2017 ORS 647.107¹
Grounds for injunctive relief
  • famous marks

(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. [1971 c.122 §2; 2009 c.459 §16]

Notes of Decisions

In order for trade name or trademark to be diluted so as to require granting of injunctive relief under this sec­tion, trademark or trade name must be distinctive. Airwick Ind. v. Alpkem Corp., 384 F Supp 1027 (1974)

Where defendant used word “Wedgwood” in retire­ment apart­ment business located partially in marketing area of plaintiffs’ residential real estate develop­ment and marketing business, and trial court found word “Wedgwood” to be synonymous with plaintiffs’ activities in real estate, plaintiffs were entitled to injunctive relief under this sec­tion. Wedgwood Homes v. Lund, 58 Or App 240, 648 P2d 393 (1982), aff’d 294 Or 493, 659 P2d 377 (1983)

“Dilu­tion” may refer to injury to value of mark caused by actual or potential customer confusion, or to injury caused by use which detracts from the reputa­tion associated with the mark or to any diminu­tion in uniqueness and individuality of the mark caused by an­oth­er’s use of similar mark. Wedgwood Homes v. Lund, 294 Or 493, 659 P2d 377 (1983)

Where ordinary purchaser was not likely to confuse antifreeze of plaintiff and defendants, all of same yellow color and packaged in F-style jug, there was no likelihood of injury to plaintiff’s business reputa­tion and no ground for injunctive relief. Union Carbide Corp. v. Fred Meyer, Inc., 619 F Supp 1028 (1985)

Where trade name is not inherently distinctive, plaintiff must prove that name has acquired sec­ondary meaning to extent that identifica­tion with plaintiff is primary significance in minds of consumers. Ernst Hardware Co. v. Ernst Home Center, Inc., 134 Or App 560, 895 P2d 1363 (1995), Sup Ct review denied

Law Review Cita­tions

14 WLJ 245 (1978); 62 OLR 157 (1983)

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 Legislative Counsel Committee, Annotations to the Oregon Revised Stat­utes, Cumulative Supplement - 2017, Chapter 647, https://­www.­oregonlegislature.­gov/­bills_laws/­ors/­ano647.­html (2017) (last ac­cessed Mar. 30, 2018).
 
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.