2. Model Act Provisions The Idaho registration statute adopts the 1992 version of the Model Act. I.C

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1 Last Updated: March 2017 Idaho Patrick J. Kole, Esq.* Boise, ID A. State Trademark Registration Statute 1. Code Section Idaho s state registration statute is I.C et seq. (1996). Idaho s registration statute was amended, effective July 1, I.C Model Act Provisions The Idaho registration statute adopts the 1992 version of the Model Act. I.C Administrator Jeff Harvey Secretary of State Mailing address: P.O. Box Boise, Idaho Physical address: 450 N. 4th St. Boise, Idaho (208) web site: 4. Procedure for Applying for Registration a. Forms An application for registration is filed with the Secretary of State on a prescribed form. The application must be signed by the applicant or by a member of the firm or an officer of the corporation or association applying for registration. b. Number of copies Only the original need be filed. *Patrick J. Kole is Vice President, Legal & Governmental Affairs and Assistant to the Director, Idaho Potato Commission. He handles certification and trademark issues in litigation, registration and alternate dispute resolution proceedings for the Commission. He is a member of INTA and has spoken at INTA annual meetings. ID-1

2 A.4.c. STATE TRADEMARK LAW c. Fee A $30 filing fee per class code is required. The fee is refunded if registration is not granted. d. Specimens The application must be accompanied by a drawing or one (1) specimen showing the mark as actually used. e. Drawing See above. 5. Intent to Use Provision There is no provision in Idaho for reservation of trademarks, certification marks, collective marks or service marks prior to use of the mark. 6. Classification The former classification system was identical to that found in the Model Act. Now the International Classification system is used. 7. Search Prior to Application The Secretary of State will conduct a search upon the filing of an application for trademark or service mark registration. The office will not conduct an availability search over the phone. No fee other than the $30 filing fee is required. 8. Search Prior to Registration The Secretary of State s search includes previously registered trademarks, certification marks, collective marks and service marks. This search does not include assumed business names, which are also filed with the Secretary of State, or corporate name registrations. 9. Doing Business Requirement The Idaho statute only requires that the mark have been used in the state. 10. Types of Marks Registrable All trademarks, certification marks, collective marks service marks are registrable. Collective marks, and certification marks, are defined as in federal law. 11. Restrictions The provisions of the Idaho statute prohibiting registration of particular types of marks is identical to the Model State Trademark Act. ID-2

3 IDAHO A Use in State Use in the state is a prerequisite to registration. 13. Term of Registration Ten years. 14. Renewal A renewal application must be filed within six months of the expiration of the registration term. Registration may be renewed for successive ten-year periods. I.C (1996). 15. Renewal Forms An application for renewal must be filed on a form prescribed by the Secretary of State. 16. Other Forms No forms are provided other than the application form, renewal form, amendment form and assignment form. 17. Post-Registration Forms The use of post-registration forms is mandatory. 18. Fees After Registration The renewal fee is $30 per class code. The fee for filing amendments is $30. The fee for filing assignments is also $ Use Requirement for Renewal Use is required for renewal. 20. Presumptions a. In Favor of Registrant The statute does not provide for any presumptions regarding jurisdiction or for qualifying as a foreign corporation. b. Presumption of Doing Business Not applicable. 21. Remedies for Infringement The statute provides for injunctions, as well as seizure and destruction of infringing articles. Additionally, an owner may receive his lost profits or damages if the infringement was committed with intent to cause confusion or mistake. A court may also order treble damages at its discretion. I.C , -513 (1996). ID-3

4 A.22. STATE TRADEMARK LAW 22. Persons Entitled to Sue The owner of a registered mark may bring an infringement action. I.C (1996). B. Dilution 1. Code Section The Idaho Trademark Act includes an anti-dilution provision similar to that of the Model Act. I.C (1996). 2. Judicially Created Dilution Doctrine See Kings of Boise, Inc. v. M. H. King Co., 88 Idaho 267, 398 P.2d 942 (1965). This case held that dilution of a trademark was sufficient to state an unfair competition claim in Idaho. 398 P.2d at Tarnishment There are no Idaho cases which have interpreted the anti-dilution statute. 4. Likelihood of Confusion The statute specifically provides that a trademark owner may obtain an injunction against infringement in the absence of confusion as to the source of goods or services. The applicable standard requires proof that the defendant caused dilution of the distinctive quality of an owner s famous mark. I.C Competition Between the Parties This factor is not addressed in the statute. 6. Fame or Distinctiveness An owner is entitled to an injunction against another s use of a mark only after the mark becomes famous in light of seven enumerated, but not exclusive, factors. I.C Remedies The Idaho anti-dilution statute only provides for injunctive relief, unless willful intent is proven. If willful intent is proven, other remedies are available, subject to the discretion of the court and principles of equity. I.C Leading Cases ID-4

5 IDAHO C.4.c. 9. Extraterritorial Effect This issue has not been decided by the Idaho courts. 10. Preemption Cases The courts have not addressed the issue of preemption by the Lanham Act. C. Unfair Business Practices Acts (Little FTC Acts) 1. Code Section Idaho Consumer Protection Act (1971), I.C et seq. 2. Scope The Act prohibits a variety of unfair practices, including passing off goods or services as those of another, creating a likelihood of confusion as to the source, sponsorship, approval or certification of goods or services, and disparaging the goods or services of another by false or misleading representation of fact. I.C The Act expressly provides that it should be interpreted not inconsistent with the FTC Act (15 U.S.C. 45(a)(1)) and the federal court decisions relating to that statute. I.C Prohibited Activities See C.2, above. The Act prohibits a variety of specific activities and further prohibits any act or practice which is otherwise misleading, false or deceptive to the consumer. I.C (17), and any unconscionable method, act or practice in the conduct of any trade or commerce, as provided in Section C. 4. Remedies a. State Administrative Enforcement In an action by the Idaho Attorney General under the Act, the court may order restitution against any person or entity who acquired money or property by violation of the Act. I.C The court may also award injunctive relief, actual damages, and grant other appropriate relief. Id. See also I.C (1). b. Criminal Enforcement c. Civil Penalties Violation of an injunction issued under the Act is punishable by a civil penalty of not more than $10,000 per violation. I.C A ID-5

6 C.4.d. STATE TRADEMARK LAW statutory violation is punishable by a civil penalty of up to $5, per violation. I.C (1)(e). d. Private Actions and Remedies Any person who suffers a loss as a result of a purchase or lease transaction which is in violation of the Act may bring a suit to recover attorney s fees and his damages or $1,000, whichever is greater. The award of punitive damages is also provided for by the Act. I.C (1). e. Class Actions Class actions are allowed. I.C (1). f. Notice In any action brought by the Attorney General under the Act, notice must be first provided to the potential defendant, so that the defendant has the opportunity to execute an assurance of voluntary compliance or consent judgment I.C (3). There is no notice requirement with respect to private actions. This notice is not required if the Attorney General finds that the purposes of the act will be substantially and materially impaired by delay in proceeding. Id. g. Standing Private actions are limited to a party who purchases or leases goods or services. I.C (1). h. Consumer Products No provision. i. Jurisdiction of Courts Actions by the Attorney General can be brought either in the district court of the county in which such person resides or has his personal place of business, or the district court for Ada County. I.C (2). Private suits may be brought in the county in which the person sued resides, has his principal place of business or is doing business, or the county where the transaction or a substantial portion occurred. I.C (3). There is no specific provision regarding jurisdiction in private suits. j. Rules The statute specifically authorizes the Attorney General to promulgate rules and regulations interpreting the provisions of the Act. I.C (2). k. Administrative Investigative Authority Investigative Powers. The Attorney General is authorized to serve ID-6

7 IDAHO E.2.b. investigative demands, to conduct hearings, and to issue subpoenas to fulfill its duties under the Act. I.C and Power to bring civil actions. See above. 5. Administrator No provision. 6. Leading Cases Taylor v. McNichols 149 Idaho 826, 243 P.3d 642 (2010); Fenn v. Noah, 142 Idaho 775, 133 P.3d 1240 (2006); White v. Mock, 140 Idaho 882, 104 P.3d 356 (2004); Kidwell v. Master Distrib. Co., 101 Idaho 447, 615 P.2d 116 (1980); Idaho First Nat l Bank v. Wells, 100 Idaho 256, 596 P.2d 429 (1979); Yellowpine Water User s Ass n v. Imel, 105 Idaho 349, 670 P.2d 54 (1983); Myers v. A.O. Smith Products, Inc., 114 Idaho 432, 757 P.2d 695 (Idaho App. 1988). Lance v. Hobby Horse Ranch, 129 Idaho 565, 929 P.2d 741 (1996); Western Acceptance Corp. v. Jones, 117 Idaho 399, 788 P.2d 214 (1990); State v. Daicel Chemical Industries, Ltd., 141 Idaho 102, 106 P.3d 428 (2005). D. Uniform Deceptive Trade Practices Act The state has not adopted the UDTPA or a variation of it, although many of the same acts are prohibited by the Idaho Consumer Protection Act, described in C.1.-4, above Not applicable E. Trademark Counterfeiting 1. Specific Statutes I.C (1979) establishes that counterfeiting of any trademark is a misdemeanor. 2. Definition A forged or counterfeiting trademark is defined as every alteration or imitation of any trade-mark so resembling the original as to be likely to deceive. I.C (1979). a. Registration Requirement b. Identity of Type of Goods No provision. ID-7

8 E.3. STATE TRADEMARK LAW 3. Who Can Sue This is a criminal statute, and no provision is made for civil remedies. 4. Remedies a. Civil b. Criminal Counterfeiting of a trademark is a misdemeanor. There is no specific punishment established by the trademark counterfeiting statute. The general provision for misdemeanors provides for imprisonment of not more than six months and/or a fine of not more than $300. I.C (1979). There are no other special statutes regarding advertising. 5. Protective Provisions for Defendants F. False Advertising 1. Statute The Idaho Unfair Sales Act, which deals primarily with sales below cost, prohibits deceptive or false advertising. I.C (1979). The statute prohibits any statement in advertising which is untrue, deceptive or misleading or falsely represents the kind, classification, grade or quality of the goods, wares or merchandise so advertised. The Consumer Protection Act has several provisions prohibiting various types of false advertising. Idaho statutes contain two other prohibitions regarding misleading advertising. The first deals with food and drug advertising (I.C (1979)), and the second deals with insurance companies (I.C (1979)). 2. Prohibited Practices See F. 1, above. 3. Limitations No provision. 4. Who Can Sue Any person affected by acts violating the Unfair Sales Act may bring suit. 5. Remedies Plaintiff may obtain injunctive relief as well as actual damages. ID-8

9 IDAHO G Leading Cases There are no cases dealing with the false advertising provision of this statute. G. Corporate Name Reservation Prior to Incorporation 1. Statute Idaho Code Title 30 Chapters 21 and 29, (2015) Idaho s statute is based on the ABA s Model Act. 2. Reservation a. Time Period A four months nonrenewable period of time. b. Renewal There is no provision relating to renewal of reservation. c. Fee The fee to reserve a corporate name is $20. d. Prerequisite to Incorporation Reservation of the name prior to incorporation is not necessary, as long as the name is distinguishable from a previously registered business entity or reserved corporation name. There are two exceptions: 1) consent and agreement by the current name holder to change its name to a name distinguishable on the records of the Secretary of State or 2) certified copy of a judgment from a court of competent jurisdiction establishing an applicant s right to use the name. 3. Conflicting Names 4. Restrictions on use of Corp. and Similar Terms 5. Required or Authorized Use of Corp. or Similar Term All corporations are required to use the terms Corporation, Company, Incorporated or Limited, or the abbreviations for these words. If the word company or its abbreviation is used it shall not be immediately preceeded by the word and or by an abbreviation of a symbol representing the word and. 6. Search Provision The Secretary of State s Office will conduct a corporate availability ID-9

10 G.7. STATE TRADEMARK LAW search against all corporate names registered. If the name is distinguishable on the records of the Secretary of State the document will be filed. 7. Policy Regarding Identical Words Naming provisions are provided for in Idaho Administrative Code, IDAPA (2012). 8. Substantive Rights No provision. 9. Prohibited Terms The Secretary of State will not accept for registration a corporate name which states or implies that the corporation is organized for any purpose other than those enumerated in the articles of incorporation. I.C (e)(2015). 10. Administrative Agency Secretary of State 450 N. 4th Street P.O. Box Boise, Idaho (208) Forms Forms are available from the Secretary of State s Office. 12. Fees The fee for a foreign entity to register a corporate name is $60. H. Trade Name Registration (Fictitious Name Statutes) 1. Purpose The Idaho Assumed Business Name statute (I.C et seq. (2015)) was enacted to disclose on the public record the true names of persons who transact business in Idaho. Compliance with the statute does not confer any exclusive right to use an assumed business name. 2. Entities Required to File Any person who proposes to or intends to transact business in Idaho under an assumed business name shall, before beginning to transact business, deliver to the secretary of state for filing a certificate of assumed business name in a form prescribed by the secretary of state. I.C (a) (2015). ID-10

11 IDAHO H Limited Partnerships Limited partnerships are governed by Title 30, Chapter 21, and Title 30, Chapter 24, Idaho Code. 4. Where to File As of July 1, 1997, certificates of assumed business names are filed with the Idaho Secretary of State. Any person who transacted business in Idaho under an assumed name recorded with a county recorder before Jan. 1, 1997 was required to file a certificate of assumed business name with the Secretary of State prior to Dec. 31, 1998, when all filings with county recorders expired. 5. Fees The filing of a certificate must be accompanied by a fee of $20.00 payable to the Secretary of State. 6. Publication No provision. 7. Foreign Corporations The statute does not apply to either domestic or foreign corporations operating under their true name. 8. Civil Penalties No party may maintain a suit in any court of the state if he is in violation of this statute. I.C Any person who suffers a loss because of another person s noncompliance with the requirements of this act shall be entitled to recover damages in the amount of the loss, and attorney s fees and costs incurred in connection with recovery of damages. 10. Certificate None issued. 11. Renewal or Deletion A certificate of assumed business name is in effect until it is canceled pursuant to section , Idaho Code. I.C (b). 12. Substantive Rights Filing a certificate of assumed business name does not give a business any specific right to the use of a name. 13. Search Upon request, the Secretary of State will search their records for names that are identical or not distinguishable. ID-11

12 H.14. STATE TRADEMARK LAW 14. Agent No requirement. 15. Mail Registration Registration may be accomplished by mail. I. State Statutory and/or Common Law Unfair Competition or Passing Off Provisions Other than the Trademark Registration Act and the Consumer Protection Act, there is no trademark infringement statute Not applicable 6. Common Law Action for Unfair Competition Several Idaho cases have dealt with common law unfair competition principles in the trademark context. Farm Service Inc. v. U.S. Steel Corp., 90 Idaho 570, 414 P.2d. 898 (1966); King s of Boise, Inc. v. M. H. King Co., 88 Idaho 267, 398 P.2d 942 (1965); J.C. Penney Co. v. Parrish Co., 339 F. Supp. 726 (D. Idaho 1972); Cazier v. Economy Cash Stores, 71 Idaho 178, 228 P.2d 436 (1951) Woodland Furniture v. Richard Larsen, et al, 2005 WL (Id. Sup. Ct. 11/2005). 7. Elements of a Common Law Cause of Action Plaintiff can prevail if he shows either that his business will suffer from continued use of the infringing mark or that there will be a likelihood of confusion. King s of Boise v. M. H. King, supra I.6. The court specifically acknowledged dilution as an appropriate basis for the cause of action. 398 P.2d at Remedies Injunctive relief is permitted under common law principles. The plaintiff can also recover damages where the infringement or unfair competition is intentional. King s of Boise v. M. H. King, supra. I Leading Cases See I.6, above. J. Statutes of Special Application and Personal Name Statutes There are no special statutory provisions or personal name statutes Not applicable. ID-12

13 IDAHO N. K. Right of Publicity No Idaho statutes govern the right of publicity, nor have the courts recognized a common law right of publicity Not applicable. L. Criminal Statutes 1. Statutory Provision (a) Unauthorized and Deceitful Use of Name or Seal. See I.C (1979), discussed at E.1.-5, above. (b) Deceptive Business Practice. None, other than as discussed at C.1.- 6, above. (c) RICO Statute. The Idaho Racketeering Statute is I.C (1994 Supp.). The Act defines racketeering to include a variety of offenses, including trademark counterfeiting. I.C (1979). Thus, if the other criteria of racketeering are met, trademark counterfeiting will also violate this statute. M. Trade Disparagement or Trade Libel Idaho has no statute regarding trade libel, except that the Idaho Consumer Protection Act, discussed above at C.1.-6, prohibits disparaging the goods, services, or business of another by false or misleading representation of fact. I.C (8) (1990). The general Idaho libel statute is I.C (1972) Not applicable. N. Franchising or Business Opportunity Statutes Idaho has no franchising or business opportunity statutes, nor have the courts addressed these issues Not applicable. ID-13