Archive for August, 2012

Anatomy of an intern agreement

Posted by ipelton on: August 31st, 2012

I am frequently asked about our intern program. Our firm works with law students almost every semester and summer to provide them mentoring, education, and experience in the field of trademark law. We have been fortunate to host law students from many schools including George Mason, American University, Catholic University, Howard University, Franklin Pierce School of Law (now University of New Hampshire), and Thomas M. Cooley School of Law.

When their internship – which is often for school credits – begins, we review expectations and responsibilities, and we have each intern sign the following agreement. The agreement is important for several reasons – one of which is the IRS and tax law. Another is to ensure that the firm’s – our computer intranet, for example – intellectual property stays ours.

I have received several requests from others to share our intern agreement, so here it is:

Intern Agreement Template


I have submitted a proposal for a panel at SXSW Interactive 2013 conference. Your vote would be most appreciated!  See below for the full description of this panel which would (tentatively) be with Anne Gundelfinger of Law Office of Anne Gundelfinger and former President of INTA, and Professor Eric Goldman of Santa Clara University School of Law.

To vote, go to: 

Have expanding IP rights reached the tipping point?


Last year saw SOPA and PIPA go down in flames – much to the chagrin of lawmakers and the copyright content industries. Meanwhile, tech companies continue to blast one another with overlapping patent lawsuits featuring claims for billions of dollars in damages. Aggressive enforcement and expansion of intellectual property rights appear to have hit a tipping point. As big business continues to push for more civil and criminal enforcement of trademarks, copyrights, and patents, has the intended purpose of IP laws been co-opted? How has social media and the “Streisand effect” changed the way big companies view intellectual property disputes? And how are rights holders preparing to respond to or cope with the inevitable backlash against the growing grab for intellectual property rights? The panel will explore these and other issues regarding the future of intellectual property laws.

Questions Answered

  1. Is intellectual property law reaching a tipping point?
  2. What comes after SOPA and PIPA?
  3. What will the future of patent, trademark, and copyright law look like?
  4. Is the original intent of IP law served in today’s system?
  5. How are rights holders preparing to cope with the inevitable backlash against the IP system?


To vote, go to: 


 Our videos featuring trademark information on YouTube are extremely popular. Our video entitled “Common Trademark Application Mistakes” has been viewed more than 10,000 times (and only a few dozen were by my mother!). You can see it below.

Other videos we have made include:

– Ten Essential Trademark Tips

– Non-Traditional Trademarks

– Choosing a Trademark

– Trademark Scams

 – 5 Basic Brand Protection Tips for Trademark Owners

– USPTO Trademark Application Process

– 10 Reasons to Register Your Trademark

– Trademark Dilution

and more….

For all of our videos, head on over to our YouTube channel:


Ever since I filed my first trademark application for a client more than 12 years ago in 1999, I have charged a flat fee for every one of the several thousand trademark applications I have handled. I believe that all inclusive flat fees best represent the value provided by my services, and also provide an enormous benefit to the client – especially the small business – who cannot budget properly for the many possibilities that a trademark application entails if the total fee is not set at the start.

Many other trademark attorneys advertise ‘flat fees.’ But how many can truly tell you the entire cost of the application from filing to completion, including office actions, allegations of use, phone calls, and more?  I know of one – me.  There may be others.  But the large majority of “flat fee” deals I have seen are deceptive – there is a flat fee for the initial filing but the total cost of the entire application may be much more depending on what happens to the application.

Here is an example of why I believe my truly flat fee best serves the client – even if it is higher than the “initial flat fee” for filing charged by others:

A potential client contacted me. They had already spoken to another attorney who offered to file a one class application for $X plus the USPTO fees.  The lawyer’s fee included responses to non-substantive objections to registration by the USPTO. But in the event that the Trademark Examiner makes a substantive objection to registration (likelihood of confusion, merely descriptive, etc.), the fee was not only not included in the $X, it was not even listed or estimated.  It represented a total unknown.

And so I responded to the potential client, verbatim:

The devil is in the details 🙂  His flat fee covers “responses to non-substantive objections”.

 As you can imagine… substantive responses, when necessary, are the more complicated and time consuming ones. My flat fee includes them.  

Of course, I also believe my experience regarding the USPTO is far greater. He has registered about 10 trademarks. I have registered about 1,700.

Needless to say, I am glad to call the “potential client” in this situation a new client.

The New York State Bar Association’s Intellectual Property Law Section Annual Meeting will be held September 14-15, 2012 in New York City. 

I will be speaking on a panel  called “INITIATIVES TO ADDRESS TRADEMARK BULLYING”

The USPTO recently requested comments from companies and practitioners on ways to address problems (whether actual or perceived) with over-aggressive policing and enforcement of trademark rights. The comments did not result in any new regulations, but whether small trademark owners are being unfairly taken to task is a sensitive subject engendering much controversy. Are the large trademark owners playing fair in vigorously protecting their goodwill? Our panel of practitioners, including a former USPTO examiner, will share their views.

Moderator:     Peter S. Sloane, Esq., Leason Ellis LLP, White Plains

      Susan Upton Douglass, Esq., Fross Zelnick Lehrman & Zissu, PC, New York City

      Erik M. Pelton, Esq., Erik M. Pelton & Associates, Arlington, VA

The “bullying” topic has not gone away following the USPTO’s report last year. If anything, media coverage of possible or purported bullying situations has increased in 2012.

For more details about the conference, which also features sessions on TLD’s, design patent litigation, and more, see the NYSBA website.