[E-trademarks] Nunc pro tun assignments

[Pamela Chestek]

I think the PTO has created great confusion around this, which is why 
the question keeps coming up

The PTO has decided that it's going to label any agreement where the 
effective date is not the same as the execution date as a "nunc pro 
tunc" assignment. If you have an ordinary assignment where those two 
dates are different, and try to just enter it as a "new assignment," the 
form won't give you the opportunity to state the effective date. The 
only way to do that is to use the "nunc pro tunc" entry.

But I don't think it matters for the agreement itself. You don't need to 
call it a "nunc pro tunc" assignment, just call it an assignment.

In fact I wouldn't call the first document "nunc pro tunc," I think that 
invites confusion. Everyone is familiar with an agreement where the 
effective date and signature date are different (our forms all 
accommodate that possibility), so calling it "nunc pro tunc" will just 
be "whaaaaat??"  I think "nunc pro tunc" is more properly used for the 
agreement itself when you've realized you made a mistake somewhere and 
need a do-over. Say for example, you assigned the marks to a division of 
a company instead of the company itself, so you need to get it assigned 
to the legal entity but everything is otherwise the same, including the 
original effective date. In that case, you might describe it in the 
heading or recitals as an assignment that is nunc pro tunc to an earlier 
version and replaces the earlier version of the agreement, so that the 
original malformed version never had legal effect.

But before anyone gets too clever with nunc pro tunc, courts aren't 
necessarily going to agree that they are effective. For example, they 
can't be used to manufacture standing post- complaint or avoid 
liability. The general rule is that they are effective and enforceable 
between the two parties but third parties aren't necessarily bound by them.

Pam

Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com

On 2/14/2025 12:30 PM, Jessica R. Friedman via E-trademarks wrote:
>
> *I know we’ve discussed this before many times, and if someone wants 
> to just point me to one of those discussions, that would be great.*
>
> A new client converted from Client LLC to Client Corp. but never filed 
> an assignment of its registered trademark with the PTO. As part of a 
> deal, before coming to me, Client Corp. sold the trademark to a third 
> party as part of an asset sale. I know that before I can record an 
> assignment from Client Corp. to the third party, I have to execute and 
> record an assignment from Client LLC to Client Corp. Should that 
> assignment be a nunc pro tunc assignment, or just an assignment dated 
> “as of” the date of the corporate conversion?
>
> 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>
>
> 1479430908386_PastedImage
>
>
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