[E-trademarks] Nunc Pro Tunc and Renewals

[Pamela Chestek]

An interesting take, since Section 10 says that the assignment of 
registrations has to be in writing.  It's true of unregistered marks, 
though.

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

On 11/14/2023 7:38 PM, Orvis wrote:
> 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
>
>     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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