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

[Dale Quisenberry]

Just did a quick search and found this:

[cid:image001.png at 01DB1992.CF108E90]



[cid:image002.png at 01DB1992.D8090130]

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.



From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Tuesday, 8 October 2024 at 2:54 pm
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [E-trademarks] Assigning right to sue for past infringements
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
>
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241008/eaf57f84/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 149164 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241008/eaf57f84/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 146078 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241008/eaf57f84/attachment-0001.png>