Trademark Assignments: Stepping Into the Shoes - And Maybe the State - Of the Prior Trademark Owner


When a trademark holder assigns a trademark to a new owner, the new owner ?steps into the shoes? of the prior owner and succeeds to all rights and priorities of the prior owner. This means that the new owner can claim trademark rights extending back to the date on which the prior owner first used the mark. Recently, a federal court analyzed this general rule and determined that the new owner also steps into the prior owner?s shoes for purposes of establishing personal jurisdiction over the new owner. Accordingly, the new owner can be haled into an ongoing action in any state where the prior owner was subject to jurisdiction, even if the new owner does not conduct business there.

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