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Our Services

Trademarks

Intellectual property law is complex and ever-changing, so our clients hire our practice to make sure their work is protected from theft and infringement. We represent creators and owners of recognizable brands and intellectual property, and advise them in registering, protecting, licensing and maximizing the value of their assets. Whether you're an entrepreneur, artist, writer or small business owner, we'll work with you to streamline the process and help you complete and register the proper documentation to cover your intellectual property. Our aim is to take care of the legal part while you focus on your career or business.

 

Services include, among others:

  • Registration, preparation, monitoring and general advisement on intellectual property matters

  • Responding to Office Actions from the USPTO

  • Counsel on initiated and solicited exploitation of intellectual property assets through licensing, sponsorship, merchandising, advertising, and derivative works.

 

Why should you obtain a trademark?

 

You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits. Here are some specific benefits of having a federally registered trademark:

 

  1. Constructive notice nationwide of the trademark owner's claim.

  2. A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration.

  3. The ability to bring an action concerning the mark in federal court.

  4. Registration can be used as a basis for obtaining registration in foreign countries.

  5. The right to use the federal registration symbol ®.

  6. Registration may be filed with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.

  7. Listing in the United States Patent and Trademark Office's online databases.​

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Protect what’s yours, avoid costly mistakes, and promote the success of your creative projects and works. When you work with us, your trademark law matter will be handled with detail and care. Contact our office today to schedule your free consultation.

  • Do I need an entertainment lawyer?
    Before you sign any agreement with anyone, you should always contact an entertainment attorney. Every contract is simply a starting point for negotiations, having an attorney that understands what should and should not be included in a contract or a deal can be the difference between earning substantial money and finding success in the entertainment industry and having an artist, producer, writer or company end up with little to nothing for their hard work and creative efforts.
  • I have a writing or creative partner, do we need an attorney?"
    Yes, definitely. Parties that create with each other on a consistent basis will probably benefit greatly by having a partnership agreement and/or possibly functioning through their own legal entity, wether a corporation or an LLC. An entertainment attorney with experience in business development and formation can help guide you into the entity that would be best for you as well as work with you to create a detailed partnership agreement to clearly define responsibilities, who owns the group name, how splits on copyrights or created materials should take place, what happens if the partnership ends, etc.
  • Do I need an entertainment attorney if I already have an agent?
    In most situations you do. An agent in most entertainment settings (movies, television, music, literature, etc.) helps you find opportunities in your specific area and often negotiate the larger deal points and payment. The entertainment lawyer often drafts or negotiates and finalizes the "long form" contract, making sure that everything that the client and their agent expected and negotiated are accurately represented in the contract. A good agent and attorney should be able to work as a team, each playing their respective roles to help the client further their goals and maximize earnings.
  • How much does an entertainment attorney charge?
    There are different payment structures depending on the type of work being done, if the work is one time or ongoing, the financial situation of the client, etc. Many entertainment attorneys charge on a percentage basis, usually 5%-10% depending on the type of deal, if the attorney brought the deal to table, etc. Contract drafting, reviewing and negotiations are often done on a "per contract" or individual basis either on a flat fee or hourly rate. Hourly rates for entertainment attorneys can range from $250 to $500 per hour and up, depending on the attorney, their level of experience and their location.
  • If my business is sued, is my personal property be at risk?"
    If you incorporate your business or form an LLC, this can help to protect your personal assets in the event of a judgment against your company that it cannot afford to pay. Forming a corporate entity creates a legal separation between your personal funds and property and that of the company. Therefore, unless you are intentionally engaging in illegal or fraudulent activity, utilizing company resources for personal purposes, or engaging in certain other wrongful acts, your personal property will generally be protected in the event of a lawsuit against your business.
  • How can I protect my business ideas?
    Depending on what is at stake, there are several options available for protecting your business ideas from being stolen or copied by others. If you would like to ensure that your business partners or employees do not share important business ideas or information with others, your best bet may be to create a non-disclosure or non-compete agreement that employees can be required to sign. These types of agreements help to ensure confidentiality among employees and other individuals associated with your business, and they also protect against their leaving your company to create a competing business nearby that utilizes your ideas. You may also want to protect your brand with a trademark. We are here to help you navigate all of these matters.
  • What does it mean to “pierce the corporate veil”?
    "Piercing the corporate veil" is a legal term of art that refers to holding a business owner, officer, or director personally liable when they have engaged in wrongful conduct, such as failing to maintain the required separation between the individual and the corporate entity. For example, this can occur when an owner uses corporate funds for personal purposes, or fails to observe proper procedures in operating the business. If found liable in this context, owners can be required to compensate plaintiffs from their personal assets for losses arising from their wrongful conduct.
  • How do I start my own business?
    Starting your own business can be a risky endeavor, and it requires careful thought and preparation. Being your own business owner, however, can also lead to a great deal of personal satisfaction and success. Initially, you will need to establish the legal structure for your business, such as a C Corporation or a limited liability partnership. This will depend on the individuals involved in your business, tax implications, and liability risks. We can help you decide on the legal structure that is best for you. Then you will need to register your business in the jurisdiction of your choice. This could be where you live, or where you want your business to operate. This will include filling out some basic paperwork and paying a registration fee. It is important to remember that this registration will need to be renewed yearly. Finally, you will need to obtain a business tax ID for paying corporate taxes to the IRS. You will also need to apply for any licenses or permits relevant to your business. For instance, if you will be starting a food-related business, you may need to obtain the necessary health and safety permits from your local government.
  • What is the best business entity for me?
    Once you have a business idea and business plan, the next step is to pick a business entity structure. There are many different types of businesses available to owners, and choosing the right one depends on the number of individuals, if any, who will co-own the business with you, your tax preferences, and any liability concerns.
  • How long does the process take?
    It may take us as long as or longer than two weeks to give you a major update, whether that means that we have a legal opinion for you, that we’ve filed your trademark application, or that we need more information. We generally file the application within two weeks after you’ve given us consent to file. After we’ve filed, we will email you to let you know, with proof-of-filing attached. Once the application is submitted, we should hear an initial answer from the USPTO after four (4) months. Because so many factors can affect the process, it’s hard to predict exactly how long it will take an application to mature into a registration. If everything goes right, you should have a fully registered trademark in 9 to 12 months, at which point you can stop using the TM symbol and start using the ® symbol next to your brand.
  • Is a federal registration valid outside of the United States?
    No. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.
  • What is the difference between TM and the R within a circle ®?
    Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.
  • Is Registration of the mark guaranteed?
    No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2. The most common reasons for refusing registration are because the mark is: - Likely to cause confusion with a mark in a registration or prior application; - Descriptive for the goods or services; - A geographic term; - A surname; - Ornamental as applied to the goods.
  • How is a trademark different from a patent or a copyright?
    A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others. Copyright protects original works of authorship, while a patent protects inventions or discoveries.
  • What constitutes interstate commerce?
    For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "Interstate commerce" involves offering a service to those in another state or rendering a service that affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).
  • I’m a citizen or business of a foreign country and I don’t have an address in the United States. Can I still apply for a U.S. trademark?
    Yes. As long you are represented by a US-licensed attorney (like us), there is absolutely no problem with using a foreign home address or foreign business address for a U.S. trademark application. You may file as a foreign individual or as a foreign business entity. If you want us to use a foreign trademark application or registration as the basis for registering our application here in the United States, we charge an additional fee of $100 per class because of the additional time we need to spend on such applications making sure the goods/services identifications are altered to be compatible with the U.S. Trademark Identification Manual.
  • What is a trademark or service mark?
    A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.
  • What if both the first search and the second search result in negative opinions? Can I get more searches?
    If our legal opinions for both your first choice of trademark and your second choice of trademark cause you to want to explore a third trademark, you can order a bundle of two more trademark searches/opinions and we will give you a discounted price, depending on the number of trademarks.
  • Should I register my name in plain text or should I register my logo? What if I want to trademark both? What if my logo has my name in it?
    Filing both a name/word mark and a logo requires two separate applications, but we only charge an additional $200 legal fee on top of the extra $275 or $350 filing fee, depending of the type of application, as long as the name and logo are for the same brand, meaning that if you want to trademark both the name and logo, you will need to pay an additional $475 or $550 in total, depending on the type of application, if you’re registering your trademark for one class of goods/services. For most businesses, the most important thing to trademark is their name in plain text. Registering the logo should usually be done as a separate trademark application. Technically you can save money and protect both your name and logo by registering the logo if it contains the name in it, but this is not recommended because if you ever change the design of your logo, you will risk losing your federal protection for the name.
  • How long does a trademark last? Do I have to renew it?
    Trademark protection lasts for as long as you’re using the mark in commerce, which could be hundreds of years if you want. Five to six years after registration, you have to file a maintenance document showing that you’re using the mark in commerce in the US. Four years after that, and then every 10 years, you have to renew your registration. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. As part of either of our trademark packages, we do our best to let clients know when these deadlines are coming up at no additional cost.
  • What if I want to file trademark applications for more than one brand? Do you offer bulk pricing?
    Fill out a separate trademark form for each mark. If you want to register several trademarks at once, we offer a “bulk” discount for three or more trademark packages purchased within a few weeks of each other. This discount is applied as a partial refund/rebate after the third purchase and each further purchase within a short timeframe, in the amount of 20% of the average legal fee (not including the filing fee) of the all of the packages. Note that the discounts are not applied to the first and second packages. For example, if you retain us for three or more trademark application filings in a short time period, at a normal legal fee of $350 each, your third, fourth, and fifth package will each have a partial refund of approximately $70 applied (20% of $350), for a total discount of $360. The best way to hire us in this manner is to use our online form once for each trademark package, mentioning that you want bulk pricing in the “Additional Notes” section of your form, the third time you submit the form.
  • Do I have to pay the entire amount right away?
    No. Only pay our service fee when you hire us and pay the government fee when your application is ready to be filed.
  • What forms of payment do you accept?
    We accept credit/debit card and different forms of online payment. If you would like to pay by some other method, let us know by emailing us. Have Questions? Call my office 24/7 at 787-249-8962 or e-mail me at: c.morales@legaloffice.com Más Preguntas más frecuentes.
  • Is a trademark search necessary?
    It is advisable to conduct a search of the office records before filing an application. Obtain a clearance search to make sure your new brand is available and doesn't infringe on anyone’s prior rights.
  • May I assign or transfer the ownership of my trademark to someone else?
    Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee.
  • Can I file for more than one class of goods/services? Should I? How much does each extra trademark class cost?
    Yes, you can file for more than one class of goods/services. The USPTO charges an additional full filing fee for each class, and we charge a small amount to cover payment processing and labor, so you’ll have to pay an additional $350 or $450 total fee for each extra class, depending on the type of application ($250-$350 goes to the government and the rest goes to payment processing fees and labor). If you want to file an application for more than one class, we can probably figure that out from the list of goods/services you enter on our form, or you may want to mention this in the “Additional Notes” section of our trademark form. One class is generally enough for most small businesses. We will not file for multiple classes without asking you first. List of the types of classes
  • Should I file a trademark application as an individual or as an LLC/business entity?
    Either way is fine, but there are some advantages to filing with an LLC or other business entity listed as the owner of the trademark. Filing with a business entity is helpful because you won’t have to re-assign ownership of the trademark if you sell the business to somebody else. Filing as a business entity is also good for individuals who do not wish for their personal details to be made public. Several websites “crawl” the USPTO trademark database, ensuring that applicants who file as individuals have their names, mailing addresses, and countries of citizenship listed prominently on Google and other search engines in connection with their trademark. If you wish to assign/transfer the rights of your trademark later on, we charge $200 to draft and customize a trademark assignment document for you and record it with the USPTO, plus a $75 filing fee per trademark.
  • Do I need any documents in order to file? What information do you need from me?
    No, most of our clients do not need to have any documents ready. You do not need any business formation documents or sales invoices in order to register a trademark in the US. If we do need any documents from you, we’ll ask you for them after you’ve retained us. All of the information we need from you is pretty basic information, such as what word/logo/slogan you want to register, what goods/services you want to register them for, what your mailing address is, etc.
  • Can I protect my trademark by registering it before I start to use it?
    Yes. You can declare your intent by filing an “Intent To Use” trademark application prior to actually using a trademark. If the trademark is allowed, you will be required to show use of the trademark before expiration of a six-month time period. If you are not ready to use the trademark in that period of time, you can submit a request for an extension of time to begin use. You can file up to five extension requests, each of which are six months long. This means that the timeframe within which you must begin using the trademark can be extended up to 30 months from the date of allowance.
  • Where are you licensed as an attorney? Can you represent me?
    Morales is licensed to practice law in New York, Florida and Puerto Rico, but we represent clients from all over the United States. Being in the same location as your trademark attorney has no tangible effect on your trademark’s chances of reaching registration. CM Legal Office is based in Manhattan, New York.
  • When can I use the TM and ® symbols? Am I unprotected until the application process is finished?
    You can use the TM symbol whenever you want (even before filing a trademark application). The TM symbol simply means that you consider yourself to have “common law” rights to your trademark, and it has very little legal significance. In the United States, you can only use the ® symbol next to your trademark when it is fully registered at the federal level, which is what we help you with. While your mark will not be fully protected until you’ve reached registration, you do gain two things on the day you file your trademark application. First, your application will have priority over any trademark application that has a later filing date than yours. Second, once you do reach registration, you will have retroactive trademark protection going back to the day you filed your application, meaning you can threaten anybody who started using an infringing mark after you filed your application, even if they started using it before you actually reached registration.
  • Can I trademark my company’s slogan?
    A company slogan used to indicate the source of goods or services can be registered as a trademark, provided all use requirements are met. Slogans or phrases used on T-shirts or buttons that are not used to identify a source of goods or services are not eligible for trademark registration.
  • Can I trademark a domain name?
    An Internet domain name can be registered as a trademark but only when it is used to identify and distinguish goods or services. Simply having a URL is not enough to register a trademark.
  • Do I need to submit a specimen showing use of my trademark in commerce? What if I’m not selling the product yet?
    If you are already using the trademark in commerce, we find your website or online listing ourselves and take a screenshot as proof of use. In the rare scenario where we fail to find this proof, we will ask you for a photograph of your product or advertising materials. If you are not using the trademark in commerce yet, we’ll most likely need to file the application under an intent-to-use basis and if our trademark application is successful, we will have to file a follow-up specimen several months after filing, which will cost $250 per good/service class ($175 government fee plus our $75 fee for payment processing and time spent) to file. If you are not using the mark in commerce yet for your goods/services within six months of receiving approval from the USPTO (called a Notice of Allowance), you can get up to five six-month extensions of time, for $225 each ($175 for the government fee plus $50 for payment processing and time spent) per class.
  • I already checked and my name isn’t taken. Should I bother paying for a search?
    The search is valuable not because the attorney searches a database (or Google) and tells you if the name you want is taken — it’s valuable because the attorney uses their experience to advise you when the situation is unclear. We know what to search for and how to identify whether any existing trademarks and brands are problems. Often it’s not the exact phrase being used that’s the issue, but rather a similar phrase in a related, but not identical, industry. Clients also frequently don’t realize that one of the words in their name is descriptive or generic in their industry, thus reducing the distinctiveness of their brand name. We give you a summary of the potential issues with the trademark, and break it down to an estimated percent chance of reaching registration. We also evaluate whether you’re likely to be sued for using the name. However, if you are not interested in a professional search, you can hire us just to file and monitor your trademark, with no search, which is an option meant for people who are already heavily invested in their brand names, have been selling their product for years, and know that they’re not going to change it at this point.
  • What if I only want a search, without the filing and office action responses?"
    We offer the option to only hire us for a search (and the accompanying legal opinion) for $250. If the results of that search are largely negative, you may have us perform a second search and give you a second legal opinion for only $100.
  • No unnecessary in-person meetings
    I recognize your time is valuable, and I believe in making the most of it by meeting virtually whenever possible, instead of requiring unnecessary in-person meetings.
  • Service at anytime
    I don’t believe in limiting my work to office hours or business days. I understand my client’s legal needs might arise at anytime, and I’m available and on-call for them even outside of business hours whenever an issue calls for it.
  • Honest upfront billing
    I am aware lawyers have gotten a reputation for surprising clients with high, unexpected legal fees only after the work has been done. Like my clients, I don't like unpleasant surprises. For this reason, I only charge flat-rate fees, established upfront. Too often, I’ve seen people who have signed up for a representation without a clear understanding of the finances involved. This causes confusion and dissatisfaction – two feelings that I never want my clients to experience. I make sure that all financial issues are clearly understood before I move forward with any representation.
  • Modern and fast method of communication
    Old-school law firms only use traditional methods of communication, whereas I understand today’s more efficient methods are more convenient for many of my clients. I won’t make you have to make time or sit through a phone call for simple and non-sensitive things that can easily be communicated in real-time, through text message or e-mail, if you prefer to.
  • Electronic payment options
    Many law firms still require old-fashioned forms of payment: cash, paper checks, or telephone-based credit card processing. While we do accept these forms of payment, we don’t require them. We prefer the ease of electronic payment processing – our clients can get their invoices via email, and pay online with a debit or credit card, or through any secure online platform.
  • Easy, free consultation"
    My clients usually reach out to me in times of crisis. The traditional model is slow and cumbersome – requiring clients them to leave email or phone messages, wait for a call-back, or cross-check calendars through an assistant. Recognizing the frequent need for immediate assistance, I’ve implemented an easy to use Free Consultation form you can fill out yourself with general information about your legal needs, which I’ll review and then get back to you immediately, through your preferred method of communication.

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