Copyright & Trademark Practice
Maldonado Law understands protecting your creative work is an important and critical task. Being creative and innovative is not easy. Artistic works, videos, music, books, software, or a brand takes both time and effort. Losing that effort to others who are less original and who did not create it first is frustrating. Maldonado Law offers a full range of copyright and trademark services to secure and enforce intellectual property rights as well as resolve conflicts that may arise in cases of infringement, be they on the virtual online world or in the real world.
- USPTO Trademark Registration or Service Mark Registration
- Florida and state Trademark Registration
- Federal and State Trademark Infringement Claims
- Registration of works with Unites States Copyright Office
- Copyright Counterfeiting & Digital Millennium Copyright Act Claims
- Patent Referral After Rewiew to U.S. Patent Attorneys
USPTO Trademark or Service Mark Registration
Protecting your brand (be it over a product like equipment, a technology, a consumer good or a novelty item, or a service you provide) is an important priority to you as it is us. However, merely self-registering a name as a d/b/a or using your company name as a brand is not enough. Even registration with the USPTO or in the state of Florida may not be enough these days. Others may have prior use or rights to the name, logo, or trade appearance of your brand that can invalidate the use of your brand or conflict and lead to infringement litigation against your brand. As a part of any trademark or service mark sought by our clients, we require comprehensive trademark and service mark searches before any submission. Maldonado Law provides trademark search, prosecution (registration), Intent to use Mark registration, and trademark litigation services for our clients.
It’s important because your trademark or service mark will:
- Identify your company, its business and a particular product or service separate from competitors
- Be a source of identifiable profits in your industry
- Have value based upon the quality and reputation of your product and customer service associated with it
- Be an independent asset to your company
To keep your trademark’s value to you and your company, it must be constantly protected against:
- Tolls who register a mark or word mark with no intention of using it
- Competitors who merely change minor elements of your logo or letters of a word that is phonetically the same pronunciation
- Online dilution by infringers, clone marks, or substantially similar marks or trade dress that will cause your consumers to be confused
- Counterfeiting of your brand, trademark or product/service by in-country of out-of-country counterfeiters
Federal and State Trademark Infringement Claims
Once a brand has cleared the USPTO as a trademark or service mark, enforcement of your trademark rights are of the utmost importance. In addition to direct infringement, online dilution of brand and counterfeiting are the greatest risks for USPTO registered marks. Our firm offers the following services for clients with existing registered marks or in the post registration phase, they include:
- Preparation of license agreements, assignments and security interests in a federal Mark
- Due diligence for clients branded transactions, and to investigate and discover dilutions, counterfeiting or diversions by infringers
- Trademark infringement cease and desist demand letters
- Anti-counterfeiting civil actions with writs for search and seizure to seize and destroy counterfeit goods in ports of entry (in Florida) or in warehouses.
- Investigation of brand counterfeiting, unauthorized brand use, sale of counterfeit goods
- Investigation of online dilution of brand or Marks
- Federal litigation of trademark infringement, unfair competition and dilution of Mark (over the Internet and in distribution channels)
- Defense of alleged trademark infringement and trademark counterfeiting
Maldonado Law can assist you in the protection of your trademark in the above areas in post-registration phase. However every mark, like every client, is unique. Since trademark registration and enforcement is fact and usage driven, so there are a number of issues that can affect a viable mark. First and foremost of these being the specific entry of the mark into interstate, or just statewide, commerce. Issues as to your first use of the Mark, the location, any internet publication or the e-mail distribution of the mark all are essential in establishing or dispelling a mark holder’s rights. Consultation with Maldonado Law before any estimate of work or engagement is required for the interest of both our clients and attorneys. Maldonado Law reserves the right to decline any trademark work based upon information provided at the consultation.
Defense Federal and State Trademark Infringement Claims
Maldonado Law provides defense representation of trademark infringement claims. The most common defenses to a federal infringement case are fraud in claimant obtaining a Mark registration, trademark misuse, descriptive fair use, nominative fair use, unclean hands, laches and protections afforded under the US First Amendment. The merit of these defenses depends on the facts and circumstances of the Mark at issue, the alleged infringement, prevailing court decisions, and conduct of the parties at issue. Sometime a claimant also alleges violation of both Florida trademark protections under state statute and Florida common law in a federal action. Sometimes the claimant never used the Mark in interstate commerce and used it exclusively within the state of Florida and sues in the Florida courts only. Defenses similar to the federal defenses exist under Florida law, along with court decisions unique to Florida.
Registration of works with US Copyright Office
Maldonado Law’s copyright services are client-driven in that our representation is focused on securing copyright of a client’s “works” for the purpose of mass distribution over a variety of mediums including video, broadcast, internet, music, audio recordings, visual arts and online visual multi-media. Our Copyright Registration services include:
- Computer code copyrights
- Literature and music copyrights
- Copyrights for Internet authors and bloggers
- Visual copyrights for advertising agencies or other creative enterprises
- Visual Copyrights for use on the Internet and e-commerce
- Videos and short films (documentaries and music videos)
- Digital and Film photographs
Our primary experience has been largely associated with video, online websites, restaurants, mobile phones and accessories, software, photography, online digital images and music for clients in Florida and particularly South Florida. However, our services also include the drafting of licensure agreements for sale or distribution of copyrighted material related to Internet image rights used on websites or e-commerce, paparazzi photographs, images unique to company brandied marketing materials (distributed online), authored content of bloggers, authored content for sale and re-distribution in electronic forms, copyrights over trade dress, and multimedia compilations of music and image works used by DJs and artists. Our services include the federal litigation of copyright infringement either in the prosecution of infringers or the defense of infringement claims.
Often in our first consultations with copyright clients, we are asked what is “a copyright” and what can be “copyright protected”. We have found it beneficial to provide some limited information on this website, in order to make our consultations more productive. A copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Section 106 of the 1976 Copyright Act generally gives the owner of a copyright the exclusive right to do and to authorize others to do the following:
- To reproduce the work in copies or recording
- To prepare derivative works based upon the work
- To distribute copies or recording of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending
- To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works
- To display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work
- In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.
In addition, certain authors of works of visual art have the rights of attribution and integrity as described in section 106A of the 1976 Copyright Act. For further information, request Circular 40, Copyright Registration for Works of the Visual Arts. It is illegal for anyone to violate any of the rights provided by the copyright law to the owner of copyright. These rights, however, are not unlimited in scope. Sections 107 through 121 of the 1976 Copyright Act establish limitations on these rights. In some cases, these limitations are specified exemptions from copyright liability. One major limitation is the doctrine of “fair use,” which is given a statutory basis in section 107 of the 1976 Copyright Act. In other instances, the limitation takes the form of a “compulsory license” under which certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions. To speak with one of our attorneys about the nuances, contact us online or by phone.
Copyright Infringement, Counterfeiting & Digital Millennium Copyright Act Claims
Maldonado Law has also worked with copyright infringement matters largely in the area of online brand infringement, photograph infringement, software infringement, and the importation of counterfeit goods or works. Maldonado Law has litigated both Plaintiff claims and Defense of infringement. We have seen the full spectrum of litigation and advise our clients on copyright litigation based upon the practical side of litigation and defense of a copyright. In a copyright claim, damages may include the profits that you have lost as a result of an infringer’s activity or simply statutory damages imposed by a judge or jury. In addition, a court may also award you your reasonable attorneys’ fees. Evaluation of statutory damages and injunctive relief must be carefully review and discussed with the client.
The most popular form of copyright infringement today is the copying and commercial re-use of content of another’s website or materials used in e-commerce website. Similarly blog posts and other forms of open dialogues published on the Internet can be plagiarized. The presentation of Mobile Applications along with software functionality from its platform is also a growing trend. Maldonado Law understand snot only Copyright Infringement but also the federal Digital Millennium Copyright Act Claims. Both may be important to claims at issue when facing an issue of infringement online.
Patent Referral After Rewiew to U.S. Patent Attorneys
Patent Application Prosecution with USPTO
The Maldonado Law is affiliated under Alcoba & Associates, P.A., Registered Patent Attorneys, to address the patent application needs of our clients. Both firms have experience in the U.S. Federal Courts litigating Patent and Trademark Infringement, and the combined team now offers a complete suite of services to secure and protect your innovations, creations, and inventions. The majority of our work, experience and services is in the area of Utility and Design Patent Prosecution and primarily dealing with new technologies, Telecommunications, Mobile communications and Technology Innovations.
Contact Maldonado Law to schedule a confidential initial consultation on your trademark or copyright needs as well as learn about our pricing and experience..