I (“Client”) hereby understand, give consent, and give Power of Attorney to all attorneys at the Law Office of Herbert T. Patty (“Attorney”) to represent me on trademark matters before the U.S. Patent and Trademark Office.
I understand that Attorney will represent me only after a successful conflict check. Until that time, I will be a Prospective Client of Attorney.
Client agrees to (1) retain Attorney to prepare and file a trademark application based on the online trademark submission form provided by Client and/or (2) serve as an attorney to manage future correspondence between the U.S. Patent and Trademark Office and Client regarding Client’s matter.
Attorney or agents of Attorney will keep Client informed of all pertinent correspondence with the U.S. Patent and Trademark Office as it relates to Client’s trademark application. If necessary, Attorney or other agents will consult with Client as necessary to ensure the timely, effective, and efficient completion of Client’s matter.
To protect Client’s interests, Attorney will deposit funds into IOLTA escrow trust account until (1) a conflict check is performed or (2) fees are earned.
If you sign up for a Trademark Service, you accept these terms, conditions, limitations, and requirements. Please read this Agreement carefully. .
TERMS OF SERVICE
Authority to Enter Agreement. If you are entering into this Agreement on behalf of a company or other legal entity, you represent that you have the legal authority to bind such entity to these terms, in which case the terms “you” or “your” shall refer to such entity. If you do not have such authority or if you do not agree with this Agreement, you may not sign up for or use any Legal Plan. If after your purchase we find that you do not have authority to bind the entity for which you ordered, you will be personally responsible for the obligations in this Agreement and the order you placed, including without limitation, the payment obligations. We are not liable for any loss or damage resulting from our reliance on any instruction, notice, document or communication, reasonably believed by us to be genuine and originating from an authorized representative of your company. If there is reasonable doubt about the authenticity of any such instruction, notice, document, or communication, we may, but are not obliged to, require additional authentication from you.
For trademark matters, the terms of service and representation agreement (“Agreement”) are entered into by and between the Law Office of Herbert T. Patty (“Attorney”) and the person who requests the trademark services (“Client”). This Agreement becomes effective on the date Client purchases the services described below, and only if Client elects to make such a purchase.
1. Limited Scope of Services
If Client seeks to utilize the services of Attorney for simply filing and/or managing Client’s trademark application, Attorney will not provide services that exceed the services listed on the online trademark submission form unless Client expressly retains Attorney to provide additional services.
As such, the following services are EXCLUDED from the Limited Scope of Services:
- Discussion on state trademarks and/or state law;
- Assessment of common law rights by others that might preclude you from securing common law rights or acquiring federal registration;
- Responses to Cease and Desist challenges from parties disputing ownership;
- Responses to Opposition proceedings against your trademark;
- Responses to Cancellation proceedings against your trademark
- Review, analysis, and formal opinion of prior art or trademark search results;
- Appeals to the Trademark Trials and Appeals Board (TTAB);
- Assessment of originality of mark;
- Assessment of ownership;
- Assessment of likelihood of confusion challenges;
- Assessment of statutory and court-sanctioned bars to trademarkability;
- Infringement of trademarks owned by others.
Note: The aformentioned list is not exhaustive and may include other services not explicitly specified.
Client may retain Attorney to provide all or some of the excluded services under a separate retention agreement.
2. Service Fees/Costs
For the Limited Scope of Services, and prior to the commencement of services, Client agrees to pay Attorney the charges described herein.
Furthermore, Client expressly agrees that the Attorney’s fees are earned once any one of the following conditions are met:
i) Attorney has conducted a preliminary review of the filing information submitted by Client;
ii) Attorney has performed a conflict check of third party use of the mark;
iii) Attorney has sent correspondence to Client regarding any substantive issue related to the preparation of Client’s pending trademark matter, including but not limited to, results from the conflict check, requests for proof or evidence of use-in-commerce, designating class(es) of goods and/or services, and results of a direct conflict search; or
iv) Client utilizes any of their allotted consultation time with Attorney.
3. Cancellation Policy
Client may cancel their request for services from Attorney any time prior to or during the commencement of services performed.
If Client requests to cancel services after Attorney commences to perform the requested trademark service(s) by Client, any service fees billed during the commencement of said services are non-refundable.
4. No Guarantee
- Attorney has made no representations, promises, warranties or guarantees to Client, expressed or implied, regarding the outcome of Client’s matter, and nothing in this Agreement shall be construed as such a representation, promise, warranty or guarantee.
- Attorney will perform a conflict check prior to filing a trademark application on Client’s behalf. In the event Attorney discovers pre-existing use of the mark by third parties, Attorney will not file a trademark application on Client’s behalf. In this event, Client will be refunded the charges expended on Trademark Island, LLC. less $100 for the service fee of the conflict check.
- Attorney cannot and does not make any representation that all of Client’s questions can be fully explored and discussed. Therefore, important aspects of Client’s business interests, mark likelihood of challenges by other parties and/or Client’s situation may not be addressed. If important aspects are not covered, this may negatively affect the scope and/or accuracy of the consultation.
- Client understands that Attorney is available for a supplemental consultation if Client believes that an initial consultation was insufficient for Client’s needs.
- Client understands that Attorney cannot file an Office Action response on Client’s behalf if the time limit given by the government has expired. In such instances, if an Office Action response request is made by Client after the time limit given by the government has expired, Client hereby authorizes the Attorney to file a Petition to Revive the trademark application if such an option is still available and to charge the applicable government fee associated with a Petition to Revive to the payment information provided by Client. If the option is no longer available, Attorney will refund all escrow IOLTA funds related to such a request to Client.
5. Consent to Attorney Changes and/or Discretion
Client agrees and authorizes Attorney to make changes to Client’s trademark application for the purpose of facilitating registration of Client’s trademark application in accordance with applicable law. These changes include, but are not limited to the following:
- The identification of goods and/or services including classes and descriptions provided by client.
- Any changes proposed by the governmental or trademark-issuing body overseeing Client’s trademark application, including but not limited not, disclaimers, translation statements, drawing descriptions, and changes to identification of goods and services.
i) Proof of Use/Specimens and 1(A) Applications
Where Client requests filing of a 1(a) Use-In-Commerce trademark application with the USPTO, via Client’s indication of current use-in-commerce on the online trademark submission form, Client expressly agrees and authorizes Attorney to examine the suitability of the proofs of use/specimens (“specimens”) submitted by Client. Where such specimens are not sufficient, Client agrees and authorizes Attorney to conduct an on-line search for alternate acceptable specimens, and to file such specimens with Client’s application without further approval from the client. Attorney will exercise its best efforts and discretion to ensure the accuracy and validity of such specimens submitted subject to Section 4.
Where Attorney requests Client to provide alternate specimens, if Client fails to provide the requested alternate specimens within a week of Attorney’s initial request, Client agrees and authorizes Attorney to file with the current specimens provided and/or other specimens deemed acceptable by Attorney.
ii) Logo Mark Applications
Where Client requests filing of a logo mark application, Client agrees and authorizes Attorney to file the logo mark application based upon the colors expressly claimed and/or featured on the logo mark submitted by Client. Client expressly acknowledges that it is their responsibility to request, in writing, that a logo mark be filed without a color claim if desired.
6. Choice of Attorney
Client agrees and authorizes Attorney to select any licensed U.S. trademark attorney or agent to work on the client’s matter at Attorney’s discretion.
7. Trademark Island
- Attorney is an entity separate from TrademarkIsland.com and its parent company, Trademark Island, LLC. As such, Attorney is not a subsidiary or division of Trademark Island, LLC. Trademark Island, LLC does not receive any portion of Attorney’s fees and any arrangement subsequently made by Client and Attorney is strictly between Client and Attorney.
- Client expressly authorizes Trademark Island, LLC, to directly and confidentially transfer Client information provided via the Trademark Island website to Attorney for the sole purpose of allowing Attorney to perform the Limited Scope of Services set forth herein. Furthermore, Client expressly authorizes Trademark Island, LLC, and/or Attorney to share limited Client contact information for the sole purpose of allowing Attorney to perform the limited services requested by Client evidenced on the online trademark submission form. Nothing herein shall relieve Attorney of its duty of confidentiality beyond the confidential transfer of inputted information onto the Trademark Island website between Trademark Island, LLC and/or Attorney to adequately perform the services requested. Client is instructed to not share confidential information with Trademark Island, LLC and to directly correspond with Attorney regarding matters confidential in nature requiring privileged communication between a licensed attorney and Client.
8. Future Work for Others
Client agrees that Attorney or representation of Client is for the limited scope of services specified on the online trademark submission form, and Client agrees that Attorney may represent parties in the future on matters that may be adverse to Client, so long as such future representation does not involve confidential information which Attorney gained from its representation of Client pursuant to this Agreement. In any event, Attorney will seek to prevent any and all conflicts of interest by withdrawing Power of Attorney and notifying Clients to select another firm when necessary. During such a process, Attorney will preserve client confidences and will work to make such a transition as smooth as possible. Client agrees that email is the primary mode of correspondence, and therefore Client agrees to regularly check for emails from Attorney for important, time sensitive communications.
9. General Responsibilities of Attorney and Client
Attorneys performing legal services for Client under the terms of this Agreement are not agents or employees of Trademark Island, LLC. Any attorney rendering legal services to Client under an agreement shall maintain the attorney-client relationship with the Client, and is solely responsible to the Client for all legal services provided. It is within the sole discretion of the Attorney to determine whether claims or defenses pertaining to any matter under this Agreement present a frivolous or otherwise unmeritorious claim or defense. Trademark Island, LLC will in no way influence or attempt to affect the rendering of professional services of the participating attorneys.
Attorney will keep Client aware of developments as necessary to perform services and will consult with Client as necessary to ensure the timely, effective, and efficient completion of legal work. Unless Client instructs Attorney otherwise in writing, this contact may be through email without encryption (the risk is that a third party may intercept the communication). If and when it is necessary for Attorney to engage other counsel to handle filings and other matters outside the United States, the other counsel may form a direct and independent attorney-client relationship with Client. Client is financially responsible for payment of the other counsel’s fees, and the counsel is directly responsible to Client for proper discharge of professional services rendered by that associate.
10. Waiver of Conflicts
Client hereby agrees, by expressly accepting this agreement, that Attorney may publicly disclose that Attorney represents Client. Attorney may have to disclose such representation to other clients for reasons of identifying and/or resolving client conflicts. The U.S. Patent and Trademark Office and the European OHIM Trademark Office also makes such relationships public.
Attorney’s expertise derives from experience representing different clients, some of whom focus on similar business areas. There is the potential that a separate advertising attorney associated with Trademark Island, LLC. may prepare and prosecute trademark applications for another entity (perhaps a competitor) in the same, similar, or related technology area as the Client. It is our belief that such representation does not amount to a potential or actual conflict as defined by the U.S. Patent & Trademark Office and the California Rules of Professional Conduct.
In most situations, it is not even possible to predict such potential conflicts. Therefore, Attorney wants Client to be aware that Attorney does not view such possibilities as requiring any disclosure under California Rule of Professional Conduct Rule 3-310(B). By accepting this agreement, Client hereby provides consent to Attorney to representation of such other clients. Attorney will take reasonable steps to prevent any information provided by Client from being made available to members of Attorney working for competing entities in the same technology area. In addition, if Client is aware of any entities for which Attorney should take such reasonable steps, Client is invited to identify such entities in writing. It should also be noted that if a dispute occurs between Clients, Attorney will not represent either of Clients in the dispute.
11. Agreement for Binding Arbitration
Attorney would endeavor to resolve any disagreements in a fair and amicable manner. If it is not possible to resolve the disputes then all disputes or claims including but not limited to those relating to fees or the quality or appropriateness of services, shall be resolved by binding arbitration.
The arbitration shall be conducted by the Judicial Arbitration and Mediation Services (“JAMS”). The arbitrator must decide all disputes in accordance with the chosen association’s rules and in accordance with California law, and shall have power and obligation to decide all matters submitted, including arbitration and legal questions raised by pleading or summary judgment motions. In the event that any dispute or claim is not subject to arbitration by the arbitrator, all parties agree that their respective rights and obligations shall be governed by the laws of the State of California, excluding its choice of law rules. Furthermore, in the event that any dispute or claim is not subject to arbitration by the arbitrator, all parties agree that any and all legal action or proceedings shall be instituted in a state or federal court in California, and in the County of Santa Clara.
Client understands that it is free to consult with other counsel about whether to agree to arbitration or to any other term of this agreement before accepting it and the Client agrees that it is voluntarily accepting this agreement.
If any section of this Agreement is found by competent authority to be invalid, illegal or unenforceable in any respect for any reason, the validity, legality and enforceability of such section in every other respect and the remainder of this Agreement shall continue in effect.
Should Client need to discuss any matter relating to legal representation by Attorney, Client should call Attorney directly at 408-292-1494 (U.S. office).