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

[voyer@keganlaw.com]

Conventional practice, if careful, is to explicitly include right to enforce pre-assignment enforcements vst infringements.  eg, the right to sue for infringement of the marks.
There likely is some case(s) supporingt that, when pre-assignment enforcement/damages was denied.

Daniel Kegan
Kennett Square PA

> On Oct 8, 2024, at 2:35 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 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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