§ 1060. Assignment

Legislative history

Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.

1. 1946

   Pub. L. 79–540 · 60 Stat. 427

   Enacted · 15 U.S.C. § 1060

   July 5, 1946, ch. 540, title I, § 10, 60 Stat. 431

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title I, § 10, 60 Stat. 431

2. 1962

   Pub. L. 87–772 § 6 · 76 Stat. 769

   Substituted · 15 U.S.C. § 1060

   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

   Source evidence

   Code amendment note
   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.

   Enacted provision · exact public law section
   Sec. 6. Section 10 is amended by changing the colon following the word “conducted” to a period and striking the words “Provided, That any assigned registration may be canceled 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”; and striking the sentence “The Commissioner shall keep a separate record of such assignments submitted to him for recording.” and inserting in lieu thereof “A separate record of assignments submitted for recording hereunder shall be maintained in the Patent Office.”

3. 1975

   Pub. L. 93–596 § 1 · 88 Stat. 1949

   Substituted · 15 U.S.C. § 1060

   Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”

   Source evidence

   Code amendment note
   Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

   Enacted provision · exact public law section
   Section 1. The Trademark Act of 1946, 60 Stat. 427, as amended (15 U.S.C. sec. 1051 et seq. (1970)), and title 35 of the United States Code, entitled “Patents”, are amended by striking out each time they 35 USC 1 et seq. appear “Patent Office” and “Commissioner of Patents” and inserting in lieu thereof “Patent and Trademark Office” and “Commissioner of Patents and Trademarks”, respectively.

4. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 title I § 112 · 102 Stat. 3935

   1. Substituted · 15 U.S.C. § 1060

      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 last par

   2. Substituted · 15 U.S.C. § 1060

      Pub. L. 100–667 substituted “1051(e)” for “1051(d)” in last par

   Source evidence

   Code amendment note
   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.

   Enacted provision · exact public law section
   SEC. 112. ASSIGNMENT. Section 10 (15 U.S.C. 1060) is amended— (1) in the first sentence by striking out “and in any such assignment” and inserting in lieu thereof the following: “. However, no application to register a mark under section 1(b) shall be assignable prior to the filing of the verified statement of use under section 1(d), 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”; and (2) in the last paragraph by striking out “1(d) hereof” and inserting in lieu thereof “1(e) of this Act”,

5. 1998

   Trademark Law Treaty Implementation Act

   Pub. L. 105–330 title I § 107 · 112 Stat. 3064

   Amended · 15 U.S.C. § 1060

   Pub. L. 105–330 amended section catchline and text generally. Prior to amendment, text read as follows:

   Source evidence

   Code amendment note
   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.”

   Enacted provision · exact public law section
   SEC. 107. RECORDING ASSIGNMENT OF MARK. Section 10 of the Trademark Act of 1946 (15 U.S.C. 1060) is amended to read as follows: “Sec. 10. “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 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), 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 subsequent purchase or prior to the subsequent purchase. The Patent and Trademark Office shall maintain a record of information on assignments, in such form as may be prescribed by the Commissioner. “(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 Commissioner.”.

6. 1999

   Trademark Amendments Act of 1999

   Pub. L. 106–43 § 6(a)(2) · 113 Stat. 218

   1. Substituted · 15 U.S.C. § 1060

      Pub. L. 106–43, § 6(a)(2), (3), which directed the amendment of this section by substituting “mark.” for “mark,” in the first sentence

   2. Struck · 15 U.S.C. § 1060

      Pub. L. 106–43, § 6(a)(2), (3), which directed the amendment of this section by 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

   Source evidence

   Code amendment note
   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 executed because “mark,” and the second period did not appear subsequent to amendment by Pub. L. 105–330. See 1998 Amendment note below.

   Enacted provision · exact public law section
   (2) in the first sentence by striking “mark,” and inserting “mark.”; and

7. 1999

   Trademark Amendments Act of 1999

   Pub. L. 106–43 § 6(a)(1) · 113 Stat. 218

   Substituted · 15 U.S.C. § 1060(a)

   Pub. L. 106–43, § 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

   Target inherited from the preceding amendment note.

   Source evidence

   Code amendment note
   Pub. L. 106–43, § 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.

   Enacted provision · exact public law section
   (1) by striking “subsequent purchase” in the second to last sentence and inserting “assignment”;

8. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(b)(1)(B) · 113 Stat. 1501

   Substituted · 15 U.S.C. § 1060(a)

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner” in last sentence

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner” in last sentence.

   Effective date note
   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.

9. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(b)(1)(B) · 113 Stat. 1501

   Substituted · 15 U.S.C. § 1060(b)

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner” in last sentence

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner” in last sentence.

   Effective date note
   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.

10. 2002

    Intellectual Property and High Technology Technical Amendments Act of 2002

    Pub. L. 107–273 div. C title III § 13207(b)(5) · 116 Stat. 1758

    Substituted · 15 U.S.C. § 1060(a); 15 U.S.C. § 1060(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

    Source evidence

    Code amendment note
    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.

    Enacted provision · exact public law section
    (b) Additional Technical Amendments.— The Trademark Act of 1946 is further amended as follows: (1) Section 1(d)(1) (15 U.S.C. 1051(d)(1) is amended in the first sentence by striking “specifying the date of the applicant’s first use” and all that follows through the end of the sentence and inserting “specifying the date of the applicant’s first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce.”. (2) Section 1(e) (15 U.S.C. 1051(e)) is amended to read as follows: “(e) If the applicant is not domiciled in the United States the applicant 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 registrant 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 on the Director.”. (3) Section 8(f) (15 U.S.C. 1058(f)) is amended to read as follows: “(f) If the registrant is not domiciled in the United States, the registrant 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 registrant 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 on the Director.”. (4) Section 9(c) (15 U.S.C. 1059(c)) is amended to read as follows: “(c) If the registrant is not domiciled in the United States the registrant 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 registrant 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 on the Director.”. (5) Subsections (a) and (b) of section 10 (15 U.S.C. 1060(a) and (b)) are amended to read as follows: “(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 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), 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.”. (6) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking the second comma after “numeral”. (7) Section 33(b)(8) (15 U.S.C. 1115(b)(8)) is amended by aligning the text with paragraph (7). (8) Section 34(d)(1)(A) (15 U.S.C. 1116(d)(1)(A)) is amended by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code,”. (9) Section 34(d)(1)(B)(ii) (15 U.S.C. 1116(d)(1)(B)(ii)) is amended by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code”. (10) Section 34(d)(11) is amended by striking “6621 of the Internal Revenue Code of 1954” and inserting “6621(a)(2) of the Internal Revenue Code of 1986”. (11) Section 35(b) (15 U.S.C. 1117(b)) is amended— (A) by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code,”; and (B) by striking “6621 of the Internal Revenue Code of 1954” and inserting “6621(a)(2) of the Internal Revenue Code of 1986”. (12) Section 44(e) (15 U.S.C. 1126(e)) is amended by striking “a certification” and inserting “a true copy, a photocopy, a certification,”.

9 of 12 references resolved to an enrolled provision · 3 partial