[E-trademarks] Nunc Pro Tunc and Renewals

[Orvis]

Thank you so much. Your comment aligns with my initial reaction. I did however read an old decision that hand waved over assignment issues, noting that an assignment does not need to be in writing.

Nov 14, 2023 10:05:20 AM Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com>:

> I don't think so. I have studied nunc pro tunc and I find it confusing (it is the most visited page of my blog[https://propertyintangible.com/2016/12/more-on-what-nunc-pro-tunc-means/], so I'm not the only one). But my rule of thumb is that a nunc pro tunc is effective between parties but not effective against third parties. Suppose I have a trip-and-fall on some property. The property owner doesn't want the liability, so transfers the property to their judgment-proof child, effective before your accident. But the property owner doesn't get to avoid the lawsuit that way.
> 
> In the same way, the legal reality is that the document was signed by a non-owner. An agreement between two parties about the effective date of the transfer doesn't change that reality at the time of signing (and the unintentionally false statements made in it).
> 
> But I could be wrong.
> 
> Pam
> 
> Pamela S. Chestek
> Chestek Legal
> 300 Fayetteville Street
> Unit 2492
> Raleigh, NC 27602
> +1 919-800-8033
> pamela at chesteklegal.com
> www.chesteklegal.com[http://www.chesteklegal.com]
> 
> On 11/13/2023 10:09 PM, Orvis PC via E-trademarks wrote:
>> Can a nunc pro tunc assignment fix a failed attempt to assign? 
>> 
>> As you all know, a section 8 declaration of use must be filed by an owner. What if party A thought they were the owner? But, the 'assignment' was not effective to make party A an owner. Then party A signs a section 8 declaration. The Section 8 period has expired. 
>> 
>> Can a nunc pro tunc (post Section 8 filing) be effective to meet the requirement that a renewal must be filed by an owner?
>> 
>> MPEP 1604.07(a) https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1600d1e670.html 
>> The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration.  Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8(a) of the Act, *15 U.S.C. §1058(a)[https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-510834c1-3800-4410-8234-81085d283a9a.html]*,  (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within the year before the end of every ten-year period after the date of registration), or within the six-month grace period after expiration of these deadlines.  *37 C.F.R. §§2.160(a)[https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-2f312231-077f-4984-8e2d-4fc05b7df38c.html]*, *2.161(a)(1)[https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-022fab1e-e151-4eb0-b6d2-7d5aa0a8e885.html]*.
>> 
>> 
>> 
> 
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