15 U.S.C. § 1060 — Assignment
submitted 80 years ago by ch. 540 to r/title-15-COMMERCE-AND-TRADE · 465 words · no verdicts yet
A trademark or pending trademark application may generally be assigned with the related business goodwill. The assignment must be written and recorded within the specified time to protect it against a later good-faith purchaser, and the section provides service rules for an assignee outside the United States.
(a)(1) A registered mark* or pending application may be assigned with the goodwill of the business in which the mark is used, or the connected goodwill it represents. A section 1051(b) application cannot be assigned before the required amendment or verified statement of use, except to a successor of the ongoing business or relevant part. (2) The assignment need not include goodwill connected to another mark or the business name. (3) An assignment must be in a signed writing. An acknowledgment is initial evidence that it was executed, and recording the required information with the Patent and Trademark Office is also initial evidence. (4) An assignment is void against a later purchaser for value without notice unless its required information is recorded within 3 months after assignment or before the later purchase. (5) The Office must keep an assignment-information record in the Director’s prescribed form. (b) An assignee not domiciled in the United States may designate a United States resident to receive notices or process in proceedings affecting the mark. Service may be left or mailed at the filed address. If the person cannot be found there, or no person is designated, service may be made on the Director.
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 United States 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 United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.
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.
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.
Source credit: (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.)
- 1946Enacted · Act of July 5, 1946, ch. 540 · 60 Stat. 431
- 1962Amended · Pub. L. 87-772 · 76 Stat. 770
- 1975Amended · Pub. L. 93-596 · 88 Stat. 1949
- 1988Amended · Pub. L. 100-667 · 102 Stat. 3939
- 1998Amended · Pub. L. 105-330 · 112 Stat. 3068
- 1999Amended · Pub. L. 106-43 · 113 Stat. 220
- 1999Amended · Pub. L. 106-113 · 113 Stat. 1536, 1501
- 2002Amended · Pub. L. 107-273 · 116 Stat. 1907
A history note hasn’t been published yet. The record shows enactment by ch. 540 on 1946-07-05.
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