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IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

March 22, 2023 By John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

  • When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
  • When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
  • When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
  • When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
  • When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party.  Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient.  Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement.  A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

  • All involved parties – the assignor and assignee – should be identified.
  • The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
  • Consideration must be listed (i.e. what each party is receiving).
  • List the effective date of the transfer.
  • Contract must be duly executed.
  • Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public.  It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust.  The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

  • Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
  • Sale of business : A trademark owner may decide to focus on a different business or retire.
  • Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

  • Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
  • Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
  • Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
  • Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
  • Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
  • Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution.  Documenting assignments after the fact is definitely not a best practice and can lead to many issues.  It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive.  An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue.  A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor.  A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized.  Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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Trademark Assignment (Nunc Pro Tunc)

This template is a nunc pro tunc trademark assignment between an assignor and assignee. It may be used to memorialize in writing a prior oral agreement to assign a trademark. This template includes practical guidance, drafting notes, and alternate clauses. The term "nunc pro tunc" is a Latin expression that means "now for then." A nunc pro tunc assignment is thus essentially a retroactive assignment document that is used to reduce an assignment to writing now which has happened. The assignment is effective the date it was entered into orally, which could be months or years prior to the signing of the document. For guidance on trademark assignments (including nunc pro tunc assignments), see Assignments of Trademarks and Gilson on Trademarks § 3.12. For a related checklist, see Trademark Assignment Checklist. For a standard trademark assignment, see Trademark Assignment. For an assignment of an intent-to-use trademark application, see Trademark Assignment (ITU-based Application).

Legal Dictionary

The Law Dictionary for Everyone

Nunc Pro Tunc

The Latin term nunc pro tunc translates literally to “now for then.” This term is commonly used in the U.S. legal system to signify that a court ruling or order applies retroactively to a ruling made at an earlier date. The most common use of nunc pro tunc is to correct clerical errors, or accidental omissions made by the court in a written order or ruling. To explore this concept, consider the following nunc pro tunc definition.

Definition of Nunc Pro Tunc

Pronounced     nu̇ŋkˌprōˈtu̇ŋk

  • “Now for then,” as in a legal entry effective retroactively to a prior date on which it should have been made.

First Century    Latin

What is Nunc Pro Tunc

Latin terms abound in the U.S. legal system. The term nunc pro tunc is most commonly used to allow a judge a way to correct the written text of a ruling or order previously made, which was incorrectly written or expressed. The legal doctrine of nunc pro tunc can only be used to correct a mistake or omission in the written record, so that the record correctly reflects the actual events that took place at the proceeding. The key issue in whether a correction can be made nunc pro tunc is that it is a clerical mistake, not a judicial error, that is in need of rectification.

Obtaining a Nunc Pro Tunc Order

Obtaining a retroactive change to an existing court order involves showing that there was some error, accidental omission, or other issue which resulted in the original ruling being entered incorrectly. In many jurisdictions, a request for nunc pro tunc correction to an order is often granted ex parte , which means that only the party requesting the correction need appear, and no notice to the other party is required.

Example of Nunc Pro Tunc Order

Lilly and Sam attend a hearing to set child custody and child support matters during their divorce . A custody and visitation order is signed by the judge at the hearing, and the judge orders Sam to pay $950 per month in child support to Lilly. When Lilly receives her written copy of the court’s order, the child support is listed as $850 per month, which is incorrect. Lilly, or her attorney, may submit a request for a nunc pro tunc correction to the order, which would be effectively retroactive to the date the order was originally made at the hearing.

If, on the other hand, Lilly realized that the issue of which parent would have the children on Thanksgiving had not been settled, she could not ask the judge to add the holiday to the custody order that was signed on the date of the hearing, as that issue is not a simple correction to a clerical error. If Lilly wants to have custody of the children on Thanksgiving, and she cannot reach an agreement with Sam, she would have to file a motion to the court, and attend a hearing.

Related Legal Terms and Issues

  • Ex Parte – An action in a legal proceeding brought about by one party, without the participation or presence of the opposition.
  • Omission – The act of excluding or leaving something out; a failure to do something, especially something for which there is a moral or legal obligation to do.
  • Retroactive – Taking effect from a date in the past.

nunc pro tunc assignment example

APPLICATION FILING

Ownership transfer of intellectual property rights in general, what are assignments of intellectual property rights.

An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis complying with the various national assignment requirements. However, international or regional Intellectual Property Right applications often can be assigned centrally before the respective international or regional authorities such as the respective international or regional patent or trademark offices. Examples for such authorities are the International Bureau handling International Patent Applications under the Patent Cooperation Treaty (PCT), the European Patent Office (EPO) handling European Patents and the European Union Intellectual Property Office (EUIPO, formerly named OHIM) handling European Union Trademarks (EUTM) and Registered Community Designs (RCD).

What IP rights can be assigned?

Most Intellectual Property Rights can be freely assigned in part or in its entirety between any assignor and assignee. Certain partial rights may be assignable separately and independently from the underlying IP right, for instance the priority right determining the time rank of an IP right.

What is required for valid assignments of Intellectual Property Rights?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national, regional or international recording authorities. When looking at a bigger Intellectual Property Rights family, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, some international or regional Intellectual Property Rights should be assigned centrally while still pending for avoiding the hassle of dealing with such wide variety of national requirements that may be required after the issue date of the international or regional Intellectual Property Right.

What are typical form requirements for assignments?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

Why are assignments important?

If the assignee likes to exercise certain rights, the assignment must be recorded. A proper assignment and recordation thereof may for instance be required for the assignee = applicant to act in the proceedings before the various authorities. The failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. In some countries, this may cause significant enforceability delays. Also, a proper assignment is required for claiming priority rights. Further, it is helpful for the assignee to become an assignor for yet another assignment after the first assignment is recorded.

What is a “nunc pro tunc” assignment?

A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. Unless recognizing nunc pro tunc assignments, an assignment after the priority period may come too late. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

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Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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 A Dive into ‘Nunc Pro Tunc’

nunc pro tunc assignment example

Understanding Nunc Pro Tunc in Legal Parlance

A phrase in Latin, ‘Nunc Pro Tunc,’ stands for “now for then.” However, it is also used as a term to mean correction of judicial orders. Using the same in terms of  Intellectual Property Rights (IPRs)  corresponds to the assignment of such assets.

nunc pro tunc assignment example

Let’s Pick a General Example

The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by  Patent Laws . Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title. Therefore, Plaintiff A then responds by getting the Nunc Pro Tunc assignment signed by back-dating the assignment to a date before the lawsuit was lodged and filed. To give you a head up: This does not work as a good legitimate practice in all jurisdictions.

Nunc Pro Tunc: In Business Parlance

For a trademark registered on 1 st January 2015, Nunc Pro Tunc assignment typically shall look like this:

 “Now, therefore, for good and valuable consideration, the ASSIGNOR agrees that ASSIGNOR hereby assigned unto the ASSIGNEE Nunc Pro Tunc effective as of 1 st September 2022, all right, title, and interest in and to the trademark XXX bearing registration no:******. In testimony, whereof, the ASSIGNOR has signed this instrument on 1 st September 2022.”

Herein, the assignment is deemed to have been executed on 1 st January 2015; but is deemed to have been effective from 1 st September 2022.

In business terms, Nunc Pro Tunc   assignments are usually used where past  Intellectual Property (IP)  assignments are made verbally or by mode of conduct. The same is not very unusual since it may so happen that proprietors keen to make an immediate move in the market may “leave for later” or may forget to reduce agreements in writing. In such scenarios, Nunc Pro Tunc   assignments are commonly drawn and deduced to bridge the gaps in the “chain of title” for an IP asset. It can also happen when entities and/or assets are sold – but proper paperwork is misplaced. In such an event, purchasers often consider themselves as the obvious owners of such patents, trademarks, or copyright belonging to the former owner but the missing documents lead to ‘gaps’ in the chain of title. These ‘gaps’ can be cured by obtaining a Nunc Pro Tunc   assignment from the original owner of the IP asset in favor of the later purchaser of the transaction. In the same manner, Nunc Pro Tunc   assignments are often utilized to reach an amicable settlement in litigated matters involving claims over an IP asset, be it a patent, trademark, and/or copyright.

Nunc Pro Tunc: To Reach a Settlement in Litigation

For the purpose of litigation, Nunc Pro Tunc   assignments are generally utilized to give a party a legal standing to initiate litigation, i.e., the right to sue or be sued. To have a legal ‘standing’ to initiate litigation, a party to the suit must have proof of rightful ownership or proof of title and/or interest in the patent, trademark, or copyright subject. However, as discussed earlier hereinbefore, for courts, ‘standing’ is passed based on the effective date of the assignment and not the earlier date listed in the Nunc Pro Tunc   assignment.

Conclusion: An Acceptable Practice or Not?

It can be simply contemplated that where a non-owner or licensee is given the right to sue, it would give impetus to enmesh the judiciary in abstract legal battles while creating a risk of multiple litigations. It would also provide an incentive for parties to acquire assignment rights to expand their scope of operation and litigation. Inevitably, it would result in a delay in justice delivery and an increase in expenses. The same would defeat the cause of the judicial organ.

It is for this reason that in some countries, such Nunc Pro Tunc assignments are recorded, while in others, no acquiescence of retroactive effect assignments is admitted.

Documenting deeds of assignments after a transaction that has been assumed to be in effect is most certainly not a best practice and can affirmatively lead to several issues. However, it is the only way to attempt to fix an error that has occurred sometime in the past.

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Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?

What is a Trademark Assignment? How Do I Assign Trademark Rights?

trademark assignment

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another.  In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public.  Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee.  In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment.  This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO).  This should be done electronically using the Electronic Trademark Assignment System ( ETAS ).  You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal).  It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.  In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark.  If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek.  If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below.  I look forward to hearing from you soon.

PatentAssociate.com

Stephen E. Zweig, PhD JD, Patent Attorney

Nunc Pro Trunc assignments for patents and trademarks assignments

Patent and Trademark assignments

The uspto epas/etas assignment process, and legal chain of title principles, help the public determine who owns a given patent or trademark. “ nunc pro trunc assignments ” are sometimes used to clear up gaps in the record..

Who owns that patent? Some countries automatically assume that patents belong to the employer. However the US legal system presumes that patents originally belong to their human inventors. This is based on various “right of capture” cases involving foxes and other critters that go back to medieval/roman times.

The chain of title

A “chain of title” shows how ownership and other rights to a piece of property changed over time. The underlying concepts are based on real estate law. Over over hundreds of years, this law developed methods to protect the innocent against various real estate scams. Here we will skip over many years of colorful and sometimes bloody history and focus on modern-day IP.

The law requires an unbroken series of records handing off ownership from one owner to the next. This chain must extend from the original owners (the inventors) to the present owners. The USPTO helps manage this process through their online “Electronic Patent Assignment System” (EPAS). The USPTO also has a similar system for Trademarks, called the “Electronic Trademark Assignment System” (ETAS).

EPAS – Electronic Patent Assignment System

The EPAS system automatically records (and display s) the chain of title from the original inventors to the present owner(s). It is often useful to see “who” owns “what.”

Real estate history is full of frauds, such as selling the same property multiple times to unsuspecting purchasers. So, various legal anti-fraud measures have evolved.

In particular, the law tends to treat innocent “good faith” (bona fide) purchasers more kindly. But the purchasers must show some prudence, such as by looking up assignment records before purchasing. This system won’t work if the assignment records are not current. To keep the system up-to-date, the USPTO follows 35 USC § 261 , which states:

35 USC § 261: An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

What does this legalese mean? It means you should register your patent (or trademark) assignments within three months .

Nunc Pro Trunc Assignments

In the real world, businesses are often bought and sold with long contracts. The IP list usually ends up in the appendix of these contracts. As an intangible property, everyone tends to overlook this appendix. Then, sometimes much later (often as part of due diligence for a later sale), someone notices that the IP was not correctly assigned. The results are often quite exciting. Can you say “ SNAFU?”

Retroactive assignments : You can usually fix late assignments by filing the assignments retroactively. The USPTO calls these “ Nunc Pro Tunc Assignments ” (Latin for “now for then”). However, the drawback of such late assignments is that the “automatic” anti-fraud legal protection no longer operates. You don’t need these automatic protections if there is no fraud. However, the automatic protection occurring with on-time filing is preferable.

Illustration: Blockchain by James Fok from the Noun Project

  • Practical Law

Intellectual Property: Assignments and Transfers

Practical law practice note w-005-5845  (approx. 23 pages).

  • Trade Marks
  • United States

How Can I Correct An Assignment?

  • Post author By Austen Zuege

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document .

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b) ) and the U.S. Copyright Office (in Compendium 2308.1 ) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

  • Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
  • Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
  • Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive ( nunc pro tunc ) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed ( nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

  • Tags Assignments , Copyrights , Patent Prosecution , Trademark Prosecution

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Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

  • I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
  • I got married just after I filed my application and my last name changed.  This is a name change of the owner. 

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an  Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP)  section 501.01(a) . 

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the  TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons: 

  • A critical piece of information was omitted from the cover sheet. 
  • The document is illegible or not scannable. 
  • The information on the cover sheet and the supporting document do not match. 
  • The assignment was not transferred with the good will of the business. 

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 . 

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

  • Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
  • Enter the new name in the “Owner” field in the “Owner Information” section of the form.

Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet 

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to: 

Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

If you file by paper, we will record your changes within 20 days of filing. 

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

  • Go to TSDR .
  • Enter the application serial number or registration number.
  • Select the “Status” button.
  • Scroll down to the “Current Owner(s) Information” section. 
  • Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

  • If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
  • If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form . 
  • If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

For further information, see TMEP Chapter 500 and look at the frequently asked questions .

Additional information about this page

§ 21:18. Documents which will be recorded—FORM: Nunc pro tunc assignment of trademark | Secondary Sources | Westlaw

nunc pro tunc assignment example

§ 21:18. Documents which will be recorded—FORM: Nunc pro tunc assignment of trademark

Tmpracform § 21:18 barry kramer and allen d. brufsky trademark law practice forms  (approx. 3 pages).

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COMMENTS

  1. IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and

    In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning "now for then."A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date. For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc ...

  2. Trademark Assignment

    In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. ... Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically ...

  3. Trademark Assignment (Nunc Pro Tunc)

    This template is a nunc pro tunc trademark assignment between an assignor and assignee. It may be used to memorialize in writing a prior oral agreement to assign a trademark. This template includes practical guidance, drafting notes, and alternate clauses. The term "nunc pro tunc" is a Latin expression that means "now for then." A nunc pro tunc assignment is thus essentially a retroactive ...

  4. Nunc Pro Tunc

    The Latin term nunc pro tunc translates literally to "now for then.". This term is commonly used in the U.S. legal system to signify that a court ruling or order applies retroactively to a ruling made at an earlier date. The most common use of nunc pro tunc is to correct clerical errors, or accidental omissions made by the court in a ...

  5. Intellectual Property: Assignments and Transfers

    A Practice Note discussing the legal requirements for the assignment or transfer of intellectual property (IP), including patents, trademarks, and copyrights, and key considerations for an IP transferee or assignee. This Note discusses transfers by operation of law, partial assignments, nunc pro tunc assignments, priority between conflicting transfers, accrued claims for past infringement ...

  6. Ownership Transfer of Intellectual Property Rights in General

    A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded. ... For example, for validly claiming priority rights, the priority ...

  7. A Dive into 'Nunc Pro Tunc'

    The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by Patent Laws. Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title.

  8. Trademark Assignment

    I'm experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059, via email at morris ...

  9. PDF Using Assignment Center for Trademarks

    Corrective Assignment. Previous reel number, previous frame number, and. identify conveyance text of the original assignment. Other. Brief description of the nature of conveyance transaction. Do not select "Other" if the nature of conveyance is. Assignment • Merger • Change of name • Nunc Pro Tunc • Assignment of the entire interest ...

  10. Patent and Trademark assignments

    Retroactive assignments: You can usually fix late assignments by filing the assignments retroactively. The USPTO calls these "Nunc Pro Tunc Assignments" (Latin for "now for then"). However, the drawback of such late assignments is that the "automatic" anti-fraud legal protection no longer operates.

  11. Federal Circuit law governs patent assignment interpretation and nunc

    Nunc pro tunc assignments, the Court clarified, cannot retroactively confer standing (citing Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998)). One narrow exception to the ...

  12. Patents, Professional Perspective

    Thus, traditional nunc pro tunc patent assignments may only act to signal that there is a flaw in patent ownership. In 2020, the U.S. Court of Appeals for the Federal Circuit in Schwendimann v. Arkwright, created confusion about nunc pro tunc agreements. The court held that if a technically faulty assignment is repaired, but not replaced, under ...

  13. Intellectual Property: Assignments and Transfers

    A Practice Note discussing the legal requirements for the assignment or transfer of intellectual property (IP), including patents, trademarks, and copyrights, and key considerations for an IP transferee or assignee. This Note discusses transfers by operation of law, partial assignments, nunc pro tunc assignments, priority between conflicting transfers, accrued claims for past infringement ...

  14. What is a Nunc Pro Tunc Trademark Assignment?

    A nunc pro tunc trademark assignment is a legal document that retroactively assigns ownership of a trademark from one party to another. The term "nunc pro tunc" is a Latin phrase that means "now for then," and it indicates that the assignment is being made retroactive to a date in the past. Nunc pro tunc assignments are typically used ...

  15. Nunc Pro Tunc Assignment to Bridge Priority

    A nunc pro tunc trademark assignment is one where the parties agree the assignment was granted on an earlier date in order to retroactively document a transfer of ownership. Latin for "now for then," a nunc pro tunc document can be thought of as a backdated document. This often is used to correct an earlier oversight, such as to bridge a gap in the chain of title where the proper paperwork ...

  16. PDF Assignment Center Training Guide Patents

    Name", "Nunc Pro Tunc" or "Assignment of the entire interest and goodwill", do not select "Other". Please select the appropriate conveyance type from drop -down menu. ... Example: Search using "Assignment number" as separate search using the PCT number. Step 6.A. 46 Properties - multiple properties ...

  17. How Can I Correct An Assignment?

    A retroactive assignment is called a nunc pro tunc assignment, which is latin for "now for then". These are widely used to correct errors in a prior assignment. The USPTO's electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

  18. Trademark Assignment

    TRADEMARK ASSIGNMENT. (NUNC PRO TUNC) Whereas, TEAMM Pharmaceuticals, Inc., a Florida Corporation having a place of business at 2502 Aerial Center Parkway, Morrisville, NC 27560, ( ASSIGNOR ) has adopted, owned and used the trademark XODOL, registered in the U.S. Patent and Trademark Office, Registration Number 2943009 on April 19, 2005; and.

  19. Retroactive Assignment Fails to Bring into Force Earlier ...

    For example, CTP could have received a direct assignment from Banta. Or if R.R. Donnelley's original assignment to Media assigned future or expectant interests in the patents, the nunc pro tunc assignment could have effectively transferred those rights from R.R. Donnelley to Media.

  20. Nunc pro tunc

    Nunc pro tunc may apply also to acts that are allowed after the legally-allotted time to do them has passed. For example, in the probate of an estate, if property, such as lands, mineral interests, etc., are discovered after the final decree or order, a nunc pro tunc order may include the discovered lands or assets into the estate and clarify ...

  21. Trademark assignments: Transferring ownership or changing your name

    Answer "yes" to the question at the beginning of the form that asks if you need to change the owner's name or entity information. Enter the new name in the "Owner" field in the "Owner Information" section of the form. Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate.

  22. § 21:18. Documents which will be recorded—FORM: Nunc pro tunc

    Documents which will be recorded—FORM: Nunc pro tunc assignment of trademark TMPRACFORM § 21:18 Barry Kramer and Allen D. Brufsky Trademark Law Practice Forms (Approx. 3 pages) 2 Trade Law Prac Forms § 21:18

  23. Nunc Pro Tunc: Where and How to Use it?

    Kate Agyemang, Sarah Reich, Annual Civil Litigation Conference 8B, 2019 CanLIIDocs 3809.