[E-trademarks] Mistake in Trademark Assignment
Diane Gardner
diane at mmip.com
Tue Nov 19 17:19:26 UTC 2024
I would agree with Carl's comments regarding whether A has anything left to assign, IF the name of the entity in the assignment identifies an entity that actually exists. If the designated Assignee does not exist, I would argue that A does in fact still have rights that are assignable.
If the current Assignee does not exist, I believe that the best method for correcting this error would be to prepare and file a Corrective Assignment executed by both Assignee and Assignor in which the error is identified and acknowledged, and then using the USPTO option in the Cover Sheet for the same.
Kind regards,
Diane L. Gardner
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-----Original Message-----
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Today's Topics:
1. Weight/utility of 2(d) refusal in rebutting infringement
claim (Jessica R. Friedman)
2. Template assignment of ITU to successor (Tom Vanderbloemen)
3. Mistake in Trademark Assignment (Michael D. Steger)
4. Re: Mistake in Trademark Assignment (Carl Oppedahl)
5. Re: Mistake in Trademark Assignment (Carl Oppedahl)
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Message: 1
Date: Mon, 18 Nov 2024 17:22:07 +0000
From: "Jessica R. Friedman" <jrfriedman at litproplaw.com>
To: "For trademark practitioners. This is not for laypersons to seek
legal advice." <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Weight/utility of 2(d) refusal in rebutting
infringement claim
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I know that a PTO refusal to register is not dispositive of whether one mark infringes another. But are there cases that say that a 2(d) refusal ? at least one that the applicant is not able to overcome ? should be given great weight ? or any weight?
Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>
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Message: 2
Date: Mon, 18 Nov 2024 20:29:09 +0000
From: Tom Vanderbloemen <tom at vanderbloemenlaw.com>
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Template assignment of ITU to successor
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Friends ? Would any of you be willing to share a current template or example of an assignment of an ITU application to a successor business? I?ve seen some forms on Westlaw but always appreciate the brain trust?s input on these things.
Thanks,
Tom
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Message: 3
Date: Tue, 19 Nov 2024 10:22:15 -0500
From: "Michael D. Steger" <msteger at steger-law.com>
To: "'For trademark practitioners. This is not for laypersons to seek
legal advice.'" <e-trademarks at oppedahl-lists.com>
Subject: [E-trademarks] Mistake in Trademark Assignment
Message-ID: <07ca01db3a96$d0a6a850$71f3f8f0$@steger-law.com>
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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?
Mike Steger
Law Offices of Michael D. Steger, P.C.
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New York, NY 10017
(646) 517-0600
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Orangeburg, NY 10962
(845) 359-4600
(845) 638-2707 (fax)
msteger at steger-law.com <mailto:msteger at steger-law.com>
www.steger-law.com
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Message: 4
Date: Tue, 19 Nov 2024 08:45:53 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Mistake in Trademark Assignment
Message-ID: <d8d97852-5997-4740-8642-511374551e5d at oppedahl.com>
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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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Message: 5
Date: Tue, 19 Nov 2024 09:00:58 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For trademark "practitioners." This is not for laypersons to seek
legal "advice." <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Mistake in Trademark Assignment
Message-ID: <dd41ab02-9093-461a-b9da-e55617e98791 at oppedahl.com>
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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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