[E-trademarks] Nunc pro tun assignments

[Michael Brown]

A  conversion of an entity type is different from an assignment and can be
recorded. That sounds like what should be done here.

Michael Brown
Michael J Brown Law Office
354 Eisenhower Parkway
Plaza I, 2nd Floor, Suite 2025
Livingston, NJ  07039
michaeljbrownlaw at gmail.com
michael at mjbrownlaw.com
www.mjbrownlaw.com
+1 973-577-6300  fax +1 973-577-6301
Google Voice +1 973-637-0358


On Fri, Feb 14, 2025 at 4:44 PM Pamela Chestek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
> URL: www.literarypropertylaw.com
>
>
>
> [image: 1479430908386_PastedImage]
>
>
>
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250214/3787847e/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 8892 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250214/3787847e/attachment.png>