[E-trademarks] Nunc pro tun assignments

Fri Feb 14 23:14:44 UTC 2025

Recently, prior to filing a Section 8 & 15, I needed to update ownership of the registration. I recorded a nunc pro tunc assignment with the effective date noted in the agreement and also entered into the assignment cover sheet.  Then I recorded an entity conversion.  After the two recordations, title showed in the name of the former entity and not the current entity.  I called the assignment division and was told I needed to speak with the post reg division because the assignments had already been recorded.  At the post reg division, I was told in definite terms that they go by the execution date and not the effective date of a document.  This was the opposite of my understanding, and it made no sense in this situation, where the nunc pro tunc assignment with an effective date prior to the date of execution and filing of the conversion was instead deemed to be the current vesting. I ended up speaking with a helpful person in the Trademark Assistance Center, sharing with her my backup plan of entering the correct vesting and assignment reel and frame into the miscellaneous statement section of the Section 8 & 15.  She told me that the title will be updated when the 8 & 15 is processed.

Mary

Mary A. Harris, Esq.
960 Toro Street
San Luis Obispo, California USA 93401

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Michael Brown via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Friday, February 14, 2025 2:18 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Michael Brown <michaeljbrownlaw at gmail.com>
Subject: Re: [E-trademarks] Nunc pro tun assignments

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

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