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TMEP 501 Assignment of Marks
501.01 Assignability of Marks in Applications and Registrations
15 U.S.C. §1060(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
(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…
37 CFR §3.1 (Extract)
*** Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application,
registered mark or a mark for which an application to register has been filed.
501.01(a) Assignability of Intent-
In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application
before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a
statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or portion of the business
to which the mark pertains, if that business is ongoing and existing. Section 10 of the Trademark Act, 15 U.S.C. §1060;
37 C.F.R. §3.16.
The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or
goodwill, and to prevent “trafficking” in marks.
As a general rule, the United States Patent and Trademark Office (“USPTO”) does not investigate or evaluate the
validity of assignments. Therefore, the examining attorney should issue an inquiry concerning the compliance of an
assignment with the cited provisions of §10 only if:
(1) The application itself includes a statement indicating that the assignee is not a successor to the original
applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or
(2) All of the following conditions are present:(a) The assignment is executed before the filing of an allegation
(b) The applicant submits the assignment document for inclusion in the application record; and
(c) The assignment document fails to include the relevant language from §10 to the effect that the assignment
includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.
The examining attorney should not require the submission of assignment documents to determine compliance.
If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the
cited provision of §10 is sufficient to resolve the issue. This statement may be entered through an examiner’s amendment.
The assignment of an intent-
filing an allegation of use renders the application and any resulting registration void. Clorox Co. v. Chemical Bank,
40 USPQ2d 1098 (TTAB 1996).
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