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Terms & Conditions of Our Engagement as Trademark Counsel
Dear Client:
This letter applies only to client requesting trademark filings through our online trademark filing form, and sets forth the terms of your engagement of Vested Law LLP DBA Western IP Law. Thank you for providing us with the opportunity to work with you. Our goal is to provide top-quality service to our clients for fair and reasonable compensation. Please do not hesitate to contact us at any time you become dissatisfied with any aspect of the service we provide at info@westernip.com. This engagement letter sets forth the scope, terms and conditions of our engagement by you with respect to online trademark preparation and filing services. By submitting a trademark order form on our website at <westernip.com>, you manifest your consent to these terms.
We have agreed at this time to represent you in preparing and filing one or more trademark applications before the U.S. Patent & Trademark Office (USPTO) (the “Trademark Application(s)”). Upon receipt of the completed Order Form from you, we will prepare and file the Trademark Application(s).
We offer two levels of service, or trademark application packages. You must choose one on the Order Form. The terms of our representation differ somewhat from one to another. They are:
BASIC TRADEMARK PACKAGE
If you select and pay for the Basic Package, we will file the Trademark Application without conducting a cursory or formal trademark search and the attorney fees and filing fees are non-refundable if the Trademark Application does not issue. We will handle minor office actions responses as part of the Basic Package, including disclaimer requirements, corrections to the goods and services recommended by the examiner, and other minor office action responses which do not require written legal argument. This does not include appeals to the TTAB, U.S. district courts, or other authorities.
PREFERRED TRADEMARK PACKAGE
If you select and pay for the Preferred Package, we will file the Trademark Application after conducting a cursory trademark clearance search. The attorney fees refundable if the Trademark Application does not issue. We will handle minor and major office actions responses as part of the Basic Package, including disclaimer requirements, corrections to the goods and services recommended by the examiner, and legal argument. This does not include appeals to the TTAB, U.S. district courts, or other authorities. Should we determine in our own judgment that the Trademark Application is unlikely, or very unlikely to issue, we will refund the attorney fees portion of the fees you have paid and withdraw as your counsel.
INTENT-TO-USE APPLICATIONS
If you are not presently using your trademark, we will file what is called a 1B intent-to-use trademark application for you. This is effectively the same as a 1A trademark application for a trademark in use, but you must send up a statement of use (SOU) (a photograph of the trademark being used) within one year. It is your responsibility to provide us this proof of use, though we may send you reminders. Upon providing us with this SOU and the Trademark Application being allowed, we are required to pay an additional $100 filing fee and file the SOU with the USPTO. For this reason, we charge an additional $180 for intent-to-use applications (which covers the $100 extra filing fee and $80 for our time in filing the SOU).
WEB DESIGN SERVICES
We offer website design and hosting services to new clients via a third-party legal entity, Great8, which we control. Should you choose to order and pay for web design services in placing an order for the Trademark Application, a designer/programmer will contact you and we will transfer the web design portion of this contract to that the third party. That third party will assume all obligation for designing the website for you and you consent to us transferring this web design contractual obligation to Great8 or another party.
The web designer will consult with you generally about color schemes and basic layout options. You agree to provide the web designer with examples of other websites which you like. The web design service does not include logo design. Should you need a custom logo designed, the web designer may charge up to $450 for the logo design. The web design also does not include email, for which there may be an extra charge. This fee does not include the domain registration fees. If you do not have a domain where you want the website hosted, instruction for how to register one through GoDaddy will be provided. The website does include a homepage and up to five additional subpages with a backend user interface and custom password which you can use to create additional subpages on the website. The website does not include eCommerce functionality, for which there may be extra charges. Likewise, there may be extra charges for blog posting functionality, portfolio posting functionality, video production, and the like. The web designer agrees to provide basic revisions to colors and layout if you are not happy with the website design without additional charge, up to four additional hours of time spent on the revisions. All websites are design in the WordPress CMS. You will be provided with the website design file in .ZIP format so that you can host it; or, alternatively, be asked to pay to have the website designer host the website for $45/month, with 10% annual increases, on a month-to-month basis which either you or website designer may terminate with 30 days written notice.
Importantly, the web design services do not include the cost of populating your website with content. This means that the website will be programmed and laid out, but you will have to add text and content to the website through the backend user interface.
Should the web designer fail to deliver the website within fourteen (14) business days, we will agree to refund to you the portion of the fees which you paid for web design and the web design portion of this contract will terminate without further consideration. The web design portion of the contract is $1,350 (on the package costing $2,349, with the other $999 used for the Trademark Application).
ADDITIONAL UNIVERSAL TERMS
We will advocate zealously on your behalf before the USPTO within the scope of all applicable rules of ethical conduct and these terms, and will take reasonable steps to keep you informed of progress and to respond to your inquiries and communications.
You have agreed to compensate escrow fees for the Trademark Application with us at the time of submission. Should we determine in our sole discretion that your trademark is unlikely to issue, or that it is best we not file it, even after you submit the Order Form we may return your money and terminate this engagement.
After the Trademark Application registers/issues, our obligations as your counsel are terminated and we will withdraw from the Trademark Application. After the trademark issues, you must pay maintenance/renewal fees on the Trademark Application approximately every five years to keep the Trademark Application alive. You are responsible for making these payments and renewals unless we agree otherwise in writing. Our office does not send out reminders that these fees are due.
We may be assisted by such other lawyers and service personnel (e.g., law clerks, paralegals, draftsmen, patent agents, legal assistants, secretaries, and possibly outside counsel) who render services on your behalf as we deem appropriate from time to time to provide high quality services in a cost-efficient manner. You will not be billed for the additional involvement of these individuals unless we agree otherwise in writing. We will be responsible for all matters related to billing, staffing, and supervision of work.
Once the Trademark Application is filed with the USPTO, it will be pending for some time before it is examined. This period of time is typically 12 weeks or greater. If the Trademark Application is approved, the trademark must publish in the Gazette to give other parties time oppose it. Most trademarks typically issue within six to 12 months of filing, but this period of time can vary.
You will be able to use “Trademark Pending” when the Trademark Application is filed. During the lifetime of a patent there are periodic maintenance fees due to the USPTO. We reserve the right to withdraw as your attorney of record at anytime with two weeks notice after the trademark is filed should we feel the circumstances warrant it. Circumstances which may warrant my withdrawal include, but are not limited to, a heavy case load, accepting employment with a firm that will not allow your continued representation, our discovering that material facts relevant to our representation have been misrepresented to us, a belief that substitute counsel will better serve your needs, and the like. You also agree to allow us to bring in other co-counsel to represent you if I believe it is necessary provided that we consult with you on the matter first.
With regard to your files, we strive to be a paperless office. To this end, we may scan and store all your files in electronic format only. You consent to us communicating with you via email. While e-mail is generally considered to be confidential and reliable, using it creates some risk that such communications may be intercepted by, or otherwise disclosed to, third parties. You assume all risks associated with using e-mail to communicate with us.
In responses to any of your requests to provide information to your auditors, our policy is to comply with the American Bar Association Statement of Policy Regarding Lawyers’ Responses to Auditors’ Requests for Information regarding the scope and content of such responses, except when such Policy is clearly inapplicable.
We have not been retained to provide advice to, or otherwise represent, you with respect to other issues of law beyond the Trademark Application. Accordingly, we will not, unless otherwise agreed in writing, be advising you regarding compliance with any federal or state laws on any other matters..
We have not been engaged to deal with tax law issues regarding this engagement. You are therefore advised to seek tax counsel, and I explicitly disclaim any responsibility regarding tax matters.
We do not guarantee the successful outcome of any matter undertaken for clients. Predictions about the outcome of trademark filings with the USPTO are only estimates and expressions of judgment, and are not representations or guaranties that any particular result will actually occur. We cannot guarantee that the USPTO will allow all trademark applications. Any trademark searches conducted do not constitute formal trademark allowability opinions.
Occasionally, we are asked to represent clients whose interests are adverse, either economically or in a legal sense. By hiring us, you agree that you will allow us to undertake these matters provided that any matter that I undertake that is adverse to you is not substantially related to the Trademark Application. Subject to these understandings, you agree that you will not use my representation of you or your business or my receipt of confidential information from you as a basis for seeking my disqualification as counsel to persons with adverse interests.
In the event of any dispute concerning this agreement or amounts owed us, we each agree to submit that dispute to binding arbitration before the Utah State Bar in the United States in accordance with its rules and procedures.
If these understandings are agreeable, please so indicate by signing a copy of this letter where indicated below and returning a copy of this page to me by mail or fax. I look forward to working with you.
/VESTED LAW/
Vested Law LLP