75th OREGON LEGISLATIVE ASSEMBLY--2009 Regular Session
NOTE: Matter within { + braces and plus signs + } in an
amended section is new. Matter within { - braces and minus
signs - } is existing law to be omitted. New sections are within
{ + braces and plus signs + } .
LC 2099
A-Engrossed
Senate Bill 636
Ordered by the Senate May 8
Including Senate Amendments dated May 8
Sponsored by COMMITTEE ON JUDICIARY
SUMMARY
The following summary is not prepared by the sponsors of the
measure and is not a part of the body thereof subject to
consideration by the Legislative Assembly. It is an editor's
brief statement of the essential features of the measure.
Updates Oregon law related to trademarks { - , service marks
and trade names - } { + and service marks + }.
Declares emergency, effective on passage.
A BILL FOR AN ACT
Relating to marks used in commerce; creating new provisions;
amending ORS 647.005, 647.009, 647.015, 647.024, 647.029,
647.035, 647.045, 647.055, 647.065, 647.075, 647.085, 647.095,
647.105, 647.107 and 647.115; and declaring an emergency.
Be It Enacted by the People of the State of Oregon:
SECTION 1. ORS 647.005 is amended to read:
647.005. { - (1) - } As used in this chapter:
{ - (a) 'Applicant' embraces the person who applies to
register a mark under this chapter, and the person's legal
representatives, successors or assigns. - }
{ - (b) 'Mark' includes any trademark or service mark
entitled to registration under this chapter whether registered or
not. - }
{ - (c) 'Person' means any individual, firm, partnership,
corporation, association, union or other organization. - }
{ - (d) 'Registrant' embraces the person to whom the
registration of a mark is issued under this chapter, and the
person's legal representatives, successors or assigns. - }
{ - (e) 'Retail value' means: - }
{ - (A) For items that bear a counterfeit mark and are
components of a finished product, the regular selling price of
the finished product in which the component would be
utilized. - }
{ - (B) For all items that bear a counterfeit mark other than
those described in subparagraph (A) of this paragraph and for all
services that are identified by a counterfeit mark, the regular
selling price of the item or service. - }
{ - (f) 'Trademark' means any word, name, symbol, device or
any combination thereof adopted and used by a person to identify
goods made or sold by the person and to distinguish them from
goods made or sold by others. - }
{ - (g) 'Trade name' means a word, name, symbol, device or
any combination thereof used by a person to identify the person's
business, vocation or occupation and to distinguish it from the
business, vocation or occupation of others. - }
{ - (h) 'Service mark' means any word, name, symbol, device
or any combination thereof used by a person in the sale or
advertising of services to identify the person's services and to
distinguish them from the services of others. - }
{ - (2) For the purposes of this chapter, a mark shall be
deemed to be 'used' in this state: - }
{ - (a) On goods when it is placed in any manner on the goods
or their containers or the displays associated therewith or on
the tags or labels affixed thereto and such goods are sold or
otherwise distributed in this state; and - }
{ - (b) On services when it is used or displayed in the sale
or advertising of services and the services are rendered in this
state. - }
{ - (3) For purposes of this chapter, a mark shall be deemed
to be 'abandoned' in this state when either of the following
occurs: - }
{ - (a) When its use has been discontinued with intent not to
resume. Intent not to resume may be inferred from the
circumstances. Nonuse for two consecutive years shall be prima
facie evidence of abandonment. 'Use' of a mark means the bona
fide use of that mark made in the ordinary course of trade and
not made merely to reserve a right in a mark; or - }
{ - (b) When any course of conduct of the registrant,
including acts of omission as well as commission, causes the mark
to become the generic name for the goods or services on or in
connection with which it is used, or otherwise to lose its
significance as a mark. Purchaser motivation shall not be a test
for determining abandonment under this paragraph. - }
{ + (1) 'Applicant' means a person that files an application
to register a mark under this chapter, and the person's legal
representatives, successors or assigns.
(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.
(3) 'Mark' means a trademark or service mark entitled to
registration under this chapter whether registered or not.
(4) 'Person' means an individual, firm, partnership,
corporation, association, limited liability company, union or
other organization capable of suing or being sued in a court.
(5) 'Registrant' means a person to whom the registration of a
mark is issued under this chapter, and the person's legal
representatives, successors or assigns.
(6) 'Retail value' means:
(a) For items that bear a counterfeit mark and are components
of a finished product, the regular selling price of the finished
product in which the component would be utilized.
(b) For items that bear a counterfeit mark other than items
described in paragraph (a) of this subsection and for services
that are identified by a counterfeit mark, the regular selling
price of the item or service.
(7) 'Service mark' means a word, name, symbol or device or a
combination of words, names, symbols or devices that a person
uses to identify and distinguish the person's services, including
a unique service, from another person's services and to indicate
the source of the services, even if the source is unknown.
(8) 'Trademark' means a word, name, symbol or device or a
combination of words, names, symbols or devices that a person
uses to identify and distinguish the person's goods, including a
unique product, from another person's goods and to indicate the
source of the goods, even if the source is unknown.
(9) 'Trade name' means a name that a person uses to identify
the person's business or vocation.
(10)(a) 'Use' means a bona fide use of a mark as described in
section 2 of this 2009 Act in the ordinary course of trade.
(b) 'Use' does not include a use of a mark made merely to
reserve a right in a mark. + }
SECTION 2. { + Section 3 of this 2009 Act is added to and made
a part of ORS chapter 647. + }
SECTION 3. { + (1) For purposes of this chapter, a mark is in
use:
(a) On goods that are sold or transported in commerce in this
state when the mark is placed in any manner on:
(A) Goods, other containers or displays associated with the
goods or tags or labels affixed to the goods; or
(B) Documents associated with the goods or the sale of the
goods, if the nature of the goods makes placing the mark on the
items identified in subparagraph (A) of this paragraph
impractical.
(b) On services that are rendered in this state when the mark
is used or displayed in selling or advertising the services.
(2) A mark is abandoned if either of the following occurs:
(a) Use of the mark has been discontinued with intent not to
resume the use. Intent not to resume use may be inferred from
circumstances. Nonuse for two consecutive years is prima facie
evidence of abandonment.
(b) A course of conduct of the owner, including a failure to
act, causes the mark to lose significance as a mark.
(3) A title, character name that a person uses and other
distinctive features of a radio or television program may be
registered as a service mark notwithstanding that the title, name
or feature or the program may advertise the goods of the
sponsor. + }
SECTION 4. ORS 647.009 is amended to read:
647.009. The Secretary of State shall collect the fees
described in ORS 56.140 for each document delivered for filing
under this chapter and for process served on the Secretary
{ + of State + } under this chapter. The Secretary { + of
State + } may collect the fees described in ORS 56.140 for
copying { - any - } { + a + } public record under this
chapter, certifying the copy or certifying { - to - } other
facts of record under this chapter.
SECTION 5. ORS 647.015 is amended to read:
647.015. (1) Subject to the limitations set forth in this
chapter, { - any person who adopts and uses a mark in this
state may submit for filing to the Office of the Secretary of
State, on a form to be furnished by the Secretary of State, an
application for registration of that mark setting forth, but not
limited to, the following information: - } { + a person who
uses a mark may file an application to register the mark with the
Secretary of State in a manner that complies with the Secretary
of State's requirements. The application must set forth at least
the following information: + }
(a) The name and business address of the person applying for
{ - such - } registration { + . + } { - ; and, - } If { +
the person is + } a corporation, the { + application must list
the + } state of incorporation. { + If the person is a
partnership, the application must list the state in which the
partnership is organized and the names of the general partners.
If the person is a limited liability company, the application
must list the state in which the limited liability company was
formed. + }
(b) The goods or services { + on or + } in connection with
which the mark is used { + , + } { - and - } { + the + } mode
or manner in which the mark is used { + on or + } in connection
with { - such - } { + the + } goods or services and the class
{ - in - } { + into + } which { - such - } { + the + }
goods or services fall.
(c) The date when the mark was first used anywhere and the date
when { - it - } { + the applicant or a predecessor in
interest + } { - was - } first used { + the mark + } in this
state { - by the applicant or the predecessor of the applicant
in business - } .
{ - (d) A statement that the applicant believes the applicant
is the owner of the mark and that no other person has the right
to use such mark in this state either in the identical form
thereof or in such near resemblance thereto as might be
calculated to deceive or to be mistaken therefor. - }
{ - (e) A mailing address to which the Secretary of State may
mail notices. - }
{ - (f) Any additional identifying information that the
Secretary of State by rule may require. - }
{ + (d) A statement that:
(A) The applicant owns the mark;
(B) The mark is in use; and
(C) To the knowledge of the person that is verifying the
application, no other person has registered the mark with the
federal government or in this state or has the right to use the
mark or a mark that so resembles the mark as to be likely to
cause confusion or mistake or to deceive when applied to the
goods or services of the other person. + }
{ - (2) The application for registration shall be: - }
{ - (a) Signed and verified by the applicant or by a member
of the firm or an officer of the corporation or association
applying. - }
{ - (b) Accompanied by a specimen or facsimile of the
mark. - }
{ + (2) As part of the application, the Secretary of State
may require the applicant to:
(a) State whether the applicant or a predecessor in interest
has filed an application to register the mark or portions or a
composite of the mark with the United States Patent and Trademark
Office and, if so, provide:
(A) The filing date and serial number of each application filed
in connection with the mark;
(B) The status of the application; and
(C) The reasons why the mark was finally refused registration
or an application did not otherwise result in a registration, if
the mark was refused registration or the application did not
result in a registration.
(b) Provide a drawing of the mark that complies with the
Secretary of State's requirements.
(3) The applicant, a member of the firm applying or an officer
of the corporation, limited liability company or association
applying to register the mark shall sign and verify the
application by oath, affirmation or declaration under penalty of
perjury.
(4) The applicant as part of the application shall submit one
specimen of the mark as actually used. + }
SECTION 6. ORS 647.024 is amended to read:
647.024. { + (1) + } The Secretary of State { + by rule + }
may establish { - by rule - } classes of goods and services
for convenience in the administration of this chapter. The
classes that the Secretary of State establishes { - shall - }
{ + may + } not { + limit or extend an applicant's or
registrant's rights and shall conform to the classes the United
States Patent and Trademark Office has adopted to the extent
practicable + } { - enlarge or diminish the rights of an
applicant or a registrant - } .
{ + (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. + }
SECTION 7. ORS 647.029 is amended to read:
647.029. { - (1) The Secretary of State shall refuse to
register a mark if the Secretary of State finds that the mark so
resembles either a mark not registered under this chapter or a
trade name that a person other than the applicant previously has
used in this state and not abandoned, as to be likely, when
applied to the goods or when used in connection with the services
of the applicant, to cause confusion or mistake, or to deceive.
This subsection shall not be construed to require the Secretary
of State to conduct any investigation. - }
{ - (2) Any finding that the Secretary of State makes under
subsection (1) of this section shall be in writing, and each
finding shall be supported by evidence of use of the mark or
trade name. A refusal to register a mark under this section is a
final order for purposes of ORS chapter 183. - }
{ - (3) A copy of a registration on the Principal Register of
the United States Patent and Trademark Office dated prior to the
date that the applicant claims as a date of first use under ORS
647.015 is sufficient evidence to support a finding under this
section. A document submitted to the Office of the Secretary of
State under ORS chapter 60, 65, 70 or 648 is not evidence that a
corporate name, limited partnership name or assumed business name
stated in the document has been used. - }
{ + (1) The Secretary of State, at the Secretary of State's
sole discretion, may examine an application filed under ORS
647.015 for conformity with the provisions of this chapter. This
section does not require the Secretary of State to conduct an
examination or investigation in connection with an application
for registration.
(2) An applicant shall provide additional pertinent information
the Secretary of State requests, including a description of a
design that is used as a mark. The applicant or, with the
applicant's authorization, the Secretary of State may amend the
application to conform with the Secretary of State's requirements
or as the applicant deems advisable to respond to a rejection or
objection. The Secretary of State may require the applicant to
submit a new application.
(3) The Secretary of State may require the applicant to
disclaim an unregisterable component of a mark that is otherwise
registerable. The applicant may voluntarily disclaim a component
of a mark that the applicant has applied to register. An
applicant's disclaimer does not prejudice or affect the
applicant's or a registrant's rights that exist or arise in the
matter the applicant disclaimed or the applicant's or a
registrant's rights of registration on another application if the
matter the applicant disclaimed is or has become distinctive of
the applicant's or registrant's goods or services.
(4) If the Secretary of State finds that an applicant is not
entitled to register a mark, the Secretary of State shall notify
the applicant and provide the Secretary of State's reasons for
the finding. The Secretary of State shall provide the applicant
with a reasonable time in which to reply or amend the application
and shall examine the amended application in accordance with the
provisions of this section. The applicant may continue to amend
the application until:
(a) The Secretary of State in a final order refuses to register
the mark; or
(b) The applicant abandons the application by failing to reply
to the Secretary of State's notice or amend the application
within the time the Secretary of State specifies.
(5) If the Secretary of State in a final order refuses to
register a mark, the applicant may seek a writ of mandamus under
ORS 34.105 to 34.240 to compel the Secretary of State to register
the mark. The court may grant the writ if the applicant proves
that the statements in the application are true and that the mark
is otherwise entitled to registration. The court may not assess
costs or award damages against the Secretary of State in an
action for a writ of mandamus brought under this section.
(6) If the Secretary of State is concurrently processing
applications that seek to register the same mark or a mark that
is likely to cause confusion or mistake or to deceive when used
on or in connection with goods or services identified in the
applications, the Secretary of State shall grant priority to the
applications in the order in which they were filed. If the
Secretary of State grants a registration for a mark on the basis
of an application filed prior to other applications, the
Secretary of State shall reject the other applications. A
rejected applicant may bring an action to cancel the registration
the Secretary of State granted on the basis that the rejected
applicant had prior or superior rights to the mark. + }
SECTION 8. ORS 647.035 is amended to read:
647.035. { - (1) The Secretary of State may not register as a
mark any word, phrase, symbol, device or combination thereof if
it: - }
{ - (a) Consists of or comprises immoral, deceptive or
scandalous matter; - }
{ - (b) Consists of or comprises matter that may disparage or
falsely suggest a connection with persons living or dead,
institutions, beliefs or national symbols, or bring them into
contempt or disrepute; - }
{ - (c) Consists of or comprises 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; - }
{ - (d) Consists of or comprises the name, signature or
portrait of any living individual except with the individual's
written consent; - }
{ - (e) Consists of or comprises a mark that so resembles a
mark registered in this state as to be likely, when applied to
the goods or services of the applicant, to cause confusion or
mistake or to deceive; or - }
{ - (f) Consists of a word, phrase, symbol, device or
combination thereof that: - }
{ - (A) When applied to the goods or services of the
applicant is merely descriptive or deceptively misdescriptive of
them; - }
{ - (B) When applied to the goods or services of the
applicant is primarily geographically descriptive or deceptively
misdescriptive of them; or - }
{ - (C) Is primarily merely a surname. - }
{ - (2) Nothing in subsection (1)(f) of this section shall
prevent the registration of a mark used in this state by the
applicant that has become distinctive of the applicant's goods or
services. The Secretary of State may accept as evidence that the
mark has become distinctive, as applied to the applicant's goods
or services, proof of continuous use thereof as a mark by the
applicant in this state or elsewhere for the five years next
preceding the date of the filing of the application for
registration. - }
{ + (1) A mark that an applicant submits for registration may
not be registered if the mark consists of or comprises:
(a) Matter that is immoral, deceptive or scandalous;
(b) Matter that may disparage, bring into contempt or disrepute
or falsely suggest a connection with a person, living or dead, an
institution, a belief or a national symbol;
(c) The flag, coat of arms or other insignia of the United
States, a state or municipality or a foreign nation or a
simulation of the flag, coat of arms or insignia;
(d) The name or signature of or a portrait that identifies a
particular living individual, unless the individual has given
written consent; or
(e) A mark that so resembles a mark registered in this state,
or a mark or trade name previously used and not abandoned by
another person, as to be likely to cause confusion or mistake or
to deceive when used on or in connection with the applicant's
goods or services.
(2)(a) A mark may not be registered if the mark is:
(A) Merely descriptive or deceptively misdescriptive of the
applicant's goods or services;
(B) Primarily geographically descriptive or deceptively
misdescriptive of the applicant's goods or services; or
(C) Primarily merely a surname.
(b) The provisions of paragraph (a) of this subsection do not
prevent the Secretary of State from registering a mark used by
the applicant that has become distinctive of the applicant's
goods or services. The Secretary of State may accept as evidence
that the mark has become distinctive, when used on or in
connection with the applicant's goods or services, proof that the
applicant has used the mark continuously in this state for five
years before the date on which the applicant made the claim that
the mark has become distinctive of the applicant's goods or
services. + }
SECTION 9. ORS 647.045 is amended to read:
647.045. (1) Upon compliance by { - the - } { + an + }
applicant with the requirements of this chapter, the Secretary of
State { - : - } { + shall issue and deliver a certificate of
registration to the applicant. The Secretary of State may issue
as the certificate of registration a copy of the application
marked with the word ' filed. '
(2) The certificate of registration must show:
(a) The registrant's name and business address. If the
registrant is a corporation, the certificate must show the state
of incorporation. If the registrant is a partnership, the
certificate must show the state in which the partnership is
organized and the names of the general partners. If the
registrant is a limited liability company, the certificate must
show the state in which the limited liability company was formed.
(b) The date the applicant claimed as the first use of the mark
anywhere and the date claimed as the first use of the mark in
this state.
(c) The class and description of the goods or services on or in
connection with which the mark is used.
(d) A reproduction of the mark.
(e) The registration date and the term of registration. + }
{ - (a) Shall file the original application; and - }
{ - (b) Shall issue and return to the person who submitted
the application a certificate of registration. - }
{ - (2) The Secretary of State may designate the copy of the
application marked 'filed' to be the certificate of
registration. - }
(3) { - Any - } { + A + } certificate of registration
issued by the Secretary of State under this chapter, or a copy
{ - thereof - } { + of the certificate + }duly certified by
the Secretary of State, { - shall be prima facie evidence in
any action or judicial proceeding in any court of this state
of: - } { + is competent and sufficient proof of the
registration of the mark in an action or proceeding brought in a
court in this state. + }
{ - (a) The validity of the registration of the mark. - }
{ - (b) Registrant's ownership of the mark. - }
{ - (c) Registrant's exclusive right to use the mark in trade
within the state in connection with the goods or services
specified in the application. - }
SECTION 10. ORS 647.055 is amended to read:
647.055. (1) Registration of a mark under this chapter
{ - shall be - } { + is + } effective for a term of five years
from the date of registration and may be renewed for successive
five-year terms.
{ - The registration shall be renewed if the mark is still in
use and the registrant submits a signed and verified application
on a form to be furnished by the Secretary of State within 90
days prior to the expiration of the term of registration. - }
{ + The Secretary of State shall renew the registration if the
registrant:
(a) Submits an application for renewal, verified as provided in
ORS 647.015 (3), within 180 days before the term of registration
expires;
(b) Includes with the application a statement, verified as
provided in ORS 647.015 (3), that the mark has been in use and is
still in use; and
(c) Includes with the application a specimen showing actual use
of the mark. + }
{ - (2) The Secretary of State shall notify each registrant
of a mark under this chapter of the necessity of renewal at least
90 days prior to the expiration of the term of registration by
writing to the address shown for the registrant in the current
records of the Office of the Secretary of State. - }
{ - (3) Each application for a renewal under this section
shall include: - }
{ - (a) A statement that the mark is still in use in this
state; - }
{ - (b) A mailing address to which the Secretary of State may
mail notices; and - }
{ - (c) Additional information that the Secretary of State by
rule may require. - }
{ - (4) The Secretary of State shall keep for public
examination a record of all marks registered or renewed under
this chapter. - }
{ + (2) A registration that is effective on the effective
date of this 2009 Act shall remain in effect for the remainder of
the term of registration. The registration may be renewed as
provided in subsection (1) of this section.
(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. + }
SECTION 11. ORS 647.065 is amended to read:
647.065. { + (1) + } { - Any - } { + A + } mark and
{ - its - } { + the + } registration { + for the mark + }
under this chapter { - shall be - } { + are + } assignable
with the goodwill of the business in which the mark is used, or
with { - that - } { + the + } part of the goodwill of the
business { + that is + } connected with the use of and
symbolized by the mark. { - Assignment shall be by instruments
in writing and signed and may be submitted for filing to the
Office of the Secretary of State. The Secretary of State, upon
filing the assignment, shall notify the assignee of the filing of
the assignment. An assignment of any registration under this
chapter shall be void as against any subsequent purchaser for
valuable consideration without notice unless it is submitted for
filing to the Office of the Secretary of State within three
months after the date thereof or prior to such subsequent
purchase. - }
{ + (2) To assign the registration, a registrant must sign a
written instrument. The registrant may submit the instrument to
the Secretary of State for filing. After filing the instrument,
the Secretary of State may issue to the assignee a certificate of
registration that is effective for the remainder of the term of
registration.
(3) An assignment of registration under this section is void as
against a subsequent purchaser that purchases the registration
for valuable consideration and without notice of the assignment
unless the assignment is submitted to the Secretary of State of
State for filing within 90 days after the assignment or before
the subsequent purchase, whichever is later.
(4) A registrant or applicant for registration may submit for
filing with the Secretary of State a change of name for the
registration or the application. The Secretary of State may issue
a certificate of registration for an assigned application in the
assignee's name or may issue a certificate of registration in the
assignee's name for the remainder of the term of registration.
(5) The Secretary of State, at the Secretary of State's sole
discretion, may receive for filing other signed written
instruments related to a mark that is registered or an
application that is pending, such as licenses, security interests
or mortgages.
(6) Acknowledgement is prima facie evidence of the execution of
an assignment or other instrument. If the Secretary of State
accepts an instrument for filing, the Secretary of State's record
is prima facie evidence of the execution.
(7) The Secretary of State may accept for filing a photocopy of
an instrument if a party to the instrument or a successor to the
party certifies that the photocopy is a true and correct copy of
the original instrument.
(8) The Secretary of State shall keep for public examination a
record of all marks registered or renewed under this chapter and
all documents submitted for filing under this section. + }
SECTION 12. ORS 647.075 is amended to read:
647.075. (1) The Secretary of State shall cancel a registration
{ - of - } { + for + } a mark { + or part of a registration
if + } { - when - } :
(a) The Secretary of State receives a voluntary request from
the registrant or the assignee of record to cancel the
registration.
(b) The registration has not been renewed in accordance with
the provisions of ORS 647.055.
(c) A court of competent jurisdiction either orders
cancellation of the registration or { - finds that - } { +
makes any of the following findings + }:
(A) The registered mark has been abandoned.
(B) The registrant is not the owner of the mark.
(C) The registration was granted improperly.
(D) The registration was obtained fraudulently.
{ + (E) The registered mark is the generic name for the goods
or services or a portion of the goods or services for which the
mark has been registered.
(F) The registered mark is likely to cause confusion or mistake
or to deceive because of the registered mark's similarity to a
mark registered with the United States Patent and Trademark
Office and not abandoned before the application for the
registered mark was filed under ORS 647.015.
(2) If the registrant proves that the registrant has a
concurrent registration in the United States Patent and Trademark
Office that covers an area that includes this state, the
Secretary of State may not cancel the registration for the area
covered by the concurrent registration notwithstanding a court's
finding under subsection (1)(c)(F) of this section. + }
{ - (2) The Secretary of State may cancel a registration of a
mark when, after providing the registrant with an opportunity for
a hearing, the Secretary of State makes a written finding
that: - }
{ - (a) The registered mark has been abandoned. - }
{ - (b) The registrant is not the owner of the mark. - }
{ - (c) The registration was obtained fraudulently. - }
{ - (d) The Secretary of State filed the registration in
error. - }
{ - (3) The Secretary of State's cancellation of a
registration under this section is a final order within the
meaning of ORS 183.480 to 183.497. - }
SECTION 13. ORS 647.085 is amended to read:
647.085. { - (1) No person shall procure or maintain on
behalf of the person or any other person the filing or
registration of any mark in the Office of the Secretary of State
under the provisions of this chapter, by knowingly making any
false or fraudulent representation or declaration, orally or in
writing, or by any other fraudulent means. - }
{ + (1) A person may not, on the person's behalf or on behalf
of another person, apply for, obtain or maintain a filing or
registration for a mark under this chapter by knowingly making a
false or fraudulent representation or declaration, orally or in
writing, or by other fraudulent means. + }
(2) A person { - who - } { + that + } violates subsection
(1) of this section is liable to pay all damages sustained in
consequence of
{ - such - } { + the + } filing or registration { - , - }
{ + . The party injured by the filing or registration may bring
an action for damages in a court of competent jurisdiction. + }
{ - to be recovered in any court of competent jurisdiction by or
on behalf of the party injured thereby. - }
SECTION 14. ORS 647.095 is amended to read:
647.095. { - (1) Subject to the provisions of ORS 647.115 and
subsection (2) of this section, a person is subject to a civil
action by the owner of a registered mark for any or all of the
remedies provided in ORS 647.105 and 647.111 if such person: - }
{ - (a) Uses, without the consent of the registrant, any
reproduction, counterfeit, copy or colorable imitation of a mark
registered under this chapter in connection with the sale,
offering for sale or advertising of any goods or services on or
in connection with which such use is likely to cause confusion or
mistake or to deceive as to the source of origin of such goods or
services; or - }
{ - (b) Reproduces, counterfeits, copies or colorably
imitates any such mark and applies such reproduction,
counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in conjunction with the sale or other
distribution in this state of such goods or services. - }
{ - (2) The registrant is not entitled to recover profits or
damages under subsection (1)(b) of this section unless the acts
have been committed with knowledge that such mark is intended to
be used to cause confusion or mistake or to deceive. - }
{ + (1) A person may not:
(a) Use without the registrant's consent and in connection with
a sale, distribution, offer for sale or advertisement of goods or
services a reproduction, counterfeit, copy or colorable imitation
of a mark registered under this chapter if the use is likely to
cause confusion or mistake or to deceive as to the origin of the
goods or services; or
(b) Apply a mark described in paragraph (a) of this subsection
to a label, sign, print, package, wrapper, receptacle or
advertisement intended for use in connection with the sale or
distribution of goods or services within this state.
(2) A person that acts as described in subsection (1) of this
section is liable for the remedies provided in ORS 647.105 in a
civil action brought by the registrant, except that the
registrant may not recover profits or damages from the person
unless the person acted as described in subsection (1)(b) of this
section with the intent to cause confusion or mistake or to
deceive. + }
SECTION 15. ORS 647.105 is amended to read:
647.105. (1) { - Any - } { + An + } owner of a mark
registered under this chapter may proceed in a civil action
to { + seek an injunction against + } { - obtain any remedy or
combination of remedies provided in this section against any
person who engages in - } the manufacture, use, display or sale
of { - any counterfeits or imitations - } { + a counterfeit
or imitation + } of the mark. { - Any - } { + A + } court of
competent jurisdiction may { + :
(a) + } Grant injunctions to restrain { - such - } { +
the + } manufacture, use, display or sale as { - may be by - }
the court { - deemed - } { + deems + } just and
reasonable { + ;
(b) + } { - and shall - } { + + }Require the defendant to
pay to the owner
{ - the greater of $10,000 or the sum of: - } { + all profits
the defendant derived and all damages the owner suffered from the
manufacture, use, display or sale; and
(c) Order counterfeits or imitations in the defendant's
possession or under the defendant's control to be delivered to an
officer of the court or the owner to be destroyed. + }
{ - (a) An amount not to exceed three times the profits
derived by the defendant from the wrongful manufacture, use,
display or sale; and - }
{ - (b) An amount not to exceed three times all damages
suffered by the owner because of the wrongful manufacture, use,
display or sale. - }
{ - (2) If the court under this section determines that a
mark is counterfeit: - }
{ - (a) The court may order the destruction of all such
counterfeit marks, all means of making the marks and all goods,
articles or other matter bearing the marks that are in the
possession or control of the court or any party to the action;
or - }
{ - (b) Upon consent of the owner of the mark, the court may
dispose of the materials after the counterfeit mark is
obliterated, if obliteration does not destroy the materials
bearing the mark, by ordering their transfer to any governmental
entity, the owner of the mark, a charitable organization or any
appropriate private person other than the person from whom the
materials were obtained. - }
{ - (3) The court under this section also may order seizure
of the counterfeit goods in the manner provided in ORS
647.111. - }
{ + (2) If the court finds that the defendant acted in bad
faith, with knowledge or otherwise according to the circumstances
of the case, the court in the court's discretion may enter a
judgment in an amount not to exceed three times the sum of the
defendant's profits and the owner's damages and reasonable
attorney fees. 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. + }
SECTION 16. ORS 647.107 is amended to read:
647.107. { - Likelihood of injury to business reputation or
of dilution of the distinctive quality of a mark registered under
ORS 647.015, or a mark valid at common law, or a trade name valid
at common law, shall be a ground for injunctive relief
notwithstanding the absence of competition between the parties or
the absence of confusion as to the source of goods or
services. - }
{ + (1) Subject to the principles of equity, the owner of a
mark that is famous and distinctive in this state, inherently or
through acquired distinctiveness, is entitled to an injunction
against another person's commercial use of the mark if:
(a) The other person's use began after the mark became famous;
and
(b) The use is likely to cause dilution of the famous mark.
(2) A mark is famous if the general consuming public of this
state or of a geographic area within this state widely recognizes
the mark as a designation of the source of the mark owner's goods
or services. In determining whether a mark is famous, a court may
consider factors such as:
(a) The duration, extent and geographic reach of advertising
and publicity of the mark in this state by the owner or by other
persons;
(b) The amount, volume and geographic extent of sales of goods
or services offered under the mark in this state;
(c) The extent to which the mark is actually recognized in this
state; and
(d) Whether the mark is registered in this state, appears on
the principal register created under the Trademark Act of 1946,
60 Stat. 427, 15 U.S.C. 1051 et seq., or is otherwise registered
under federal law.
(3) In an action brought under this section, the owner of a
famous mark is entitled to injunctive relief throughout the
geographic area in which the court finds that the mark became
famous before the other person began the other person's use of
the mark. The court may not order injunctive relief outside this
state.
(4) If the court finds that the other person willfully intended
to cause dilution of the famous mark, the owner is entitled to
the remedies provided in this chapter, subject to the court's
discretion and the principles of equity.
(5) An owner of a famous mark may not bring an action for
another person's use if the use is 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. + }
SECTION 17. { + Section 18 of this 2009 Act is added to and
made a part of ORS chapter 647. + }
SECTION 18. { + An action to cancel a mark registered under
this chapter or an action in mandamus to compel the Secretary of
State to register a mark must be brought in a circuit court in
this state. An action in mandamus must be based solely on the
record before the Secretary of State. In an action to cancel a
mark, a person may not name the Secretary of State as a party but
the court shall notify the Secretary of State and permit the
Secretary of State to intervene in the proceeding. + }
SECTION 19. ORS 647.115 is amended to read:
647.115. (1) { - Nothing in - } { + The provisions of + }
this chapter
{ - shall - } { + do not + } adversely affect the rights or
the enforcement of rights in marks or trade names acquired in
good faith at any time at common law.
(2) The enumeration of { - any - } { + a + } right or
remedy in this chapter does not affect the right of a registrant
to prosecute under { - any - } { + a + } penal law of this
state.
{ + (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. + }
SECTION 20. { + Sections 3 and 18 of this 2009 Act and the
amendments to ORS 647.005, 647.009, 647.015, 647.024, 647.029,
647.035, 647.045, 647.055, 647.065, 647.075, 647.085, 647.095,
647.105, 647.107 and 647.115 by sections 1, 4, 5, 6, 7, 8, 9, 10,
11, 12, 13, 14, 15, 16 and 19 of this 2009 Act apply only to
suits, proceedings or appeals commenced on or after the operative
date specified in section 21 of this 2009 Act. + }
SECTION 21. { + (1) Sections 3 and 18 of this 2009 Act and the
amendments to ORS 647.005, 647.009, 647.015, 647.024, 647.029,
647.035, 647.045, 647.055, 647.065, 647.075, 647.085, 647.095,
647.105, 647.107 and 647.115 by sections 1, 4, 5, 6, 7, 8, 9, 10,
11, 12, 13, 14, 15, 16 and 19 of this 2009 Act become operative
January 1, 2010.
(2) The Secretary of State may take any action before January
1, 2010, that is necessary to enable the Secretary of State to
exercise, on and after January 1, 2010, all of the duties,
functions and powers conferred on the Secretary of State by
sections 3 and 18 of this 2009 Act and the amendments to ORS
647.005, 647.009, 647.015, 647.024, 647.029, 647.035, 647.045,
647.055, 647.065, 647.075, 647.085, 647.095, 647.105, 647.107 and
647.115 by sections 1, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15,
16 and 19 of this 2009 Act. + }
SECTION 22. { + This 2009 Act being necessary for the
immediate preservation of the public peace, health and safety, an
emergency is declared to exist, and this 2009 Act takes effect on
its passage. + }
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