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

[Simor Moskowitz]

Can you add the magic language in ink and have the assignor initial the change in the margin — then file as a corrective assignment?

Simor Moskowitz
Sent from my iPhone

On May 23, 2024, at 1:22 PM, Orvis PC via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:


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<mailto: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<mailto: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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