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

[Carl Oppedahl]

Keep in mind that trademark law is, fundamentally, state law.  We sort 
of pretend that it is federal but that's not really the case.

Can your counterpart opine that in all fifty states, there is no doubt 
whatsoever that a mere assignment of mark and goodwill today also 
conveys the right to sue for infringements that happened before today?

On 10/8/2024 12:35 PM, Lara Pearson via E-trademarks 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 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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