15 U.S.C. § 1059 — Renewal of registration

Page 1287 TITLE 15—COMMERCE AND TRADE § 1059 1 So in original. Probably should be ‘‘Director’s’’. 1946 [15 U.S.C. 1062(c)], for which the affidavit is filed is on or after the effective date of this Act [probably should be ‘‘this title’’, see section 110 of Pub. L. 105–330, set out as an Effective Date of 1998 Amendment 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 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as a note under section 294 of Title 35, Patents. 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 chap- ter on pending proceedings and existing registrations and rights under prior acts, and saving clause, see notes set out under section 1051 of this title. REFERENCES TO TRADEMARK ACT OF 1946 Pub. L. 105–330, title I, § 102, Oct. 30, 1998, 112 Stat. 3064, provided that: ‘‘For purposes of this title [see Short Title of 1998 Amendment note set out under sec- tion 1051 of this title], the Act entitled ‘An Act to pro- vide for the registration and protection of trademarks used in commerce, to carry out the provisions of cer- tain international conventions, and for other purposes’, approved July 5, 1946 (15 U.S.C. 1051 et seq.), shall be re- ferred to as the ‘Trademark Act of 1946’.’’ PENDING APPLICATIONS Act July 5, 1946, ch. 540, title XI, § 51, as added Nov. 16, 1988, Pub. L. 100–667, title I, § 135, 102 Stat. 3948, pro- vided that: ‘‘All certificates of registration based upon applications for registration pending in the Patent and Trademark Office on the effective date of the Trade- mark Law Revision Act of 1988 [see Effective Date of 1988 Amendment note set out under section 1051 of this title] shall remain in force for a period of 10 years.’’ Executive Documents 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, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1059. Renewal of registration (a) Period of renewal; time for renewal Subject to the provisions of section 1058 of this title, each registration may be renewed for peri- ods of 10 years at the end of each successive 10- year period following the date of registration upon payment of the prescribed fee and the fil- ing of a written application, in such form as may be prescribed by the Director. Such applica- tion may be made at any time within 1 year be- fore the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a grace period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge pre- scribed therefor. If any application filed under this section is deficient, the deficiency may be corrected within the time prescribed after noti- fication of the deficiency, upon payment of a surcharge prescribed therefor. (b) Notification of refusal of renewal If the Director refuses to renew the registra- tion, the Director shall notify the registrant of the Commissioner’s 1 refusal and the reasons therefor. (c) Designation of resident for service of process and notices If the registrant is not domiciled in the United States the registrant may designate, by a docu- ment 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 leav- ing 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 registrant does not des- ignate by a document filed in the United States Patent and Trademark Office the name and ad- dress 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 on the Director. (July 5, 1946, ch. 540, title I, § 9, 60 Stat. 431; Pub. L. 87–772, § 5, Oct. 9, 1962, 76 Stat. 770; Pub. L. 100–667, title I, § 111, Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105–330, title I, § 106, Oct. 30, 1998, 112 Stat. 3067; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B), (C)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 107–273, div. C, title III, § 13207(b)(4), Nov. 2, 2002, 116 Stat. 1907.) Editorial Notes PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, § 12, 33 Stat. 727. AMENDMENTS 2002—Subsec. (c). Pub. L. 107–273 amended subsec. (c) generally. Prior to amendment, text read as follows: ‘‘If the registrant is not domiciled in the United States, the registrant shall designate by a written document filed in the Patent and Trademark Office the name and address of some 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, such notice or process may be served upon the Director.’’ 1999—Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted ‘‘Director’’ for ‘‘Commis- sioner’’. Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B), (C)], amended subsec. (b) identically, sub- stituting ‘‘Director’’ for ‘‘Commissioner’’ in two places. Subsec. (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted ‘‘Director’’ for ‘‘Commis- sioner’’. 1998—Pub. L. 105–330 amended section catchline and text generally. Prior to amendment, text consisted of Page 1288 TITLE 15—COMMERCE AND TRADE § 1060 subsecs. (a) to (c) relating to period of renewal and time for renewal, notification of refusal of renewal, and applicants for renewal not domiciled in the United States. 1988—Subsec. (a). Pub. L. 100–667, § 111(1), substituted ‘‘ten’’ for ‘‘twenty’’. Subsec. (c). Pub. L. 100–667, § 111(2), substituted ‘‘1051(e)’’ for ‘‘1051(d)’’. 1962—Pub. L. 87–772 designated existing provisions as subsecs. (a) and (c), added subsec. (b), and among other changes, amended subsec. (a) by substituting provisions requiring a verified application specifying the goods or services recited in the registration on or in connection with which the mark is still in use in commerce and having attached a specimen showing current use of the mark, or showing that any nonuse is due to special cir- cumstances which excuse the nonuse and that it’s not due to an intention to abandon the mark, for provisions requiring an affidavit by the registrant stating that the mark is still in use in commerce. Statutory Notes and Related Subsidiaries 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, § 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 amend- ment 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. Pub. L. 105–330, title I, § 109(d), Oct. 30, 1998, 112 Stat. 3069, provided that: ‘‘The amendment made by section 106 [amending this section] shall apply to the filing of an application for renewal of a registration if the expi- ration date of the registration for which the renewal application is filed is on or after the effective date of this Act [probably should be ‘‘this title’’, see section 110 of Pub. L. 105–330, set out as an Effective Date of 1998 Amendment 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. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. RENEWAL UNDER PRIOR ACTS Renewal of registrations under prior acts, see section 46(b) of act July 5, 1946, set out as a note under section 1051 of this title. EXTENSION OF TIME FOR RENEWAL BY FOREIGN REGISTRANT Act July 17, 1946, ch. 587, 60 Stat. 568, provided for ex- tension of time for renewal by a foreign registrant and expired by its own terms July 17, 1949. § 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 reg- ister 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 sec- tion 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 suc- cessor to the business of the applicant, or por- tion thereof, to which the mark pertains, if that business is ongoing and existing. (2) In any assignment authorized by this sec- tion, 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 as- signment, 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 execu- tion. (4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed informa- tion reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assign- ment 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 per- son so designated by leaving with that person or mailing to that person a copy thereof at the ad- dress 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 Of- fice the name and address of a person resident in the United States on whom may be served no- tices or process in proceedings affecting the mark, such notices or process may be served upon the Director. (July 5, 1946, ch. 540, title I, § 10, 60 Stat. 431; Pub. L. 87–772, § 6, Oct. 9, 1962, 76 Stat. 770; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 112, Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105–330, title I, § 107, Oct. 30, 1998, 112 Stat. 3068; Pub. L. 106–43, § 6(a), Aug. 5, 1999, 113 Stat. 220; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 107–273, div. C, title III, § 13207(b)(5), Nov. 2, 2002, 116 Stat. 1907.) Editorial Notes PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, § 10, 33 Stat. 727.