[E-trademarks] Assigning right to sue for past infringements

[Crane, Susan]

That language has always been part of basically every assignment I’ve ever seen. Curious why, if it is already included, counsel pushed back on what is then essentially a belt and suspenders approach.

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.Com

On Oct 8, 2024, at 2:39 PM, Lara Pearson via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:


Hi list friends: I hope this finds you smiling. In the past couple years I have included a provision in trademark assignments that allows for the assignee to act on and recover for past infringements. A counterpart's counsel recently pushed
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Hi list friends:

I hope this finds you smiling.

In the past couple years I have included a provision in trademark assignments that allows for the assignee to act on and recover for past infringements. A counterpart's counsel recently pushed back on this saying that a basic assignment of the Mark & goodwill automatically included those rights. I cannot recall when exactly, nor why, I started including that specific past infringement language in my assignments.

I would love to hear your thoughts on whether including this extra language is prudent, necessary, or unnecessary, and why.

Thank you.

With appreciation for this list serv and each of you wonderful list friends (lurkers too!,


Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek (let's meet)

Creative typoing by iPhone



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