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Welcome 

As a trademark attorney, José M. Gómez utilizes a diverse skill set and broad range of experience in graphic design, law, business administration, information technology, healthcare, and education to engage in intelligent collaboration with our clients.  José represents clients nationwide in trademark and copyright matters before the U.S. Patent & Trademark Office and the U.S. Copyright Office. We have reduced our trademark, copyright, and logo design service fees as part of an effort to accommodate budgetary constraints.   We hope that you find this website informative.  Please contact us with any questions.  You can also tawk.to us.  Thanks for visiting!    


about José M. Gómez 

"Two roads diverged in a wood, and I—I took the one less traveled by,
And that has made all the difference."  - Robert Frost

This quote from Robert Frost's "The Road Not Taken" best describes José's career.  With pure grit and perseverance, José has made life-long learning
his calling, which allows him to engage in intelligent collaboration with his clients to formulate solution-focused strategies.     
José was raised in Houston, Texas, where his father taught him the art of graphic design and customer service. While working on signage for companies like ExxonMobil, W.R. Grace, and Willamette Industries, he would learn the principles of layout and design.
Later, as a graphic designer, José would go on to design a vast array of logos and layouts for law firms, medical offices, places of worship, restaurants, retail outlets, and telecommunications firms.  
José is admitted to practice law before the District of Columbia Court of Appeals, located in Washington, D.C., and the United States District Court for the Eastern District of Michigan.  His practice is limited to trademark and copyright matters under 5 U.S.C. §500.
In addition, José holds two master's degrees in business administration and information technology management from Touro College and a master of arts degree in community counseling from St. Mary's University of San Antonio, Texas.
José's diverse background and experience in law, graphic design, healthcare, corporate compliance, information technology, and education informs his approach to customer service that is based on intelligent collaboration and hard work.
On a different note, perhaps Robert Frost's quote above gives a different twist to the famous quote attributed to the French poet François-Anatole Thibault, "Madame, vive la différence!"


curriculum vitae

José M. Gómez, MA, MS, MBA, JD*
*admitted to the D.C. Bar

2012
master of arts
community counseling

St. Mary's University of San Antonio, Texas

2009-2012
graphic designer 

A to Z Sign Company
Houston, Texas

2007-2018 (present)
principal attorney 

The Gomez Law Firm, PLC
Oak Park, Michigan

2007
admitted to practice law

District of Columbia Court of Appeals
Washington, D.C.

United States District Court for
the Eastern District of Michigan
Detroit, Michigan

2006
juris doctor

West Coast School of Law
Danvers, California
non-traditional legal education recognized under D.C. Court of Appeals Rule 46(c)(4)

2003
master of business administration

Touro College
New York, New York

2003
master of science
information technology management

Touro College
New York, New York

2002
graduate certificate
educational administration

Capella University
Minneapolis, Minnesota

2001
bachelor of arts
social sciences & history

Thomas A. Edison State University
Trenton, New Jersey

1992-1997
graphic design apprenticeship

A to Z Sign Company
Houston, Texas

trademark & copyright services

Click on the buttons below to learn about the various services we offer.
You can also learn about the differences between the different requirements for
trademark, trade dress, and copyright registration.
Please note that each case is different and that no specific result can be guaranteed. 

trademark

Marks like LYTLE may qualify for trademark registration when they are in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that they create a separate and independent impression." In re Lytle Eng'g & Mfg. Co., 125 USPQ 308 (TTAB 1960).

Excellent examples of these types of marks are DISNEY, UNIVERSAL, FOX, and PARAMOUNT, especially because they each create a separate and independent impression in the film industry.  
DISNEY, UNIVERSAL, FOX, and PARAMOUNT logos are registered trademarks. 
Imagine the following scenario:
If Walt Disney would have abandoned his efforts in creating the DISNEY characters or animated films we know and recognize so well today, it is likely that DISNEY would only be considered a trade name and would not qualify for trademark registration.

Click on the arrow below for trademark faqs.

trademark 
faqs

Examples of marks that may qualify for trademark registration are product names, company names, logos, slogans, service names, slogans, taglines, colors, product packaging, product shapes, symbols, sounds, fragrances, flavors, and domain names.
It is important to remember that trademark examiners consider several factors to determine whether a mark qualifies for trademark registration, including: 
(1) whether the mark in question identifies the source of goods and services provided in commerce as the applicant,
(2) whether the mark distinguishes goods and services provided in commerce by the applicant from goods and services provided by others,
(3) whether the mark serves an "ornamental" purpose, as opposed to a "functional" purpose.  

USPTO generally takes six months to examine and respond to an application for trademark registration.

A trademark registration lasts 10 years and may be renewed every 9 to 10 years thereafter without limitation. Additionally, a Declaration of Continued Use must be filed every 5-6 years.

Our fees account for several factors, including consultation time to discuss the preparation of your application for trademark registration, initial search for potential conflicts with other marks already in use or registered by other companies, the filing of your application for trademark registration, and follow-up to USPTO inquiries.

Because we understand that clients often have budgetary constraints, especially in cases where multiple applications for trademark registration are required, we provide cost-effective trademark, copyright, and logo design services for a flat-fee. If you are seeking to submit several designs or works for trademark or copyright registration, please contact us for a custom flat-fee quote.  

Thoughts to Ponder....

Why trademark and copyright?  Consider the following scenario:  You start a business or launch a product line, only to discover that another business has been using a similar name or logo to promote its own business or product line.  

You receive a cease and desist letter from an attorney demanding that you stop marketing your product or business because they have been using a name or logo that is similar to yours.  

What now?  Do you stop marketing efforts?  Do you select a different name for your business or product line?  How much will starting over with a different name cost? The following slides discuss significant trademark and copyright cases that provide guidance on how to deal with scenarios of this kind.             

trade dress

One who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device. Traffix Devices, Inc v. Marketing Displays, Inc., 532 U.S. 23, 30 (2001).

In this case, Traffix Devices began manufacturing a four-prong support device after Marketing Displays' patent on the device expired. Marketing Displays sued Traffix alleging trade dress infringment on the grounds that Traffix duplicated the shape of its four-prong support device. In its reversal of the lower court, the Supreme Court held that Marketing Displays did not show that the four-prong support device in question was ornamental and not functional.
A good example of trade dress is the shape and form of the Apple IPhone.

It is important to notice the ornamental nature of the layout of the phone's features, particularly the conspicuous placement of the main button, are not necessary to the function of the device, as most other smart phones feature the main button on the upper right side of the device. This was the main issue in Microsoft's challenge to Apple's trade dress registration, which Microsoft ultimately withdrew after a protracted legal battle before the Trademark Trial and Appeal Board.
Click on the arrow below for "trade dress" faqs. 

trade dress
faqs

Examples of marks that may qualify for trademark/trade dress registration are product packaging and product shapes.
It is important to remember that trademark examiners consider several factors to determine whether a design qualifies for trademark/tradedress registration, including: 
(1) whether the design in question identifies the source of goods and services provided in commerce as the applicant,
(2) whether the design distinguishes goods and services provided in commerce by the applicant from goods and services provided by others,
(3) whether the design serves an "ornamental" purpose, as opposed to a "functional" purpose.  

"Trade dress" registration refers to the distinctive design of a product that is not functional.  Two Pesos, Inc. v. Taco Cabana, Inc. is a significant Supreme Court ruling from 1992 that discusses trade dress.  In this case, the Court upheld a lower court ruling holding that the Two Pesos restaurant chain copied the décor of Taco Cabana, a restaurant chain that had been in operation nearly 12 years prior.   The lower court ordered Two Pesos to pay Taco Cabana $3.7 million in damages for trademark infringement and nearly $1 million in attorney's fees; change its restaurant design and décor; and post a sign in front of every Two Pesos restaurant stating that it had copied its décor from Taco Cabana.  After Two Pesos failed to comply with the Court's ruling, Taco Cabana filed a second lawsuit for $5 million, which resulted in a settlement that included the sale of Two Pesos to Taco Cabana.  

USPTO generally takes six months to examine and respond to an application for trademark registration.

A trademark registration lasts 10 years and may be renewed every 9 to 10 years thereafter without limitation. Additionally, a Declaration of Continued Use must be filed every 5-6 years. 

Our fees account for several factors, including consultation time to discuss the preparation of your application for trademark registration, initial search for potential conflicts with other marks already in use or registered by other companies, the filing of your application for trademark registration, and follow-up to USPTO inquiries.  Click here to learn more about our fees.  

Because we understand that clients often have budgetary constraints, especially in cases where multiple trade dress applications for trademark registration are required, we provide cost-effective trademark, copyright, and logo design services for a flat-fee.  If you are seeking to submit several designs or works for trademark or copyright registration, please contact us for a custom flat-fee quote.  

copyright 

In an interesting twist, the Supreme Court in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017), recently extended copyright protection to works of art affixed to cheerleading uniforms.
The Court's concluded that the aesthetic elements of the uniforms in question qualified as copyrightable graphic works. In its decision, it determined, based on an earlier ruling in Mazer v. Stein, 347 U. S. 201, 214 (1954), that the graphic work incorporated into the uniforms could "be identified separately from” and is “capable of existing independently of” “the utilitarian aspects” of the uniforms.

The Court's reasoning closely resembles the principles laid out in the Traffix Devices case (see previous slide) that the item in question must be merely ornamental and not functional in nature to qualify for trade dress protection.

For some in the clothing industry, this case may be cause for celebration.   For others, it may be cause to worry.   Moving forward, only the most eloquent arguments for, or against, copyright protection in the clothing context will prevail.

For those who watched the first season of Star Trek: Discovery, the title of the third episode rings true: Context Is for Kings.

Click on the arrow for copyright faqs.

copyright
faqs


Examples of marks that may qualify for copyright registration include literary works, lyrics, music, choreographic works, photographs, graphics, paintings, motion pictures, software, video games, audio recordings, and achitectural works.
It is important to remember that copyright examiners consider several factors to determine whether a work qualifies for copyright registration, including:
(1) whether the work in question is “fixed in a tangible medium of expression”,
(2) whether the work was independently created by the author,
(3) whether the work is result of author's creative effort.

In other words, a work may qualify for copyright if:
1) the medium through which an original work or idea is expressed can be as insignificant as a scratch paper,
2) any amount of independent thought on the part of the author is sufficient, provided that the work is not copied from another work,
3) the degree of creativity or ingenuity can be minimal.

Click HERE to learn more about copyright registration.

The Copyright Office generally takes nine months to review and respond to an application for copyright registration.

Copyright registration remains valid for the lifetime of the author plus 70 years. Copyright registration for works made for hire, anonymous, or pseudonymous works remains valid for 95 years from first publication or 120 years from creation, whichever is shorter.

Our fees account for several factors, including consultation time to discuss the preparation of your application for copyright registration, initial search for potential conflicts with other works already in use or registered by other companies, the filing of your application for copyright, and follow-up to Copyright Office inquiries. Click here to learn more about our fees.  

Because we understand that clients often have budgetary constraints, especially in cases where multiple applications for copyright registration are required, we provide cost-effective trademark, copyright, and logo design services for a flat-fee. If you are seeking to submit several designs or works for trademark or copyright registration, please contact us for a custom flat-fee quote.

logo design

As an apprentice in graphic design, I learned that the first impression is usually the last impression.
A wise man in the sign industry taught me that an effective design should be like an "appetizer" that encourages diners to order the main course. An effective design should take into account important factors like visibility, noticeability, and recognizability.

Visibility: If they can't see you, do they know you're there?

Noticeability: Even if they can see you, do they notice you?

Recognizability: Even if they notice you, do they know who you are?

Click on the arrow for logo design faqs.

trademark design
faqs

An effective design should take into account important factors like visibility, noticeability, and recognizability.

Sometimes we get lost in the details of a project and forget to remember the larger context.   For example, we sometimes can get lost in an the details of an intricate logo design that we lose sight of how it will look on company stationery, in an office environment, or on a billboard.   Logos often blend in with surrounding colors or other objects, which results in low visibility of the design.  Visibility then means that the average customer will see your business amongst a myriad of others.       

Noticeability ties into the distinctiveness of a design that allows it to stand out.  Potential customers often overlook a design because they see it as just another design.  Noticeability then means that the average customer will be attracted to a design because of its distinctiveness.  

Recognizability refers to the ability of the logo or design to convey the meaning of a mark or logo used by a company.  Prime examples of recognizability are the logos associated with CVS, Walgreens, and RiteAid. These logos are immediately associated by the average customer with retail pharamcy chain stores. 

Our fees account for several factors, including initial logo designs, revisions, and consultation time to discuss the design and revision of logo designs, and a project summary of work completed.  
Click here to learn more about our fees.  

Because we understand that clients often have budgetary constraints, especially in cases where multiple designs are required, we provide cost-effective trademark, copyright, and logo design services for a flat-fee. If you are seeking services for multiple designs, please contact us for a custom flat-fee quote.

trademark & copyright fees

Because we recognize the unpredictability of hourly fees and budget constraints that businesses often encounter for the development and implementation of each project, every effort is made to ensure that our clients receive a flat-fee quote for services.

To get started on your application or logo design, please provide us with a description of your project. We will contact you via email to discuss your fee options for services following receipt of your project description.

If you are seeking to submit several designs or works for trademark or copyright registration, please contact us for a custom flat-fee quote.

If you require specific services, such as a consultation, an application review,
or an opinion letter, please contact us for a quote.

Click on Live Chat to reach José directly.  

Please contact us with any questions.

trademark registration
fees

copyright registration
fees

logo design fees

comprehensive services fee 

trademark /
trade dress
registration fees

trademark / trade dress
registration

$ 275*
flat-fee per mark (per class)
  • comprehensive federal, state, and common law  trademark search ($250.00, when requested separately) 
  • opinion letter based on search results   ($250.00, when requested separately)
  • two hours consultation time regarding search results, preparation and filing ($250.00, when requested separately)
  • trademark application status updates via email (included)
  • response to routine filing agency inquiries
  • project summary 
  • *Fee does not include USPTO Fees ($225-$275 per mark, per class)

copyright
registration fees

copyright
registration

$ 190*
flat-fee per work
  • comprehensive federal, state and common law  copyright search ($150.00, if requested separately)
  • opinion letter based on search results  ($150.00, if requested separately)
  • 30 minutes consultation time regarding search results, preparation and filing ($80.00, if requested separately)
  • copyright application status updates via email (included)
  • response to routine filing agency inquiries
  • *Fees do not include Copyright Office Fees ($35-$55 per work)

logo design
 fees

logo
graphic design

$ 150*
includes:
  •  3 initial distinct logo concepts $400, if requested separately
  • one hour consultation time $100, if requested separately
  • 7 business days (initial logo concept lead time)
  • 3 Revisions (one logo concept)
  • project summary
  • status updates via email
  • file format
  • (*.PDF, *SVG, *.JPG)

comprehensive
logo Design, trademark, & copyright package

comprehensive
logo design, trademark, & copyright package

$ 499*
includes:
  • one logo (trademark)(two initial distinct logo concepts and two revisions)
  • one design (copyright) (two initial distinct design concepts and two revisions)
  • comprehensive federal, state and common law trademark and copyright search
  • opinion letter based on search results
  • three hours consultation time regarding search results, preparation and filing
  • status updates via email
  • response to filing agency inquiries
  • project summary 
  • *Fee does not include USPTO or Copyright Office Fees

Gomez IP Law Blog

Real-Life Cases for Real-Life Practice

This blog discusses recent trademark and copyright cases that inform our practice of trademark and copyright law.

"Live and Let Live"

11/19/18

A Federal Court recently affirmed a Trademark Trial & Appeal Board Ruling affirming denial of an application seeking to register "Well Living Lab" as a trademark on the grounds that it was descriptive of the applicant's services. Citing precedent, the TTAB held that an application may be denied if the term in question "is merely descriptive of goods or services...if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services.* 

The TTAB ruling also explained that a denial is also warranted if the term in question describes one significant attribute, function or property of the applicant's goods or services.**

Thus, when a trademark application is denied on "descriptive" grounds, the "Live and Let Live" principle applies; and while the applicant may continue to use the term, other businesses may use the term, as well.-JMG

 
*In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).
**See In re Gyulay, 3 USPQ2d at 1010 ; In re H.U.D.D.L.E ., 216 USPQ 358 (TTAB 1982); In re MBAssociates , 180 USPQ 338 (TTAB 1973).

Mobirise

"A Shoe By Any Other Name?"

01/02/18

Van’s Inc. recently filed a trade dress infringment lawsuit against Target alleging that Target's Camella Lace-Up Sneaker (pictured top right)  infringes on Van's Old Skool Shoe design (pictured top left).*  
The threshold question is whether the Old Skool Shoe is entitled to trade dress protection.  
A design that affects the use, purpose, cost, or quality of a product cannot serve as a trademark.**
If the court finds that the features of the Old Skool shoe are
functional in nature, the Old Skool shoe will not qualify for
trade dress protection. Van's remaining option would be to
apply for design patent protection, a topic beyond the scope of this discussion.   
Copyright protection may also be available, but that is an intriguing discussion for a later time.   
If the court finds that the features of the Old Skool shoe are ornamental or decorative, rather than functional in nature,  then Van's would be required to prove that the features of the Old Skool shoe qualify for trade dress protection under the duPont 13-factor test.*** 
The first factor of the duPont test considers the similarity of the marks in their entireties as to  appearance, sound, connotation and commercial impression.   
Ultimately, the consideration here is whether the Target Camella Lace Up Sneaker is sufficiently distinct in design from the Van's shoe design.  
An examination and comparison of both products shows seven distinct features.  
First, the Van’s Old Skool shoe features eight pairs of eyelets (shoelace holes), while the Target Camella Lace Up Sneaker features only six pairs of eyelets. 
Second, The Old Skool shoe has no tongue catcher, while the Camella Lace Up Sneaker features a tongue catcher between the fifth pair of eyelets.
Third, unlike the Target Camella Lace-Up Sneaker, the Old
Skool shoe features no pull tab on the back of the shoe. 
Fourth, the shoe tongue on the Camella Lace Up Sneaker is part of the front panel of the shoe, while the shoe tongue on the Old Skool Shoe  appears as a distinct part of the shoe.
Fifth, the curved mark and stiching featured on the Old Skool Shoe is markedly different than the mark and stiching on the Camella sneaker.  
Sixth, the base of the Old Skool shoe features a groove that covers approximately two-thirds of the shoe circumference, while the Camella Lace Up Sneaker features a groove that traverses the entire shoe circumference.
Seventh, unlike the Camella Lace Up Sneaker, the Old Skool shoe features a black and white trim 
along its circumference.  
We resume our discussion of the duPont test with the second factor.  The second factor considers  the similarity in nature of the contested product to the pre-existing product.
Both the Target sneaker and the Van's shoe qualify for classification as footwear. Both are marketed under the  general "shoe" category. 
The third factor considers the similarity established, likely-to-continue trade channels. 
In this case, both Van's and Target utilizes the same trade
channels, such as the internet and retail outlets, to market
their products.
The fourth factor considers he conditions under which and buyers to whom sales are made, i.e. `impulse' vs.  careful, sophisticated purchasing.   
This factor considers the level of sophistication necessary to purchase the product in question. If we were discussing a major purchase, such as an automobile or a complex robotic device, we would be able to conclude that a high level of sophistication is involved, as these products  
unlikely to be purchased on impulse.
  

To our more "fashion-oriented" readers, we mean no offense when we say that shoes are generally bought on impulse. Shoes in this sense only are a "dime a dozen." Thus, the level of sophistication involved in the purchase of shoes such as these is much lower, and the likelihood of confusion would be consequently be much greater.

The fifth factor of the duPont test considers the fame of the prior mark.

Van's website shows that the mark has been used since the  1970s and has been sold via mail-order, retail, and, more  recently, via online channels, such as Amazon and its own website. 

The sixth factor considers the number and nature of  similar marks in use on similar goods.  

A Google search shows various brands of skate shoes with  none appearing similar to the design of the Van's shoe.   While the author recognizes that Google is at most a persuasive "authority," it nevertheless generally portrays the various types of shoes are marketed as skate shoes.

The seventh "duPont" factor of the  considers the nature and extent of any actual confusion. 

If consumers begin, for example, to refer to the Camella  Lace-up Sneaker as a "Fake Van's Shoe," this may be considered evidence of actual confusion, or potential  confusion at the very least. 

The eighth factor considers the length of time during  and conditions under which there has been concurrent use without evidence of actual confusion. 

It appears that the length of time that both brands of shoes  have been marketed is insufficient to determine whether actual confusion exists. 

The ninth factor considers the variety of goods on  which a mark is or is not used (house mark, `family' mark, product mark). 

A Google search shows various brands of skate shoes  with marks appearing on most marketed skate shoes. 

The tenth "duPont" factor considers the market interface between  the products. 

Considering that both products are sold in retail outlets and  through online channels, the degree of marketing interface between the two products is higher. 

The eleventh factor considers the extent to which the  owner of the earlier design has a right to exclude others from use of its mark on its goods. 

Although the owner of the Van's Old Skool Skate Shoe did  not register its design, it nevertheless holds trademark rights based on case law, rather than the Lanham Act, which provides for greater protection.  Given the decades-long history of the Old Skool Skate Shoe, Van's would certainly be able to preclude others from using the shoe design or name. 

The twelfth factor considers the extent of potential  confusion, whether minimal or substantial, between the two products. 

The potential for one shoe would be mistaken for the other  may be minimal due their distinct features.

The thirteenth "duPont" factor considers any other established  fact probative of the effect of use. 

Perhaps, the Camella Lace Up Sneaker is just a shoe by any  other name.  It is important to note that neither the term or design of the "Old Skool Skate Shoe" is a registered trademark.  

This case illustrates the importance of trademark / "trade dress" registration is an important first step in product design. 

In addition to providing a design with an increased level of protection, the the issues of 'trademarkability' and 'infringement' are determined during the trademark registration process, as opposed to during a more costly litigation process, which can take years to resolve. 

*Vans, Inc.; VF Outdoor, LLC, vs. Target Corporation;  Farylrobin, LLC, 8:18-cv-02258 (C.D.Cal.).

**Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).

***In re E.I. duPont DeNemours & Co., 476 F.2d 1357, 1361 (1973)    

Mobirise

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contacts
Email: jose@gomeziplaw.com                
Phone: 248-470-8918   Fax: 248-609-7472

links
uspto.gov/trademark 
copyright.gov 
VSee.com

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LEGAL NOTICE
Attorney advertising.  Content is provided for informational purposes only
and is not legal advice. This site does not constitute an attorney-client relationship.   
Because of the unique nature of each case, no specific result can be guaranteed.
Practice is limited to trademark and copyright law under 5 U.S.C. §500.
Website designed using Mobirise by José M. Gómez.  Live Chat is an application owned by Tawk.to. Inc.  Images designed by, or for use by Mobirise, are subject to copyright by their respective owners.
DISNEY, UNIVERSAL, PARAMOUNT, and FOX marks are registered trademarks owned by their respective owners.      
GómezIPLaw is a service mark owned by The Gomez Law Firm, PLC.
© 2018. The Gomez Law Firm, PLC. All Rights Reserved.