[E-trademarks] Prospective Assignments

Tue Jan 7 23:33:24 UTC 2025

Well on the patent side of things, while in law school, I would have thought that one couldn’t enter into a valid contract that would automatically, without more, assign ownership of a patentable invention that’s yet to be made.  That is, until I read the case of Stanford University v. Roche Molecular Systems, Inc., 563 U.S. 776 (2011), wherein a confidentiality agreement of Cetus Corporation with a consultant included a recitation that the consultant “hereby assigns” rights to future inventions arising from the consultation. (Cetus was eventually acquired by Roche.)  Although the consultant was also a faculty member at Stanford University and had agreed to assign to Stanford inventions made in the future, somehow the courts confirmed that the “hereby assigns” language in the Cetus agreement trumps Stanford’s  “agree to assign” language.  See https://en.wikipedia.org/wiki/Stanford_University_v._Roche_Molecular_Systems,_Inc.

-Gerry
Gerry J. Elman, J.D.
Elman IP
Intellectual Property Matters
6117 St. James Place, Denton, TX 76210
610-892-9942   www.elman.com<http://www.elman.com/>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Tuesday, January 7, 2025 4:59 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>; voyer at keganlaw.com <daniel at keganlaw.com>
Subject: Re: [E-trademarks] Prospective Assignments

Well, since “tunc” just means “then”, I’d say we have a nunc pro tunc, it’s just the “tunc” is a future “then”. Just for laughs, I just pretend went through the first few steps of the process for an assignment “nunc pro tunc”. So, I can confirm that the date can’t be in the future for a “nunc pro tunc” with a future effective date.

[cid:image006.png at 01DB6127.C9ABA610]

I think you can file for recordation almost anything (even if it is really a non-right) under whatever is closest to the “misc” category, if you don’t have to state an effective date (like, I think the regular assignment you just enter the execution date). But why would you record something like this? Speaking as someone who’s done a lot of IP side due diligence, a non-assignment recorded as an assignment really could throw a spanner into the works – it seems to me that it’s fundamentally misleading (even if permissible) to record an interest that isn’t an interest yet and may never be. Even though interests in trademarks are not perfected at the PTO, it still serves a key “notice” function.

Just thinking out loud!

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Welch, John L. via E-trademarks
Sent: Tuesday, January 7, 2025 1:45 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Welch, John L. <John.Welch at WolfGreenfield.com<mailto:John.Welch at WolfGreenfield.com>>; voyer at keganlaw.com<mailto:voyer at keganlaw.com> <daniel at keganlaw.com<mailto:daniel at keganlaw.com>>
Subject: Re: [E-trademarks] Prospective Assignments

EXTERNAL EMAIL
Would you call it “nunc pro futurum”?
I agree with Carl.
Would the USPTO record it? Once you put in the effective date in the recordation cover sheet, I think it would be kicked out.
JLW

[cid:image008.png at 01DB6127.C9ABA610]

John L. Welch
Senior Counsel
Admitted to Practice: Massachusetts, New York, and Washington, DC
jwelch at WolfGreenfield.com<mailto:jwelch at WolfGreenfield.com>
Tel. 617.646.8285
[cid:image010.jpg at 01DB6127.C9ABA610]<http://thettablog.blogspot.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of voyer--- via E-trademarks
Sent: Tuesday, January 7, 2025 1:31 PM
To: Oppedahl Carl <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: voyer at keganlaw.com<mailto:voyer at keganlaw.com> <daniel at keganlaw.com<mailto:daniel at keganlaw.com>>
Subject: Re: [E-trademarks] Prospective Assignments

Seems an “asssignment” as of a future date is a promise to assign, not an actual assignment.
Losts can happen before then. Death, change of mind, assignment to another. There might be
an action for breach of promise, but thee contingent assignee won’t have a confirmed property interest
by the earlier document.
Daniel Kegan
Kennett Sq PA

On Jan 7, 2025, at 12:44 PM, Janice Housey via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
All--
I have recorded many nunc pro tunc assignments over the years but is it possible to record a PROSPECTIVE assignment e.g., a typical assignment document but with the effective date being in the future?  Any other issues beyond recordation?  It does not seem like "best practice" maybe—  but are there any legal/USPTO problems with doing so?

Janice Housey
Litmus Law PLLC
4 Weems Lane #240
Winchester, Virginia 22601
703.957.5274 office
703.851.6737 cell

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