[E-trademarks] Mistake in Trademark Assignment

[Carl Oppedahl]

Keeping in mind that the more important question is one that did not get 
asked in this posting.

It absolutely does not matter whether the Assignment Branch has or has 
not acted on the filing.

What matters is that once an Assignment has been executed from A to B, 
then (barring some rabbit being pulled out of a hat) A no longer has 
anything to assign.  If the practitioner were to fashion a purported 
assignment from A to C, and the practitioner sticks this document under 
A's nose and gets it signed, the document is a nullity.  A did not have 
anything to assign to C.

Keep in mind that the law of "how you know who owns what?" is not 
federal law.  Most readers of this listserv are admitted to practice in 
just one or two states.  There are easily 48 states for which I (for 
example) would lack competence as to opinions about who owns what.

I would run, not walk, to go find competent counsel in whatever place 
matters for the "how you know who owns what?" question. This might be 
the state where the (supposedly non-existent) B was (supposedly) 
incorporated.  This might be the state that A was in when A signed the 
ill-fated purported assignment.  Anyway, that counsel is who needs to be 
consulted to see if the requisite rabbit can be produced.

On 11/19/2024 8:45 AM, Carl Oppedahl via E-trademarks wrote:
> On 11/19/2024 8:22 AM, Michael D. Steger via E-trademarks wrote:
>>
>> A assigns ITU application to B (as part of a transfer of the entire 
>> business)
>>
>> The assignment document and the resulting conveyance form filed with 
>> the Assignment Branch contain an incorrect name for B.
>>
>> Assignment Branch has not acted on the filing.
>>
>> What steps should one take before or when filing a revised assignment 
>> agreement where the goal is to essentially tell the Assignment Branch 
>> to ignore the initial filing?
>>
> Pick up the phone and call the Assignment Branch.  There's a chance 
> you might be able to sweet-talk them into not doing the recordation.
>
>
>
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