2017 ORS 647.029¹
Examination of application by Secretary of State
  • amendment of application
  • refusal to register mark
  • priority of concurrent applications

(1) The Secretary of State, at the Secretary of State’s sole discretion, may examine an application filed under ORS 647.015 (Application for registration) 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 (Definitions for ORS 34.105 to 34.240) to 34.240 (Appeal) 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. [1985 c.728 §85b; 1987 c.94 §104; 2009 c.459 §7]

1 Legislative Counsel Committee, CHAPTER 647—Trademarks and Service Marks; Music Royalties, https://­www.­oregonlegislature.­gov/­bills_laws/­ors/­ors647.­html (2017) (last ac­cessed Mar. 30, 2018).
 
2 OregonLaws.org contains the con­tents of Volume 21 of the ORS, inserted along­side the per­tin­ent statutes. See the preface to the ORS An­no­ta­tions for more information.
 
3 OregonLaws.org assembles these lists by analyzing references between Sections. Each listed item refers back to the current Section in its own text. The result reveals relationships in the code that may not have otherwise been apparent.