Re: Engagement Agreement

          Pursuant to New York Law, this letter confirms the terms under which the Marshall Law Group (“we”) will undertake to counsel and represent you and/or your company in connection with trademark searching, clearance advice, trademark application filings with the United States Patent and Trademark Office (“USPTO”), application and registration maintenance, trademark oppositions, settlement negotiations and copyright filings (the “Scope of Services”). Unless the Marshall Law Group and you mutually agree otherwise, such as by electing to purchase a package for limited scope representation the above description fully defines the scope of our representation, and we have not undertaken to represent you beyond the scope of that description or your separately managed parents, subsidiaries or affiliates. If in the future, you wish us to represent you in any other manner, such as representation that goes beyond the limited scope of a package that should be the subject of additional discussions and an additional engagement letter.

Fees.​ Prior to our beginning work, you will compensate us for our services by paying the invoice (including any fees owed to the USPTO). If additional services need to be rendered, outside the limited scope of representation, we shall either indicate a flat fee rate or in other cases, a reasonable attorney fee of $375-$450 per hour, will be charged. As we do not charge our clients retainer fees, any additional work you decide we will undertake on your behalf will either be billed at a flat-fee or we will ask that pre-payment is made towards an estimated number of hours to perform such work. None of our costs include USPTO filing fees. USPTO fees are always subject to change. We reserve the right to postpone or defer providing additional services, to discontinue our representation, and/or to add finance charges when accounts contain billed amounts for which payment is past due. We do not typically issue refunds. If for some reason a refund is due we retain a $200 processing fee. For filings with fixed deadlines, we require all necessary instructions, specimens, documents, and fee payments by the deadline stated in our communication in order to ensure timely preparation. If materials are provided after that deadline, a $200 rush surcharge will apply for us to complete the filing on time.

Limitation of Search. Please note the preliminary search performed by the Marshall Law Group is not definitive. For a more definitive search, a private search company such as CT CORSEARCH would need to be hired to perform a more thorough, comprehensive search. Although a mark may appear free from encumbrance and available for registration and use, a prior undisclosed use of the identical or a similar mark is possible. Additionally, although we may perform a common law search of internet references, depending upon your chosen package, these searches do not always capture the content necessary to determine if the site displays an 1 identical or similar mark. It is, in effect, impossible to be certain. In addition, we cannot guarantee that every owner of a reference located by the search would agree with our analysis, nor can we predict, with any degree of certainty, the outcome of a contested proceeding that might turn up facts unknown to us. While we believe that the search results are generally reliable, it is possible that we may have overlooked a pertinent reference or that an existing application was not publicly available at the time the search was made. Finally, a reference may be considered to be a famous mark despite our unfamiliarity with it and, therefore, it may be protected against the blurring of its distinctiveness which is a form of dilution. Please also be aware that a party can file an application in another country and can claim the priority of that filing date in a U.S. application, or in a Madrid Protocol extension to the U.S., during the 6 months after that filing date. Moreover, this may not be publicly known for 3 or more additional months because of normal procedures under the Protocol and the normal lag time in including information in public searchable databases.

Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.Please note that with regard to copyright, it is not possible to perform a comprehensive search of existing copyrights.

Limitation of Representation: As a small firm, if a matter necessitates filing an opposition or cancellation action, we can make the initial filing. However, if an Answer is filed by the opposite party, we do not have the bandwidth to prosecute a matter through an entire Trademark and Trial Appeal Board litigation. We have litigation counsel that we trust and recommend when and if necessary. By signing below you are acknowledging your understanding of this and consent to our being removed as counsel if a matter proceeds as noted above.

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No Guarantee. We will be assisting you in making an application for a registered trademark. You acknowledge and agree that we cannot guarantee that you will qualify for or receive the trademark.

We will conduct a trademark search for you, render an opinion and advise you at each step of the process, but it is always your decision as to how to proceed with your trademark, including, but not limited to, filing the application and/or responding to any office actions. Whether you qualify for a trademark is beyond our control and is in the discretion of the USPTO. In addition, we cannot predict the actions of third parties, including, but not limited to other trademark owners. 

 With respect to any other services rendered, including, but not limited to filing or responding to oppositions and sending or responding to cease and desist letters, you acknowledge and agree that we cannot guarantee results.

Cooperation. The timing and duration of our completion of the Scope of Services within the number of days specified on our website is dependent upon many factors including the timing of your full payment of our fee, your providing us with complete and accurate information about your business through the New Client Questionnaire and responses to any follow up requests by us, and it also is dependent upon the complexity of your legal issues.

You acknowledge that the Marshall Law Group requires you to provide it with information and that it will rely on the accuracy of that information to execute the steps necessary to complete the Scope of Services. You agree that the Marshall Law Group is not liable, nor can it be held responsible for the accuracy of any information you provide and it relies upon in rendering legal advice or legal services and you agree to hold the Marshall Law Group harmless in connection with any and all such information.

When contacted by an Examiner on an application, Marshall Law Group may need to make quick decisions for non-substantive objections (disclaimers, foreign translations and identification of goods) without notifying the Client. This is to avoid any further time delay in the Examiner’s review of the application and further objections on the application. We believe this is in the best interest for the Client’s application to move more smoothly and expeditiously to approval.

You are responsible for updating your contact information with us if your email and/or phone number change from the information you provide in the questionnaire. If you fail to update this information with us, we will be unable to alert you of renewals, deadlines, or other important correspondence. MLG cannot be responsible for missed deadlines, including renewals, if we do not have your updated contacted information.    

MLG will provide you with three (3) email reminders for application filings, extension documents, statements of use, renewals or other deadlines or important correspondence in which we are awaiting a response from you. After the third reminder we will not send any further emails and will put your file on hold and send no additional reminders. 

Time Limitation. Search results are only valid for 30 days from the date of completion. If the decision to move forward with the application exceeds that time period, an additional fee of $300 will be required to perform another search. The USPTO will automatically expire an online application if it is not executed by the trademark owner within 14 days. An expired application will require the Marshall Law Group to create a new application and an additional fee of $200 will be required to refile the application.

Termination. You have the right at any time to terminate our representation. Such termination shall not, however, relieve you of the obligation to pay fees for all services rendered and expenses accrued as of the date of such termination. We have the right at any time to terminate our representation. If all services agreed upon have not been rendered, we will provide an acceptable refund. 

The Marshall Law Group does not retain any client files. All relevant documents are available on the USPTO website. 

Disclosure. We represent other individuals and businesses. You may view some of our other clients as competitors. Unless disclosed in writing, we do not perceive any conflict in undertaking to represent you in connection with the matters described in this agreement.

Arbitration. Your assent to this letter constitutes your agreement that any dispute about the amount or payment of our fees shall be submitted to binding arbitration under the Rules of the Joint Committee on Fee Disputes and Conciliation of the Association of the Bar of the City of New York, the New York County Lawyer's Association and the Bronx County Bar Association. Pursuant to this provision, you and we are waiving any right to have any dispute about the amount or payment of our fees resolved by a court. We very much appreciate the opportunity and privilege of rendering legal services to you. Of course, we cannot predict results, and we do not warrant them, but we will try at all times to represent your interests conscientiously and efficiently. Please feel free at any time to discuss any subject with us, including any question relating to our fees or expenses.

Please signify your assent by signing and returning a copy of this letter or by continuing to instruct us as we do the work.

Accepted and Agreed to:

Additional terms and conditions of your payment:

*Please review all of the terms of the package you have paid for, on our website.  The USPTO filing fees are not included in any of our packages and are of up to $250-$350 per class. For intent to use applications, package prices do not include extensions to file a Statement of Use or the filing of the Statement of Use. Also package prices do not include the filing of trademark maintenance documents such as renewals. Prices do not include responses to refusals based on likelihood of confusion or descriptiveness. Unless otherwise agreed, proposals do not include counseling, advising on or acting on any opposition or litigation matter pertaining to the trademark. USPTO fees are subject to change.

 

*When a mark is filed with a design, we will not search the design elements as part of the package.  We would require an upcharge be paid to search the design. Whether or not to have a design searched, is at the Client's discretion.