<div dir="ltr">Are there any updates on how to overcome the refusal to record for lack of goodwill being recited? I just got my first lack of goodwill recitation rejection. <div><br></div></div><br><div class="gmail_quote"><div dir="ltr" class="gmail_attr">On Tue, Jan 2, 2024 at 1:53 PM Orvis PC <<a href="mailto:orvispc@gmail.com">orvispc@gmail.com</a>> wrote:<br></div><blockquote class="gmail_quote" style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex"><div dir="ltr">On one hand, at least the PTO is trying to be helpful. That is a welcomed change. <div><br></div><div>On the other hand, in addition to what you noted, that assignment does not track Section 1060. Section 1060 says ". . . 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." That attachment looks like a form agreement from another country that uses the term 'wares' instead of 'goods.' </div><div><br></div><div>Also, does the assignment of damages include the assignment of the right to go after past infringement? Below is some copied patent precedent. </div><div><br></div><div>“The general rule is that one seeking to recover money damages for infringement of the United States patent…must have held the legal title to the patent during the time of the infringement.” Arachnid, Inc. v. Merit Indus., Inc. 939 F.2d 1574, 1579 (Fed. Cir. 1991). A party may sue for infringement occurring before it obtained legal title if a written assignment expressly grants the party a right to do so. Id. at 1579 n. 7. (citing, Inter alia, Moore v. Marsh, 74 U.S. (7 Wall.) 515 (1868) (“It is a great mistake to suppose that the assignment of a patent carries with it a transfer of the right to damages for an infringement committed before such assignment.”) (emphasis added); See also Abraxis Bioscience, Inc., v. Navinta LLC, 625 F. 3d 1359, 1367 (Fed. Cir. 2010).”<br></div></div><br><div class="gmail_quote"><div dir="ltr" class="gmail_attr">On Tue, Jan 2, 2024 at 1:16 PM Carl Oppedahl via E-trademarks <<a href="mailto:e-trademarks@oppedahl-lists.com" target="_blank">e-trademarks@oppedahl-lists.com</a>> wrote:<br></div><blockquote class="gmail_quote" style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex"><u></u>
<div>
<div>On 1/2/2024 9:40 AM, Carl Oppedahl via
E-trademarks wrote:<br>
</div>
<blockquote type="cite">
[... ] I phoned up the Assignment Division reaching a different
person than the signer of the Notice. She confidently affirmed
the propriety of the bounce, lecturing me that the word "goodwill"
simply must appear in the document or it will not legally achieve
the intended change of ownership. Doubling down, she then offered
to email to me an exemplary assignment document that she said
would be legally effective.<br>
<p>Yes, we have unauthorized practice of law going on here at the
USPTO.</p>
</blockquote>
<p>The email arrived. Attached is what the USPTO paralegal sent to
me, with her legal advice that this document from her was legally
correct and that the one that I had e-filed was not. <br>
</p>
<p><i><b>Who is doing the agreeing? </b></i> The document recites
that "the Assignor and the Assignee hereby agree as follows", but
there is no signature line for the Assignee. This seems
inconsistent.<br>
</p>
<p><b>Where the document is legally sufficient. </b>I guess the
USPTO paralegal is opining that this document is legally
sufficient in all fifty states of the US (including Louisiana,
whose legal tradition is from the Napoleonic Code), and is also
opining that this document is legally sufficient in every country
of the world where the sufficiency might matter. In this
particular case the assignor and assignee are both in Europe. I
imagine that most attorneys who are members of this listserv would
hesitate to opine across all geographic areas, given that the
attorney is probably not admitted to practice in more than one or
two states. But the paralegal who emailed this to me, who is
probably not admitted to practice anywhere outside of the US (and
probably not admitted to practice in Louisiana or any other state
of the US) had no hesitation in rendering such advice.<br>
</p>
<p>I am told by some European practitioners that to be legally
sufficient in some places in Europe, an assignment must be signed
not only by the Assignor but also by the Assignee. <br>
</p>
<p><i><b>The payment of one dollar ($1.00) and for good and valuable
consideration. </b></i>Seems to me that for parties located
outside the US, a recitation that folding money in US currency was
passed between the parties is inapt.</p>
<p><i><b>Ending with a comma.</b></i> I note that the USPTO's
recommended Assignment document ends with a comma.</p>
</div>
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</blockquote></div>
</blockquote></div>