[E-trademarks] paralegals that think they are smarter than lawyers

[Orvis PC]

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.


On Tue, Jan 2, 2024 at 1:53 PM Orvis PC <orvispc at gmail.com> wrote:

> On one hand, at least the PTO is trying to be helpful. That is a welcomed
> change.
>
> 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.'
>
> Also, does the assignment of damages include the assignment of the right
> to go after past infringement? Below is some copied patent precedent.
>
> “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).”
>
> On Tue, Jan 2, 2024 at 1:16 PM Carl Oppedahl via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> On 1/2/2024 9:40 AM, Carl Oppedahl via E-trademarks wrote:
>>
>> [... ]  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.
>>
>> Yes, we have unauthorized practice of law going on here at the USPTO.
>>
>> 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.
>>
>> *Who is doing the agreeing? * 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.
>>
>> *Where the document is legally sufficient.  *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.
>>
>> 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.
>>
>> *The payment of one dollar ($1.00) and for good and valuable
>> consideration.  *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.
>>
>> *Ending with a comma.*  I note that the USPTO's recommended Assignment
>> document ends with a comma.
>> --
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>>
>
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