15 U.S.C. § 1060 — Assignment

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. Page 1289 TITLE 15—COMMERCE AND TRADE § 1061 AMENDMENTS 2002—Subsecs. (a), (b). Pub. L. 107–273 amended sub- secs. (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, § 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 ex- ecuted 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, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted ‘‘Director’’ for ‘‘Commis- sioner’’ in last sentence. Pub. L. 106–43, § 6(a)(1), which directed the amend- ment of the penultimate sentence of this section by substituting ‘‘assignment’’ for ‘‘subsequent purchase’’, was executed by making the substitution for ‘‘subse- quent purchase’’ in two places in the penultimate sen- tence of subsec. (a), after ‘‘date of the’’ and ‘‘prior to the’’, to reflect the probable intent of Congress. Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted ‘‘Director’’ for ‘‘Commis- sioner’’ in last sentence. 1998—Pub. L. 105–330 amended section catchline and text generally. Prior to amendment, text read as fol- lows: ‘‘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 appli- cant, or portion thereof, to which the mark pertains, if that business is ongoing and existing. In any assign- ment authorized by this section it shall not be nec- essary to include the goodwill of the business con- nected 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. Ac- knowledgment shall be prima facie evidence of the exe- cution of an assignment and when recorded in the Pat- ent 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 pur- chase. 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 ap- plication 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 appli- cant, or portion thereof, to which the mark pertains, if that business is ongoing and existing. In any assign- ment 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 Trade- mark Office’’ for ‘‘Patent Office’’. 1962—Pub. L. 87–772 substituted provisions which re- quire a separate record of assignments to be kept in the Patent Office, for provisions which required the Com- missioner to keep such record, and eliminated provi- sions permitting the cancellation of any assigned reg- istration 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. 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. 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 chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. 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. § 1061. Execution of acknowledgments and verifications Acknowledgments and verifications required under this chapter may be made before any per- son within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular offi- cer of the United States or before any official authorized to administer oaths in the foreign country concerned whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, and shall be valid if they comply with the laws of the state or country where made. (July 5, 1946, ch. 540, title I, § 11, 60 Stat. 432; Pub. L. 97–247, § 14(c), Aug. 27, 1982, 96 Stat. 321.) Editorial Notes PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, § 2, 33 Stat. 724; Feb. 18, 1909, ch. 144, 35 Stat. 627.