ORS Chapter 647
Chapter 647 — Trademarksand Service Marks; Music Royalties
2009 EDITION
TRADEMARKSAND SERVICE MARKS; MUSIC ROYALTIES
TRADEREGULATIONS AND PRACTICES
TRADEMARKSAND SERVICE MARKS
(Generally)
647.005 Definitions
(Registration)
647.009 Filing,service, copying and certification fees
647.015 Applicationfor registration
647.017 Whenmark is in use; abandonment of mark
647.024 Rulesfor classes of goods and services
647.029 Examinationof application by Secretary of State; amendment of application; refusal toregister mark; priority of concurrent applications
647.035 Marksineligible for registration
647.045 Certificateof registration; contents; evidentiary effect
647.055 Periodof registration; renewal; notice
647.065 Assignment;filing with Secretary of State; legal and evidentiary effect; public record ofregistrations
647.075 Cancellationof registrations
647.077 Actionto cancel mark or compel registration; Secretary of State not a party
(Remedies)
647.085 Fraudulentregistration prohibited; liability; action for damages
647.095 Prohibitedacts; liability
647.105 Remediesfor infringement
647.107 Groundsfor injunctive relief; famous marks
647.111 Seizureof counterfeit goods in infringement proceeding; liability for wrongful seizure;undertaking
647.115 Effectof chapter on marks or trade names acquired at common law; effect of civilremedies on criminal statutes; intent and construction of chapter
647.135 Trademarkcounterfeiting
647.140 Trademarkcounterfeiting in third degree; penalty
647.145 Trademarkcounterfeiting in second degree; penalty
647.150 Trademarkcounterfeiting in first degree; penalty
647.155 Seizure,forfeiture and disposal
ROYALTIESFOR NONDRAMATIC MUSICAL WORKS
647.700 Definitionsfor ORS 647.700 to 647.730
647.705 Requirementsfor performing rights societies
647.710 Requirementsfor contracts for payment of royalties
647.715 Prohibitedconduct
647.720 Actionfor damages; injunction
647.725 Relationshipto other laws
647.730 Applicabilityof ORS 647.700 to 647.730
TRADEMARKSAND SERVICE MARKS
(Generally)
647.005Definitions.As used in this chapter:
(1)“Applicant” means a person that files an application to register a mark underthis chapter, and the person’s legal representatives, successors or assigns.
(2)“Dilution” means an association that arises from the similarity between a markor trade name and a famous mark, regardless of the presence or absence ofcompetition between the owner of the famous mark and another party, actual orlikely confusion, mistake, deception or actual economic injury, if theassociation:
(a)Impairs the distinctiveness of the famous mark, an association commonly knownas dilution by blurring; or
(b)Harms the reputation of the famous mark, an association commonly known asdilution by tarnishment.
(3)“Mark” means a trademark or service mark entitled to registration under thischapter whether registered or not.
(4)“Person” means an individual, firm, partnership, corporation, association,limited liability company, union or other organization capable of suing orbeing sued in a court.
(5)“Registrant” means a person to whom the registration of a mark is issued underthis 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 finishedproduct, the regular selling price of the finished product in which thecomponent 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 counterfeitmark, 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 theperson’s services, including a unique service, from another person’s servicesand 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 theperson’s goods, including a unique product, from another person’s goods and toindicate 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 businessor vocation.
(10)(a)“Use” means a bona fide use of a mark as described in ORS 647.017 in theordinary course of trade.
(b)“Use” does not include a use of a mark made merely to reserve a right in amark. [1961 c.497 §1; 1965 c.511 §1; 1981 c.633 §71; 1989 c.931 §1; 1999 c.722 §7;2009 c.459 §1]
(Registration)
647.009Filing, service, copying and certification fees. The Secretaryof State shall collect the fees described in ORS 56.140 for each documentdelivered for filing under this chapter and for process served on the Secretaryof State under this chapter. The Secretary of State may collect the feesdescribed in ORS 56.140 for copying a public record under this chapter, certifyingthe copy or certifying other facts of record under this chapter. [1991 c.132 §23;1999 c.652 §17; 2009 c.459 §4]
647.010 [Repealed by1961 c.497 §16]
647.015Application for registration. (1) Subject to the limitations setforth in this chapter, a person who uses a mark may file an application toregister the mark with the Secretary of State in a manner that complies withthe Secretary of State’s requirements. The application must set forth at leastthe following information:
(a)The name and business address of the person applying for registration. If theperson is a corporation, the application must list the state of incorporation.If the person is a partnership, the application must list the state in whichthe partnership is organized and the names of the general partners. If theperson is a limited liability company, the application must list the state inwhich the limited liability company was formed.
(b)The goods or services on or in connection with which the mark is used, the modeor manner in which the mark is used on or in connection with the goods orservices and the class into which the goods or services fall.
(c)The date when the mark was first used anywhere and the date when the applicantor a predecessor in interest first used the mark in this state.
(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 otherperson has registered the mark with the federal government or in this state orhas the right to use the mark or a mark that so resembles the mark as to belikely to cause confusion or mistake or to deceive when applied to the goods orservices of the other person.
(2)As part of the application, the Secretary of State may require the applicantto:
(a)State whether the applicant or a predecessor in interest has filed anapplication to register the mark or portions or a composite of the mark withthe United States Patent and Trademark Office and, if so, provide:
(A)The filing date and serial number of each application filed in connection withthe mark;
(B)The status of the application; and
(C)The reasons why the mark was finally refused registration or an application didnot otherwise result in a registration, if the mark was refused registration orthe application did not result in a registration.
(b)Provide a drawing of the mark that complies with the Secretary of State’srequirements.
(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 shallsign and verify the application by oath, affirmation or declaration underpenalty of perjury.
(4)The applicant as part of the application shall submit one specimen of the mark asactually used. [1961 c.497 §3; 1965 c.511 §2; 1971 c.318 §2; 1985 c.728 §84;1991 c.132 §20; 2009 c.459 §5]
647.017When mark is in use; abandonment of mark. (1) For purposes of thischapter, a mark is in use:
(a)On goods that are sold or transported in commerce in this state when the markis placed in any manner on:
(A)Goods, other containers or displays associated with the goods or tags or labelsaffixed to the goods; or
(B)Documents associated with the goods or the sale of the goods, if the nature ofthe goods makes placing the mark on the items identified in subparagraph (A) ofthis paragraph impractical.
(b)On services that are rendered in this state when the mark is used or displayedin 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. Intentnot to resume use may be inferred from circumstances. Nonuse for twoconsecutive years is prima facie evidence of abandonment.
(b)A course of conduct of the owner, including a failure to act, causes the markto lose significance as a mark.
(3)A title, character name that a person uses and other distinctive features of aradio or television program may be registered as a service mark notwithstandingthat the title, name or feature or the program may advertise the goods of thesponsor. [2009 c.459 §3]
647.020 [Repealed by1961 c.497 §16]
647.024Rules for classes of goods and services. (1) The Secretary of State by rule mayestablish classes of goods and services for convenience in the administrationof this chapter. The classes that the Secretary of State establishes may notlimit or extend an applicant’s or registrant’s rights and shall conform to theclasses the United States Patent and Trademark Office has adopted to the extentpracticable.
(2)A single application to register a mark may include any or all goods orservices 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 maycollect a fee under ORS 56.140 for each class. [1985 c.728 §84b (enacted inlieu of 647.025); 2009 c.459 §6]
647.025 [1961 c.497 §9;1965 c.511 §3; repealed by 1985 c.728 §§84a,110 (647.024 enacted in lieu of 647.025)]
647.029Examination of application by Secretary of State; amendment of application;refusal to register mark; priority of concurrent applications. (1) TheSecretary of State, at the Secretary of State’s sole discretion, may examine anapplication filed under ORS 647.015 for conformity with the provisions of thischapter. This section does not require the Secretary of State to conduct anexamination or investigation in connection with an application forregistration.
(2)An applicant shall provide additional pertinent information the Secretary ofState requests, including a description of a design that is used as a mark. Theapplicant or, with the applicant’s authorization, the Secretary of State mayamend the application to conform with the Secretary of State’s requirements oras the applicant deems advisable to respond to a rejection or objection. TheSecretary of State may require the applicant to submit a new application.
(3)The Secretary of State may require the applicant to disclaim an unregisterablecomponent of a mark that is otherwise registerable. The applicant mayvoluntarily disclaim a component of a mark that the applicant has applied toregister. An applicant’s disclaimer does not prejudice or affect the applicant’sor a registrant’s rights that exist or arise in the matter the applicantdisclaimed or the applicant’s or a registrant’s rights of registration onanother application if the matter the applicant disclaimed is or has becomedistinctive 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 amark, the Secretary of State shall notify the applicant and provide theSecretary of State’s reasons for the finding. The Secretary of State shallprovide the applicant with a reasonable time in which to reply or amend theapplication and shall examine the amended application in accordance with theprovisions of this section. The applicant may continue to amend the applicationuntil:
(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 ofState’s notice or amend the application within the time the Secretary of Statespecifies.
(5)If the Secretary of State in a final order refuses to register a mark, theapplicant may seek a writ of mandamus under ORS 34.105 to 34.240 to compel theSecretary of State to register the mark. The court may grant the writ if theapplicant proves that the statements in the application are true and that themark is otherwise entitled to registration. The court may not assess costs oraward damages against the Secretary of State in an action for a writ ofmandamus brought under this section.
(6)If the Secretary of State is concurrently processing applications that seek toregister the same mark or a mark that is likely to cause confusion or mistakeor to deceive when used on or in connection with goods or services identifiedin the applications, the Secretary of State shall grant priority to theapplications in the order in which they were filed. If the Secretary of Stategrants a registration for a mark on the basis of an application filed prior toother applications, the Secretary of State shall reject the other applications.A rejected applicant may bring an action to cancel the registration theSecretary of State granted on the basis that the rejected applicant had prioror superior rights to the mark. [1985 c.728 §85b; 1987 c.94 §104; 2009 c.459 §7]
647.030 [Repealed by1961 c.497 §16]
647.035Marks ineligible for registration. (1) A mark that an applicant submitsfor 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 suggesta connection with a person, living or dead, an institution, a belief or anational symbol;
(c)The flag, coat of arms or other insignia of the United States, a state ormunicipality or a foreign nation or a simulation of the flag, coat of arms orinsignia;
(d)The name or signature of or a portrait that identifies a particular livingindividual, unless the individual has given written consent; or
(e)A mark that so resembles a mark registered in this state, or a mark or tradename previously used and not abandoned by another person, as to be likely tocause confusion or mistake or to deceive when used on or in connection with theapplicant’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 orservices;
(B)Primarily geographically descriptive or deceptively misdescriptive of theapplicant’s goods or services; or
(C)Primarily merely a surname.
(b)The provisions of paragraph (a) of this subsection do not prevent the Secretaryof State from registering a mark used by the applicant that has becomedistinctive of the applicant’s goods or services. The Secretary of State mayaccept as evidence that the mark has become distinctive, when used on or inconnection with the applicant’s goods or services, proof that the applicant hasused the mark continuously in this state for five years before the date onwhich the applicant made the claim that the mark has become distinctive of theapplicant’s goods or services. [1961 c.497 §2; 1965 c.511 §4; 1971 c.318 §3;1985 c.728 §85; 2005 c.22 §450; 2009 c.459 §8]
647.040 [Amended by1959 c.261 §1; repealed by 1961 c.497 §16]
647.045Certificate of registration; contents; evidentiary effect. (1) Uponcompliance by an applicant with the requirements of this chapter, the Secretaryof State shall issue and deliver a certificate of registration to theapplicant. The Secretary of State may issue as the certificate of registrationa 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 apartnership, the certificate must show the state in which the partnership isorganized and the names of the general partners. If the registrant is a limitedliability company, the certificate must show the state in which the limitedliability company was formed.
(b)The date the applicant claimed as the first use of the mark anywhere and thedate 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 withwhich the mark is used.
(d)A reproduction of the mark.
(e)The registration date and the term of registration.
(3)A certificate of registration issued by the Secretary of State under thischapter, or a copy of the certificate duly certified by the Secretary of State,is competent and sufficient proof of the registration of the mark in an actionor proceeding brought in a court in this state. [1961 c.497 §4; 1965 c.511 §5;1971 c.318 §4; 1985 c.728 §86; 2009 c.459 §9]
647.050 [Repealed by1961 c.497 §16]
647.055Period of registration; renewal; notice. (1) Registration of a mark under thischapter is effective for a term of five years from the date of registration andmay be renewed for successive five-year terms. The Secretary of State shallrenew 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)A registration that is effective on June 23, 2009, shall remain in effect forthe rem