
From the U.S. Code Online via GPO Access
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[Laws in effect as of January 2, 2001]
[Document not affected by Public Laws enacted between
  January 2, 2001 and January 28, 2002]
[CITE: 15USC1060]

 
                      TITLE 15--COMMERCE AND TRADE
 
                         CHAPTER 22--TRADEMARKS
 
                  SUBCHAPTER I--THE PRINCIPAL REGISTER
 
Sec. 1060. Assignment

    (a) 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. 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. 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 Patent and Trademark Office, the record shall be 
prima facie evidence of execution. 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 Patent and Trademark Office within 3 months after the date of the 
assignment or prior to the assignment. The 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 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.

(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.)


                            Prior Provisions

    Act Feb. 20, 1905, ch. 592, Sec. 10, 33 Stat. 727.


                               Amendments

    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.
