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

[Orvis PC]

We are trying to not reach out to assignor. If I do, I don't mind asking
them to sign a new agreement.

On Thu, May 23, 2024 at 1:36 PM Simor Moskowitz <SMoskowitz at whda.com> wrote:

> 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> 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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>>>
>> --
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