Prior Provisions

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

Amendments

2002—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.

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 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, §1000(a)(9) [title IV, §4732(b)(1)(B)], substituted "Director" for "Commissioner" in last sentence.

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.

Subsec. (b). Pub. L. 106–113, §1000(a)(9) [title IV, §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, §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, §§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.