W. Va. Code R. § 153-29-3

Current through Register Vol. XLI, No. 36, September 6, 2024

Section 153-29-3 - Review and Approval of New Registration

3.1. Upon receipt of an application for registration, the Secretary of State shall enter the received date and determine if the application is complete.

3.1.a. The Secretary of State shall cancel the received date stamp if the application is incomplete.

3.1.b. The Secretary of State shall return an incomplete application in its entirety to the applicant within five (5) days of receipt.

3.1.c. The Secretary of State shall refund the application fee to the applicant within sixty (60) days if a complete application is not resubmitted within thirty (30) days.

3.2. The Secretary of State shall evaluate the trademark or service mark in relation to prohibitions enumerated in W. Va. Code '47-2-2, and shall reject the application if the mark:

3.2.a. Consists of or comprises immoral, deceptive or scandalous matter;

3.2.b. Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

3.2.c. Consists of or comprises or contains the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulation thereof; or

3.2.d. Consists of or comprises the name, signature or portrait identifying a particular living individual, except by the individual's specific written consent contained in an attachment to the application.

3.3. Unless the applicant provides, as an attachment to the application, proof that the trademark or service mark has become distinctive of the applicant's goods or services, and that the mark has been in continuous use in this state by the applicant for the five (5) years before the date of the application, the Secretary of State shall reject the mark if it:

3.3.a. Is merely descriptive or deceptively misdescriptive of the goods or services in connection with which the mark is used;

3.3.b. Is primarily geographically descriptive or deceptively misdescriptive of the goods or services; or

3.3.c. Is primarily a surname.

3.4. The Secretary of State shall reject the application if the mark consists of or comprises a mark registered in this state or a mark or trade name used by another and not abandoned, as to be likely, when used in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive.

3.4.a. When the mark consists of or contains words or letters, the Secretary of State shall reject the application if the words or letters are the same as or deceptively similar to the name of a registered domestic corporation, foreign corporation, domestic or foreign limited partnership or limited liability partnership or domestic or foreign limited liability company authorized to do business in this state at the time of the application for registration of the mark, or the reserved or registered name of any of these businesses, unless the application is made by the business or with the written permission of the business.

3.4.b. When the mark consists primarily of graphic elements, the Secretary of State shall examine currently registered marks for similarity in type, characterization, number and positions of figures, similarity in the use of geometric shapes or lines and the number or relations of those shapes or lines, and similarity in the combination of all element types.

3.4.c. When the mark consists of a combination of words or letters and graphic elements, the Secretary of State shall first examine the similarity of the words or letters, and if the words or letters are found to be registrable, shall then examine the graphic elements. If the graphic elements are found not to be registrable, the Secretary of State shall, depending on the degree of similarity, either reject the application or notify the applicant of the elements of the mark which must be removed or changed in order for the application to be registrable.

3.5. If the Secretary of State rejects the application or notifies the applicant of required changes, the Secretary of State shall notify the applicant of the reason for the rejection or required changes.

3.5.a. Upon rejection of a mark, the applicant has thirty (30) days in which to reply to the Secretary of State or to amend the application, and upon receipt of a reply or an amended application, the Secretary of State shall reexamine the mark.

3.5.b. If the applicant fails to respond to the rejection of the mark within the time allowed in subsection 3.6. of this rule, the Secretary of State shall consider the application to be abandoned.

3.5.c. The Secretary of State may finally refuse the application after two (2) periods of attempted amendment which do not result in an acceptable mark.

3.6. Upon acceptance of the application for registration, the Secretary of State shall enter the effective date of the registration, assign a registration number, and issue a certificate of registration.

W. Va. Code R. § 153-29-3