75th OREGON LEGISLATIVE ASSEMBLY--2009 Regular Session
 
SA to SB 636
 
LC 2099/SB 636-1
 
                      SENATE AMENDMENTS TO
                         SENATE BILL 636
 
                    By COMMITTEE ON JUDICIARY
 
                              May 8
 
  On page 2 of the printed bill, delete lines 18 through 21 and
insert:
  ' (2) 'Dilution' means an association that arises from the
similarity between a mark or trade name and a famous mark,
regardless of the presence or absence of competition between the
owner of the famous mark and another party, actual or likely
confusion, mistake, deception or actual economic injury, if the
association:
  ' (a) Impairs the distinctiveness of the famous mark, an
association commonly known as dilution by blurring; or
  ' (b) Harms the reputation of the famous mark, an association
commonly known as dilution by tarnishment.'.
  In line 24, after 'association,' insert 'limited liability
company,'.
  In line 34, delete the second 'a word' and insert ' words'.
  In line 35, delete 'name, symbol or device' and insert ' names,
symbols or devices'.
  In line 38, delete the second 'a word' and insert ' words'.
  In line 39, delete 'name, symbol or device' and insert ' names,
symbols or devices'.
  On page 3, line 3, after '(1)' insert 'For purposes of this
chapter,'.
  In line 20, delete 'service marks' and insert 'a service mark'.
  In line 38, after the period insert 'If the person is a limited
liability company, the application must list the state in which
the limited liability company was formed.'.
  On page 4, line 23, delete 'a' and insert 'the' and after '
was' insert 'finally'.
  In line 28, after 'corporation' insert ', limited liability
company'.
  In line 31, delete 'three specimens' and insert 'one specimen'.
  In line 34, before 'The' insert '(1)'.
  After line 38, insert:
  ' (2) A single application to register a mark may include any
or all goods or services on or in connection with which the mark
is actually being used.
  ' (3) If an application includes more than one class, the
Secretary of State may collect a fee under ORS 56.140 for each
class.'.
  On page 5, line 9, after 'State' insert ', at the Secretary of
State's sole discretion,'.
  In line 10, after the period insert 'This section does not
require the Secretary of State to conduct an examination or
investigation in connection with an application for
registration.'.
  In line 40, delete 'if the' and insert 'when used on or in
connection with goods or services identified in the
applications'.
  In line 41, delete 'Secretary of State registers both marks'.
  On page 6, delete lines 27 and 28 and insert:
  ' (1) A mark that an applicant submits for registration may not
be registered if the mark consists of or comprises:'.
  Delete line 39 and insert '(2)(a) A mark may not be registered
if the mark is:'.
  On page 7, line 2, after 'distinctive' insert ', when used on
or in connection with the applicant's goods or services,'.
  In line 3, delete 'claimed' and insert 'made the claim'.
  In line 7, after the period insert 'The Secretary of State may
issue as the certificate of registration a copy of the
application marked with the word 'filed.' ' .
  In line 12, after the period, insert 'If the registrant is a
limited liability company, the certificate must show the state in
which the limited liability company was formed.'.
  In line 39, after 'renewal' insert ', verified as provided in
ORS 647.015 (3),'.
  On page 8, after line 10, insert:
  ' (3) The Secretary of State, before the term of registration
expires, shall notify the registrant in writing at the mailing
address shown for the registrant in the current records of the
Secretary of State that the registrant must renew the
registration.'.
  In line 21, delete 'the mark and'.
  In line 23, delete 'shall' and insert 'may'.
  In line 35, after 'State' insert ', at the Secretary of State's
sole discretion,'.
  On page 9, line 3, after 'or' delete 'for'.
  In line 4, delete 'mark' and insert 'registration'.
  In line 20, delete 'owns a mark that is concurrently regis-'
and insert 'has a concurrent registration in'.
  In line 21, delete 'tered with' and after 'Office' delete '
and'.
  In line 22, after 'for' delete 'this state' and insert ' the
area covered by the concurrent registration'.
  In line 37, after 'not' insert ', on the person's behalf or on
behalf of another person,'.
  On page 10, line 24, after 'acted' insert 'as described in
subsection (1)(b) of this section'.
  On page 11, line 11, after the period insert 'If the court
finds that the plaintiff acted in bad faith, vexatiously,
wantonly or for oppressive reasons, the court in the court's
discretion may award reasonable attorney fees to the defendant.'.
  In line 17, delete 'or trade name'.
  In line 19, delete 'or trade name'.
  In line 20, delete 'or trade name'.
  In line 21, after 'mark' insert a period and delete the rest of
the line and lines 22 through 25.
  In line 26, delete 'or trade name'.
  In line 27, delete 'or trade name'.
  In line 28, delete 'or trade name'.
  In line 29, delete 'or trade name' and after 'consider ' insert
'factors such as'.
  In line 31, delete 'another person' and insert 'other persons'.
  In line 32, delete 'that bear' and insert 'offered under'.
  In line 33, delete 'or trade name'.
  In line 34, delete 'or trade name'.
  In line 35, delete 'or trade name'.
  In line 38, delete 'or trade name'.
  In line 40, delete 'or trade name'.
  In line 41, delete 'or trade name'.
  In line 43, delete 'or trade name'.
  In line 45, delete 'or trade name'.
  On page 12, line 1, delete the colon and insert 'a nominative
or descriptive fair use or facilitation of a nominative or
descriptive fair use, other than as a designation of source for
the other person's own goods or services, including a use:
  ' (a) In connection with:
  ' (A) Advertising or promotion that permits consumers to
compare goods or services; or
  ' (B) Identifying or parodying, criticizing or commenting upon
the owner of the famous mark or the goods or services of the
owner of the famous mark;
  ' (b) That is noncommercial; or
  ' (c) That constitutes news reporting or news commentary.'.
  Delete lines 2 through 12.
  In line 17, delete 'the court' and insert 'a person'.
  After line 25, insert:
  ' (3) The intent of this chapter is to provide for a system of
trademark registration and protection substantially consistent
with the system of trademark registration and protection set
forth in 15 U.S.C. 1051 et seq. Construction given the provisions
set forth in 15 U.S.C. 1051 et seq. constitutes persuasive
authority for interpreting and construing this chapter.'.
  Delete lines 29 and 30 and insert '2009 Act apply only to
suits, proceedings or appeals commenced on or after the operative
date specified in section 21 of this 2009 Act.'.
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