§ 1060. — Assignment.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1060]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER I--THE PRINCIPAL REGISTER
Sec. 1060. Assignment
(a)(1) A registered mark or a mark for which an application to
register has been filed shall be assignable with the good will of the
business in which the mark is used, or with that part of the good will
of the business connected with the use of and symbolized by the mark.
Notwithstanding the preceding sentence, no application to register a
mark under section 1051(b) of this title shall be assignable prior to
the filing of an amendment under section 1051(c) of this title to bring
the application into conformity with section 1051(a) of this title or
the filing of the verified statement of use under section 1051(d) of
this title, except for an assignment to a successor to the business of
the applicant, or portion thereof, to which the mark pertains, if that
business is ongoing and existing.
(2) In any assignment authorized by this section, it shall not be
necessary to include the good will of the business connected with the
use of and symbolized by any other mark used in the business or by the
name or style under which the business is conducted.
(3) Assignments shall be by instruments in writing duly executed.
Acknowledgment shall be prima facie evidence of the execution of an
assignment, and when the prescribed information reporting the assignment
is recorded in the United States Patent and Trademark Office, the record
shall be prima facie evidence of execution.
(4) An assignment shall be void against any subsequent purchaser for
valuable consideration without notice, unless the prescribed information
reporting the assignment is recorded in the United States Patent and
Trademark Office within 3 months after the date of the assignment or
prior to the subsequent purchase.
(5) The United States Patent and Trademark Office shall maintain a
record of information on assignments, in such form as may be prescribed
by the Director.
(b) An assignee not domiciled in the United States may designate by
a document filed in the United States Patent and Trademark Office the
name and address of a person resident in the United States on whom may
be served notices or process in proceedings affecting the mark. Such
notices or process may be served upon the person so designated by
leaving with that person or mailing to that person a copy thereof at the
address specified in the last designation so filed. If the person so
designated cannot be found at the address given in the last designation,
or if the assignee does not designate by a document filed in the United
States Patent and Trademark Office the name and address of a person
resident in the United States on whom may be served notices or process
in proceedings affecting the mark, such notices or process may be served
upon the Director.
(July 5, 1946, ch. 540, title I, Sec. 10, 60 Stat. 431; Pub. L. 87-772,
Sec. 6, Oct. 9, 1962, 76 Stat. 770; Pub. L. 93-596, Sec. 1, Jan. 2,
1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 112, Nov. 16, 1988,
102 Stat. 3939; Pub. L. 105-330, title I, Sec. 107, Oct. 30, 1998, 112
Stat. 3068; Pub. L. 106-43, Sec. 6(a), Aug. 5, 1999, 113 Stat. 220; Pub.
L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec. 4732(b)(1)(B)], Nov.
29, 1999, 113 Stat. 1536, 1501A-583; Pub. L. 107-273, div. C, title III,
Sec. 13207(b)(5), Nov. 2, 2002, 116 Stat. 1907.)
Prior Provisions
Act Feb. 20, 1905, ch. 592, Sec. 10, 33 Stat. 727.
Amendments
2002--Subsecs. (a), (b). Pub. L. 107-273 amended subsecs. (a) and
(b) generally, in subsec. (a) substituting pars. (1) to (5) for
substantially identical undesignated provisions, and in subsec. (b)
adding provisions relating to service on Director if assignee does not
designate name and address of a person resident in the United States on
whom may be served notices or process.
1999--Pub. L. 106-43, Sec. 6(a)(2), (3), which directed the
amendment of this section by substituting ``mark.'' for ``mark,'' in the
first sentence and striking out a second period at the end of the third
sentence, could not be executed because ``mark,'' and the second period
did not appear subsequent to amendment by Pub. L. 105-330. See 1998
Amendment note below.
Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4732(b)(1)(B)], substituted ``Director'' for ``Commissioner'' in
last sentence.
Pub. L. 106-43, Sec. 6(a)(1), which directed the amendment of the
penultimate sentence of this section by substituting ``assignment'' for
``subsequent purchase'', was executed by making the substitution for
``subsequent purchase'' in two places in the penultimate sentence of
subsec. (a), after ``date of the'' and ``prior to the'', to reflect the
probable intent of Congress.
Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4732(b)(1)(B)], substituted ``Director'' for ``Commissioner'' in
last sentence.
1998--Pub. L. 105-330 amended section catchline and text generally.
Prior to amendment, text read as follows:
``A registered mark or a mark for which application to register has
been filed shall be assignable with the goodwill of the business in
which the mark is used, or with that part of the goodwill of the
business connected with the use of and symbolized by the mark,. However,
no application to register a mark under section 1051(b) of this title
shall be assignable prior to the filing of the verified statement of use
under section 1051(d) of this title, except to a successor to the
business of the applicant, or portion thereof, to which the mark
pertains, if that business is ongoing and existing. In any assignment
authorized by this section it shall not be necessary to include the
goodwill of the business connected with the use of and symbolized by any
other mark used in the business or by the name or style under which the
business is conducted. Assignments shall be by instruments in writing
duly executed. Acknowledgment shall be prima facie evidence of the
execution of an assignment and when recorded in the Patent and Trademark
Office the record shall be prima facie evidence of execution. An
assignment shall be void as against any subsequent purchaser for a
valuable consideration without notice, unless it is recorded in the
Patent and Trademark Office within three months after the date thereof
or prior to such subsequent purchase. A separate record of assignments
submitted for recording hereunder shall be maintained in the Patent and
Trademark Office.
``An assignee not domiciled in the United States shall be subject to
and comply with the provisions of section 1051(e) of this title.''
1988--Pub. L. 100-667 substituted ``. However, no application to
register a mark under section 1051(b) of this title shall be assignable
prior to the filing of the verified statement of use under section
1051(d) of this title, except to a successor to the business of the
applicant, or portion thereof, to which the mark pertains, if that
business is ongoing and existing. In any assignment authorized by this
section'' for ``and in any such assignment'' in first par., and
``1051(e)'' for ``1051(d)'' in last par.
1975--Pub. L. 93-596 substituted ``Patent and Trademark Office'' for
``Patent Office''.
1962--Pub. L. 87-772 substituted provisions which require a separate
record of assignments to be kept in the Patent Office, for provisions
which required the Commissioner to keep such record, and eliminated
provisions permitting the cancellation of any assigned registration at
any time if the registered mark is being used by, or with the permission
of, the assignee so as to misrepresent the source of the goods or
services in connection with which the mark is used.
Effective Date of 1999 Amendment
Amendment by Pub. L. 106-113 effective 4 months after Nov. 29, 1999,
see section 1000(a)(9) [title IV, Sec. 4731] of Pub. L. 106-113, set out
as a note under section 1 of Title 35, Patents.
Effective Date of 1998 Amendment
Amendment by Pub. L. 105-330 effective on the date that is 1 year
after Oct. 30, 1998, see section 110 of Pub. L. 105-330, set out as a
note under section 1051 of this title.
For provisions relating to applicability of amendment by Pub. L.
105-330 to applications for registration of trademarks, see section
109(b) of Pub. L. 105-330, set out as a note under section 1051 of this
title.
Effective Date of 1988 Amendment
Amendment by Pub. L. 100-667 effective one year after Nov. 16, 1988,
see section 136 of Pub. L. 100-667, set out as a note under section 1051
of this title.
Effective Date of 1975 Amendment
Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4 of
Pub. L. 93-596, set out as a note under section 1111 of this title.
Repeal and Effect on Existing Rights
Repeal of inconsistent provisions, effect of this chapter on pending
proceedings and existing registrations and rights under prior acts, see
notes set out under section 1051 of this title.
Transfer of Functions
For transfer of functions of other officers, employees, and agencies
of Department of Commerce, with certain exceptions, to Secretary of
Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950,
Secs. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in
the Appendix to Title 5, Government Organization and Employees.
