.2d 169 (1982). The legislature, in enacting the Consumer Credit and Protection Act, sought to eliminate the practice of including unconscionable terms in consumer agreements covered by the Act. To further this purpose, the legislature created a cause of action for consumers and imposed civil liability on creditors for both actual damages and penalties. (5) Harless v. First Nat l Bank in Fairmont, 162 W. Va. 116, 246 S.E.2d 270 (1978). The Consumer Credit and Protection Act represents a comprehensive legislative effort to protect the consumer and those obtaining credit. The Act regulates various consumer and credit practices, establishes the right to civil action for damages by aggrieved consumers, and imposes criminal sanctions for certain willful violations. The Attorney General is given broad powers to supervise, investigate, and prosecute to affect compliance with the Act. The Act further preserves remedies available to consumers under the Act and under other principles of law and equity. (See 77 W. Va. L. Rev. 401 (1975) for a comprehensive account of the history and scope of the Act.) WV-12

13 WEST VIRGINIA E.4. D. Uniform Deceptive Trade Practices Act West Virginia has not adopted the UDTPA. For deceptive practices statutes, see C supra Not applicable. E. Trademark Counterfeiting 1. Specific Statutes Trademark counterfeiting is addressed within W. Va. Code (Infringement) - 14d (Seizure, forfeiture and disposal). 2. Definition The word counterfeiting as it relates to trademarks is defined in W. Va. Code a(b) (Trademark counterfeiting): [A] mark is counterfeit if it is a mark that is identical to or substantially indistinguishable from a registered or common law mark and it is used on or in connection with the same type of goods or services for which the genuine mark is registered or otherwise used. a. Registration Requirement A mark must be registered in West Virginia prior to a valid cause of action for trademark counterfeiting. W. Va. Code However, registration is not required for the state to enforce the criminal provisions of the counterfeiting law. W. Va. Code a. b. Identity of Types of Goods There is no requirement that the goods to which a counterfeit mark is applied must be substantially identical in visual appearance to those of the mark owner. West Virginia only requires the use of the counterfeit mark in connection with the same type of goods or services for which the genuine mark is registered or otherwise used. W. Va. Code a(b)(2). 3. Who Can Sue Any owner of a registered mark may sue for counterfeiting. W. Va. Code Trademark counterfeiting is also a crime. W. Va. Code b (Misdemeanor trademark counterfeiting) and W. Va. Code c (Felony trademark counterfeiting). 4. Remedies Any West Virginia court of competent jurisdiction may grant the following remedies: (1) grant an injunction to restrain the manufacture, use, display or sale of any counterfeits or imitations thereof; (2) WV-13

14 E.5. STATE TRADEMARK LAW require the defendant(s) to pay all profits derived from and/or damages suffered by reason of such wrongful manufacture, use, display or sale; (3) order any counterfeits or imitations in the possession or under the control of the defendant(s) to be delivered to be destroyed; and (4) in the court s discretion, enter judgment for an amount not to exceed three times such profits and damages and/or reasonable attorneys fees where the court finds the defendant(s) committed such wrongful acts with knowledge or in bad faith. W. Va. Code [A] person [who] knowingly and with the intent to sell or distribute and without the consent of the registrant or owner uses, displays, advertises, distributes, offers for sale, sells or possesses any item that bears a counterfeit of a mark or any service that is identified by a counterfeit of a mark with a total retail value of all of the items bearing the counterfeit mark or services that are identified by the counterfeit mark is less than $1,000 may be (1) for a first violation, confined to jail for not more than one year or fined not more than $2,000, or both, (2) for each subsequent violation, confined to not more than one year, fined not more than $5,000, or both, or (3) [i]f the person convicted under this section is a firm, partnership, corporation, union, association or other organization capable of suing and being sued in a court of law, the maximum fine that may be imposed is $10,000. W. Va. Code a(a), W. Va. Code b. [A] person [who] knowingly and with the intent to sell or distribute and without the consent of the registrant or owner uses, displays, advertises, distributes, offers for sale, sells or possesses any item that bears a counterfeit of a mark or any service that is identified by a counterfeit of a mark with a total retail value of all of the items bearing the counterfeit mark or services that are identified by the counterfeit mark is $1,000 or greater may be (1) confined to jail for not less than one year nor more than five years or fined not more than $10,000, or both a fine and confinement or (2) [i]f the person convicted under this section is a firm, partnership, corporation, union, association or other organization capable of suing and being sued in a court of law, the maximum fine that may be imposed is $20,000. W. Va. Code a(a), W. Va. Code c. 5. Protective Provisions for Defendants None specifically granted by statute. F. False Advertising 1. Statute Criminal, W. Va. Code 32A-1-2; civil, W. Va. Code 46A-6-102(7)(N), 46A WV-14

15 WEST VIRGINIA F Prohibited Practices The criminal statute W. Va. Code 32A-1-2 prohibits knowingly making representations in an advertisement which is made public and which contains a promise, assertion, representation, or statement of fact which is untrue, deceptive, or misleading with the purpose of inducing the public to enter into any obligation. W. Va. Code 46A-6-102(7)(N) and 46A-6-104, which are part of the West Virginia Consumer Protection laws, prohibit conduct which creates a likelihood of confusion or misunderstanding, including advertising goods or services with the intent not to sell them as advertised, or advertising goods or services with the intent not to supply a reasonably expectable public demand, unless the advertisement discloses a quantity limitation. The statutes also generally prohibit advertising in any manner with regard to the sale of goods or the extension of consumer credit which is false, misleading, or deceptive, or which omits material information. See, State of W. Va. ex. rel. McGraw v. Telecheck Serv., Inc., 213 W. Va 438, 582 S.E.2d 885 (2003). 3. Limitations To be found guilty of false advertising, one must have knowledge that the promise, assertion, representation or statement of fact made was untrue, deceptive or misleading. W. Va. Code 32A-1-2. The West Virginia Consumer Credit and Protection Act does not apply to acts done by the publisher, owner, agent or employee of a newspaper, periodical or radio or television station in the publication or dissemination of an advertisement, when the owner, agent or employee did not have knowledge of the false, misleading or deceptive character of the advertisement, did not prepare the advertisement and did not have a direct financial interest in the sale or distribution of the advertised goods or services. W. Va. Code 46A No award of damages may be made without proof that the person seeking damages suffered an actual out-of-pocket loss proximately caused by the false advertisement. W. Va. Code 46A Who Can Sue The civil statute W. Va. Code 46A-6-106(a) provides that any person who suffers an ascertainable loss as a result of false advertisement may sue. See, In re: W. Va. Rezulin Litig. V. Hutchinson, 214 W. Va. 52, 585 S.E.2d 52 (2003). W. Va. Code 46A states that West Virginia s Attorney General may also bring an action for an injunction and for other appropriate relief. 5. Remedies A private action may be brought by an aggrieved person to recover WV-15

16 F.6. STATE TRADEMARK LAW actual damages or $200, whichever is greater, and a court may, at its discretion, provide equitable relief. W. Va. Code 46A-6-106(a). See, In re: W. Va. Rezulin Litig. V. Hutchinson, 214 W. Va. 52, 585 S.E.2d 52 (2003). West Virginia s Attorney General may get an injunction and other appropriate relief. W. Va. Code 46A W. Va. Code 32A-1-2 states that a person who knowingly falsely advertises is guilty of a misdemeanor and is subject to a fine of up to $2,000, imprisonment in the county jail up to six months, or both. 6. Leading Cases State v. Wohlmouth, 78 W. Va. 404, 89 S.E. 7 (1916) (false advertisement under 1, ch. 43, Acts 1915; 36, ch. 145, Barnes Code 1916 (West Virginia). G. Corporate Name Reservation Prior to Incorporation 1. Statute The corporate name reservation and registration provisions are contained in W. Va. Code 31D to 31D (effective October 1, 2002). 2. Reservation a. Time Period A name may be reserved for a nonrenewable 120 day period. W. Va. Code 31D-4-403(a). b. Renewal There is no provision for renewing a reservation of a corporate name. c. Fee There is a $15.00 fee for reservation of a name for each 120 day period or any period exceeding 7 days. W. Va. Code (a)(4). d. Advance Registration Although advance reservation is not required, it is advisable. 3. Conflicting Names Qualification of foreign corporations to do business in the State of West Virginia is governed by Article 15 of the W. Va. Code. If the name of the foreign corporation is in conflict with the name of another corporation qualified to do business in this state, W. Va. Code 31D (c) states that a foreign corporation may apply to the Secretary of State for authorization to use the name that is not distinguishable. The Secretary of State shall authorize use of the name applied for if: WV-16

17 WEST VIRGINIA G.7. (1) the other corporation consents to the use in writing and submits an undertaking in form satisfactory to the Secretary of State to change the name so that it is distinguishable upon the records of the Secretary of State from the name applied for; or (2) the applicant delivers to the Secretary of State a certified copy of a final judgment of a circuit court of competent jurisdiction establishing the applicant s right to use the name applied for in this state. W. Va. Code 31D (c). 4. Use of Corp and Similar Terms No person may use the word Corporation, Incorporated, or Limited, or an abbreviation of any such word in any trade name, business or other organization name, unless it is used by a domestic or foreign corporation authorized by the Secretary of State to transact business in West Virginia. W. Va. Code 31D-4-402(a)-(b). 5. Authorized Use of Corp. or Similar Term The corporate name must contain the word Corporation, Company, Incorporated, or Limited, or must contain an abbreviation of the words. W. Va. Code 31D-4-401(a). Foreign corporations which do not contain one of the required words or abbreviations may add one of those words or abbreviations to the end of its name. W. Va. Code 31D (a)(1). 6. Search Provision The Secretary of State conducts a search of all reserved and registered names to determine if the corporate name applied for is available. W. Va. Code 31D-4-403, 31D-4-401(b)(2). 7. Policy Regarding Identical Names A corporate name must be distinguishable from any other name carried in the records of the Secretary of State. W. Va. Code 31D-4-401(b). However, W. Va. Code 31D-4-401(c) states that a corporation may apply to use a name that is not distinguishable from another corporation already conducting business in this state or to another corporation which has its name reserved if: (1) the other corporation consents to the use in writing and submits an undertaking in form satisfactory to the Secretary to change the name so that it is distinguishable upon the records from the name applied for; or (2) the applicant delivers to the Secretary of State a certified copy of the final judgment of a court of competent jurisdiction establishing the right to use the name applied for in this state. And pursuant to W. Va. Code 31D-4-401(d), [a] corporation may use the name, including the fictitious name, of another domestic or foreign corporation that is used in this State if the other corporation is WV-17

18 G.8. STATE TRADEMARK LAW incorporated or authorized to transact business in this State and the proposed user corporation has merged with the other corporation; has been formed by reorganization of the other corporation; or has acquired all or substantially all of the assets, including the corporate name, of the other corporation. 8. Substantive Rights No substantive rights in a name are created by statute. 9. Prohibited Terms A corporate name shall not contain language stating or implying that the corporation is organized for a purpose other than one of the purposes contained in its articles of incorporation or other than that permitted by W. Va. Code 31D W. Va. Code 31D Administrative Agency West Virginia Secretary of State Corporations Division Building 1, Suite 157-K 1900 Kanawha Blvd. E. Charleston, WV (304) sos.wv.gov 11. Forms A form is available online for reserving a corporate name. An online portal is also available to register or withdraw a trade name. H. Trade Name Registration (Fictitious Name Statutes) 1. Purpose The purpose of the fictitious name statute, W. Va. Code et seq., is to protect creditors doing business with the person, sole proprietorship or general partnership conducting its affairs under an assumed name. 2. Entities Required to File Individuals, sole proprietorships, or general partnerships who conduct or transact any mercantile business under an assumed name are required to file a certificate setting forth the name under which they will be conducting business, unless that name is the real name or names of the individual or individuals owning, conducting, or transacting such business. W. Va. Code Corporations, associa- WV-18

19 WEST VIRGINIA H.10. tions, and limited partnerships must file an application for registration of a trade name in order to conduct or transact business within this state under an assumed name. W. Va. Code (a). 3. Limited Partnerships Limited partnerships must file an application for registration of a trade name in order to conduct or transact business within this state under an assumed name. W. Va. Code (a). 4. Where to File As of July 6, 2017, the assumed name of an individual, sole proprietorship or general partnership shall be filed with the Secretary of State. W. Va. Code The applications for registration of a trade of a corporation, association, limited partnership, limited liability partnership and limited liability company name shall be filed in the office of the Secretary of State. W. Va. Code (a). 5. Fees There is a $25 fee for registering a trade name. W. Va. Code (a)(1)(K). 6. Publication No requirement. 7. Foreign Corporations There is no distinction under Article 8 between domestic and foreign corporations. W. Va. Code However, W. Va. Code 31D specifically addresses the use of a fictitious name by foreign corporations. 8. Civil Penalties None. 9. Criminal Penalties Failure to file as required by W. Va. Code , and constitutes a misdemeanor and subjects the guilty party to a fine of $25 to $100, or to imprisonment in the county jail for a term not exceeding thirty days, or both. W. Va. Code Certificate The Secretary of State shall grant a certificate of registration to any applicant who has met the registration requirements. W. Va. Code (a). WV-19

20 H.11. STATE TRADEMARK LAW 11. Renewal or Deletion A new certificate of registration must be filed if the business entity desires to conduct or transact business in this state under any other name not on file in the office of the Secretary of State. W. Va. Code (a). A certificate of withdrawal must be filed with the office of the Secretary of State upon discontinuing the use of a registered trade name. W. Va. Code (c). 12. Substantive Rights The filing of an assumed name does not provide any sort of substantive rights in the use of the name. Stalnaker v. Stalnaker, 180 W. Va. 679, 379 S.E.2d 401 (1989). 13. Search A pre-registration search may be conducted by reviewing the database of all persons filing forms provided for in W. Va. Code 47-8 (Article 8. Trade Names) kept by the Secretary of State. 14. Agent A corporation s registered agent is the corporation s agent for the service of process. W. Va. Code 31D-5-504(a). If a corporation has no registered agent, or the agent cannot with reasonable diligence be served, the corporation may be served by registered or certified mail, return receipt requested, addressed to the secretary of the corporation at its principal office. W. Va. Code 31D-5-504(b). In addition, the Secretary of State is a statutory agent for accepting service of process on behalf of corporations, as well as on behalf of nonresidents transacting business in this state. W. Va. Code 31D-5-504(c), Mail Registration An application for registration of an assumed name must be submitted on a form available from the Secretary of State s office. The application may be submitted in person or by mail. An online portal is also available to register or withdraw a trade name. I. State Statutory and/or Common Law Unfair Competition or Passing Off Provisions 1. Statutory Section Article 11A of the W. Va. Code, entitled Unfair Trade Practices, prohibits certain specified acts done for the purpose of unfairly diverting trade from or otherwise injuring competitors (e.g., selling products below cost). WV-20

21 WEST VIRGINIA I Derivation Unknown. 3. Intent Under the Unfair Trade Practices article, below-cost sale of goods with the intent to destroy or the effect of destroying competition is deemed an unlawful unfair trade practice. 4. Defenses Statutory defenses to a claim of selling below cost include the lack of intent to destroy competition and the fact that the sale price of any product or item of merchandise alleged to be in violation of this article is equal to or greater than the sales price of the same product or item being sold by a competitor of the defendant. W. Va. Code 47-11A- 1(a), 47-11A-2, 47-11A-9(c). 5. Remedies The Unfair Trade Practices article provides for injunctive relief and actual damages, if alleged and proven. W. Va. Code 47-11A-9. This article also provides for criminal sanctions against the offenders. A violator of this article is guilty of a misdemeanor for each single violation, punishable by a fine of not less than $100 nor more than $1,000, or by imprisonment not exceeding 90 days, or both. W. Va. Code 47-11A Common Law Action for Unfair Competition A state common law action for unfair competition, imitation of trade names and trademarks, or passing off was recognized in Household Finance Corp. of Delaware v. Household Finance Corp. of West Virginia, 11 F. Supp. 3 (N.D.W. Va. 1935). 7. Elements of a Common Law Cause of Action The common law action addressed in Household Finance, supra I.6, requires that the plaintiff prove that the defendant has adopted a name so similar to that of the plaintiff as to cause confusion in the mind of the public. 8. Remedies In Household Finance, supra I.6 at 7, the court recognized that injunctive relief was appropriate in cases of name imitation or passing off, and that an action for money damages could be maintained in a proper case. 9. Leading Cases (1) Household Finance Corp. of Delaware v. Household Finance Corp. of WV-21

22 J. STATE TRADEMARK LAW West Virginia, 11 F. Supp. 3 (N.D. W.Va. 1935). To state a case of unfair competition at common law, it was not necessary to show that any person had actually been deceived by the defendant s conduct and led to purchase goods in the belief that they were the goods of the plaintiff, or to deal with the defendant, thinking he was dealing with plaintiff; it was sufficient to show that such deception was the natural and probable result of the defendant s acts. (2) Gluck v. Kaufman, 117 W. Va. 685, 186 S.E. 615 (1936). W. Va. Code was intended to apply only to the goods dealt in, and therefore it deals only with trademarks, as distinguished from trade names; persons attempting to register a trade name pursuant to this section acquire no exclusive right to the use of the name they are attempting to register. W. Va. Code is intended for the protection of creditors and compliance with its terms does not confer the exclusive right to the use of a trade name. (3) Foglesong v. Foglesong Funeral Home, Inc., 149 W. Va. 454, 141 S.E.2d 390 (1965). Every person has a right to use his own name in his own business as long as such use is made truthfully, in good faith, and is not calculated to mislead the public as to the identity of business establishments or to produce injury to another beyond that which naturally results from similarity of names. (4) A.W. Cox Dept. Store Co. v. Cox s Inc., 159 W. Va. 306, 221 S.E.2d 539 (1976). A court may enjoin the use of a trade name which is also a family name, in the absence of any showing of fraud or deceit, where the name has acquired a secondary or new primary meaning and where confusion of the public will result. In determining whether confusion is likely to result from the coexistence of two businesses operating under the same name, a court may consider the type of business, the degree of competition, the similarity of products, the former affiliation of the parties, the timeliness of the action, and the geographic scope of the operation. J. Statutes of Special Application and Personal Name Statutes 1. Special Statutory Sections W. Va. Code 35A-1-1 et seq. provides a procedure whereby any association, lodge, order, fraternal society, beneficial association, or historical, military or veterans organization, labor union, foundation, federation, or any other society, organization or association, may register in the Office of the Secretary of State a facsimile, duplicate, or description of its name, emblem, insignia, etc. W. Va. Code 35A-1-6 prohibits the unauthorized use of duly registered emblems, insignias, etc., of associations or organizations, and provides that violators shall be guilty of a misdemeanor, and upon conviction, shall be punished WV-22

23 WEST VIRGINIA K.3. by a fine not exceeding $20, and, in default of payment, committed to jail for a period not to exceed ten days. No civil remedies are provided by statute. 2. Use of Personal Name Individuals, sole proprietorships, or general partnerships who conduct or transact any mercantile business under an assumed name are required to file a certificate setting forth the name under which they will be conducting business, unless that name is the real name or names of the individual or individuals owning, conducting, or transacting such business. W. Va. Code K. Right of Publicity 1. Recognition Arguably, the common law right of publicity (as well as the right of privacy) was recognized in Crump v. Beckley Newspapers, Inc., 173 W. Va. 699, 320 S.E.2d 70 (1983), wherein the court addressed the wrongful appropriation of an individual s name or likeness for commercial advantage. In the context of trade names, in A.W. Cox Department Store Co. v. Cox s Inc., 159 W. Va. 306, 221 S.E.2d 539 (1976), the court recognized that every person has the right to use his own name in business so long as his name is used truthfully and in good faith, unless that name has previously acquired a secondary meaning in the market area. Where a trade name has acquired a secondary meaning, it may be protected by injunction. 2. Applicable Statute There is no West Virginia statute relating to the right of publicity. 3. Elements of Cause of Action In order for an action to lie for violation of the right of publicity and the use of one s name or likeness for commercial advantage, the defendant must have appropriated the individual s name or likeness. Curran v. Amazon.com, Inc., 86 U.S.P.Q.2D (BNA) 1784, 1787, 2008 U.S. Dist. LEXIS 12479, *9-10, 36 Media L. Rep (S.D. W. Va. Feb. 19, 2008) (citing Crump, supra at 85). Appropriation requires more than mere publication by the defendant. The defendant must have taken for his own use or benefit the reputation, prestige, or commercial standing, public interest, or other value associated with the name or likeness published. Crump, supra at 86. In Crump, no action existed because defendant did not publish plaintiff s picture for plaintiff s personal likeness; rather, it was published because her picture WV-23