[E-trademarks] joint venture question

[Carl Oppedahl]

A longstanding member of the listserv wishes to ask anonymously ...

Listmates,

I could use some wisdom on the following fact pattern:

  * A&B decide to form a joint endeavor, expanding the use of A's TM
    (for jewelry) into new, unrelated goods/services (fresh produce)
  * A&B file TM apps for the new produce product line listing both of
    their names as TM owner
  * A&B realize they cannot make it work and agree to assign the produce
    TM apps to A
  * A provides B a standard assmt of the mark, apps and goodwill.
  * B's counsel edits the contract (w/o any comments or other
    explanation) & removes all references to assignment of the TM
    itself, leaving in only language that the apps/regs and goodwill are
    being assigned.

I don't understand why counsel would do this, and do not think it will 
be a valid TM assignment, nor will it be recordable.
Do you agree?

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