Exploring IP Internationally via Puerto Rico's Legal Landscape

Speaker A: Hello. Welcome to the Branch UNED podcast. My guest today is Paola Zaragoza Cardinales, who is a New York bar attorney with her own law firm, Zaragoza Cardinales. She also has a role at UPR Law School, which I'm sure we'll hear about shortly. She has a doctoral degree in judicial Science from Indiana University and a master's degree in law from the University of California, Berkeley, as well as being a Juris Doctor, um, at the University of Puerto Rico. So Paola, welcome to the Brandtune podcast. I'm delighted you've come on to discuss branding and IP with me. So do you want to introduce yourself and say something about, uh, what you do and where you're based, please.

Speaker B: Yes, of course. Thank you for having me. So my name is Pa. Zara Carales. I'm based in San Juan, um, Puerto Rico. It's a, uh, small Caribbean island and San Juan is the capital city. I'm a specialist in intellectual property and I also work business. Um, I recently, uh, came back home from so many years being around the world doing different stuff. Um, my academic and professional background is in fact around the world from the world Intellectual Property Organization, um, UC Berkeley for my LLM, Indiana Bloomington for my SJD and um, Bachelor Centuries Doctor. We're here in the University of Puerto Rico where I currently work. So it's like a full circle moment.

Speaker A: Right. So are you, actually I, I read on your profile that you are, ah, a New York qualified, um, attorney. Is that right?

Speaker B: Yes. Yes.

Speaker A: You have a different, uh, qualification in Puerto Rico or.

Speaker B: Yes, it's a little bit peculiar because, uh, um, all of the Puerto Rican attorneys go through the process of the Puerto Rican bar. But um, I tried it and that didn't work out. And I was like, well, I'm going to specialize in intellectual property and I, uh, just might as well try another bar exam. So I did that.

Speaker A: Yeah.

Speaker B: And I've been keeping it that way since most, uh, of my clients are um, you USPTO or US Copyright Registers. It's uh, it's okay to kind of have that particularity.

Speaker A: Yeah. So Puerto Rico is part of the states, isn't it?

Speaker B: Yes. We have a weird relationship. Um, we are a territory, a colony of the United States. We're not a state. But, um, but we do have like a, um, a similar legal system. How do I explain this? Um, so there's the present and the federal court and everything, and we have to abide by that. But then we have our own governmental system, our own Supreme Court, our own governor. But that goes Below the federal stuff.

Speaker A: Right. And you have your own trademark registry or is it um. Yeah, yeah.

Speaker B: Ah, and our own copyright.

Speaker A: Okay, good. Well you see my perspective is that brand IP is, affects um, how you design a business and brand and that there are universal principles that apply the world over.

Speaker B: Yeah.

Speaker A: And though the details of each country's laws might differ, so for example in the UK you wouldn't be able to own a very descriptive name. You would have to, you know, um, have something more distinctive to be able to stop competitors using the same name. And I imagine that's the same for you in your jurisdiction.

Speaker B: Yeah, yeah, it's, it's the same. We do have ah, like some strange cases here and there where for instance, uh, we have a company called Target Rental Car that doesn't exist in the US So for instance for Target, the store to enter Puerto Rico, it has to change its logo and name completely.

Speaker A: What, so the Target in Puerto Rico was already there before? Yeah, I think that happened in Australia for Burger King. I think they're called Hungry Jacks or something there because somebody already had Burger King. So that's just the sort of different um, jurisdictions and you need to register in different countries. But in terms of principles like for example that you shouldn't use the same name as a famous brand, uh, even outside their strict area like um, you can't call your construction company Google Construction because Google is a famous mark. And that presumably is the same in.

Speaker B: Yeah, that's.

Speaker A: But you know, whether some, a brand like Hugo Boss is a famous brand and therefore has greater protection might differ in one country rather than another. Is that right?

Speaker B: Yeah, that's right. I would say like one of the really big differences is moral rights. Since our legal system is.

Speaker A: For copyright, you mean?

Speaker B: Yeah, for copyright. Um, our legal system is both common and civil law. And the moral rights comes from the civil part.

Speaker A: Yeah.

Speaker B: And the US does kind of ah, recognize moral rights in the uh, in bar, um, the Visual Arts act, but it's not as uh, extensive and as uh, like hardcore as our moral rights.

Speaker A: Okay, I'd be interested to um, find out more about that. So say you have a logo designed for you by a uh, designer. They will have copyright and moral rights unless, well in the UK you can get them to assign the copyright to you and to waive their moral rights so that another designer uh, could then add a tagline or do something else with the logo. How would it work in Puerto Rico then?

Speaker B: It mainly protects you against vandalism. Um, most of the cases in, in the courts are about that subject. And then if you assign or do something with your copyright or any IP and the other person gets a little bit too creative with that, then you can say like, hey, I didn't tell you to do that because uh, everything, every right is like sold separately. So you can say, hey, I'm just licensing this to you, but no modifications.

Speaker A: Can you uh, get a designer, uh, to assign all the rights, their copyright and to waive their moral rights completely?

Speaker B: Yeah, you can do them.

Speaker A: You can do that. Okay, so yeah. So how does having moral rights um, change things? Because if you can waive them, um, how does it, you know, uh, impact a business in practice that there's moral rights over there?

Speaker B: Well, I've seen cases where for instance the family or the succession that inherits the um, anything that the offer did, um, claims that the publishing M company or whoever, whoever has the rights isn't like honoring the person properly. And then that may uh, more rights can come in and, and say like hey, we. That wasn't agreed upon anywhere.

Speaker A: Mhm. What, so changing what was designed to.

Speaker B: Yeah, so even though you assigned it away, you can kind of sort of backtrack and say hey, at least be respectful if you're going to do that.

Speaker A: Okay, so um, what actually motivated you to focus on intellectual property? Um, tell me a bit about your, you know, how your journey into intellectual property.

Speaker B: My journey is a bit peculiar because I started, I always wanted to be a lawyer, but I didn't know that my life will end up, would end up in iPad. Wasn't until the third year where I uh, was doing my clinic and in, in those three years I was doing food and travel blogging as a hobby to kind of decompress from law school. And in the clinic, um, I chose to do a um, community development. And yeah. And all the clients were farmers. And I was like, oh, so this is a thing. Uh, I like this. I can combine my hobby with law. And then all of a sudden they were asking a bunch of questions about IP and I was like, oh, so this is a whole thing. Okay, I like this even more and I just went with it.

Speaker A: So farmers had IP issues?

Speaker B: Yeah.

Speaker A: What sort of issues would farmers have?

Speaker B: Um, so for instance, um, registering their trademarks or for their farms.

Speaker A: The names of their farms.

Speaker B: For their names of the farms or, or their products they were selling. M. Um, sometimes they had a pattern. They were like inventing ah, stuff for um, we have like large areas of land where we have uh, drought issues. So they were like very hands on with Their equipment and doing makeshift things

Speaker A: for um, sprinkling water or something.

Speaker B: Or sprinkling water. And they were interested in patenting that. Ah, sometimes they were publishing books for the benefit of other farmers. Um, it's like it was this huge community movement. Um, and I was like, this is very cool.

Speaker A: Gosh, I would never imagine farmers as a sort of sector. I don't think I have any farmer clients. But. So that's. That got you involved in. But food obviously has a lot of IP involved.

Speaker B: Yeah, yeah.

Speaker A: Do you specialize in food at all?

Speaker B: Um, well, I did my whole dissertation on food, so. Yeah.

Speaker A: So what was your dissertation about?

Speaker B: It was about this trademark that we have here in Puerto Rico called Del Pais. And it's for agricultural products. Uh, but also it's. It covers both raw products and value added products. So food, anything that you would buy in the restaurant. And uh, um, it has really good intentions, but it has some things missing. And my whole dissertation is about like proposing things to fill in the gaps.

Speaker A: Interesting. So what about, um, the intellectual world? Intellectual property office. What led you there and what were you doing with them?

Speaker B: What led me there was the dissertation. I was just one day writing my dissertation and I received a newsletter because I was subscribed to wipo and it was a, uh, an advertisement for their internship and it was precisely for the trademarks and geographical indications department. And. Okay, I might as well. And I landed the internship and it was really beneficial for me to see my dissertation in real life. And I, uh, had that moment of like, see, I'm not crazy. Both in theory and practice. This can work.

Speaker A: Yeah. So do you get involved at all when people are designing their businesses or creating brands? How do you work, um, with businesses around that, like when they're first choosing a name and.

Speaker B: Well, um, I usually sit down with them and, and see if they have a name picked out and how they came about with that name. And then, uh, um, in the back of, uh, in the back and forth of seeing if it's available, seeing if there's like other options if that name is not available. And then, uh, um, seeing if they have already a logo. Uh, because sometimes they choose to do the logo for themselves. Um, or sometimes they have enough money to hire a graphic designer. And then I sit down with the graphic designer to see if that logo looks a little bit too similar to other logos. Uh, um. And from there I can go on ahead and register. I also help them with business plans, um, and trying to integrate the intellectual property to that business plan because, ah, at least here it's very important that they identify and integrate that ah, to the business plan so they can get access to incentives and tax benefits.

Speaker A: So this is in the agricultural space,

Speaker B: is it um, irrespective of like the type of client, but most importantly in the agricultural space because uh, most small and medium, um, businesses and farmers, especially the local ones are overlooked.

Speaker A: Okay. I find in the UK anyway, uh, people are often not very aware of ip. They tend to think it's something if they have heard about it at all. They think it's something for if they're successful and have something to protect. They don't generally think I need an IP lawyer when they're first designing their ah, business. So is there anything in your legal system that would make them come to a lawyer first rather than, you know, not? Because in the UK they wouldn't necessarily turn to a lawyer first.

Speaker B: Most of them, yeah, it's the same here. I would say that what is going on that might incentivize them to go to an attorney first? Um, at least more now than uh, several years before. First of all was the hurricane that like triggered that change and then how

Speaker A: did the hurricane trigger that?

Speaker B: Like a lot of farmers lost absolutely everything and they had to start over.

Speaker A: Okay.

Speaker B: Yeah. And then uh, like there's from, and, and also from that event a lot of incubator programs and accelerator programs came about and they were like raising awareness of like get yourself a lawyer. We have lawyers that are affordable, that you can order. They'll be scared to ask them questions. Yeah.

Speaker A: Okay. And um, um, do they get a grant to get a lawyer for example? Or do they here, they, they sometimes get a grant for an IP audit, but usually they, they, they would be established businesses.

Speaker B: Mhm.

Speaker A: There are maybe libraries where people give some free advice, but usually it's staffed by people who are trying to get business.

Speaker B: Mhm.

Speaker A: Through doing free work. Okay, so do you then do international checks at all or do you tend to focus just on local availability?

Speaker B: I do international checks, so my search is pretty in depth. So um, other than international, I search all social media plus uh, domain names and then all of the other registers, the uspto, Puerto Rico, the works.

Speaker A: Well that must be expensive for them. Um, is it, I mean do they have to register a company over there? To some biz. Some countries people have to register a company. Do they have to register companies or can they just be trading as?

Speaker B: Yeah, they can be doing business as, but it's so economically risky to um, to do. Especially after Hurricane Maria that It's not, it's not sound to do it as doing business. Asset.

Speaker A: So you do all these checks. Um, I mean roughly what sort of charge would you, would they have to incur to have checks and register trademark?

Speaker B: Well, um, that's where I stand out from the rest of the IP attorneys here. Um, the average IP attorney and um, the really huge uh, um, law firms are averaging $300 an hour, which is out of the budget. Yeah, the average person. But um, but my hours are 100 to 140. Uh-huh. Depending on the complexity.

Speaker A: And you charge on an hourly rate or do you just say I charge X amount for a search and then it's up to you whether it takes 10 hours or 5 hours or whatever.

Speaker B: Yeah, what I usually do is that like I know it's going to take me on average 10 hours to do a search and I charge that. Mhm. And what I do is separate the uh, register in phases. So there would be a first payment for the search, then a second payment for the actual process of doing the register. And then when the USPTO does deliver, um, the office action, then there's a payment and then the last payment is when you finally get the certificate.

Speaker A: Okay. And so branding companies don't really get involved with clients. Or are some clients likely to go to a branding agency first and then choose a name and then come to you later to register?

Speaker B: Yeah. That's usually the route.

Speaker A: Is it?

Speaker B: Yeah.

Speaker A: How do you work in that situation?

Speaker B: Um, well what I do is that um, I really, I really do like having all of a collaboration and doing a, uh, like a full network of um, non traditional clients where I sometimes um, email the branding agency and say like, hey, if you ever need an attorney, an affordable attorney for your clients and all of your branding stuff, I'm here. And, and, and that usually works. They refer, uh, they refer to me clients, uh, or sometimes I meet the branding agency thanks to a client that had a lot of IP questions and, and through there I get even more clients. Uh, um, but usually it's the client that already has like all the colors, the fonts, everything.

Speaker A: Yeah, I find it's, it's a little bit unsatisfactory the way the two professions work together because um, most branding agencies assume that just checking availability is all there is to it. And I found that actually if people understood the brand protection dimension, you know that some names are very difficult to enforce or are very, are going to be very difficult to register in other countries it's going to be more expensive. They would think about it more than just is it available.

Speaker B: Yeah, I agree. There's a lot of branding agencies that to get a quick book, they commit trademark infringement and uh, it's like, really, Come on, guys.

Speaker A: Yeah, well, some of them aren't just aren't aware actually of ip. I find that happens quite a lot that, you know, they're just designers and they're not necessarily aware that they can't just choose any name they like.

Speaker B: Um, yeah, yeah. Or sometimes they do. Like, um, there's this whole thing in Puerto Rico where you do like matching T shirts for any sort of event. So like, for instance, you're going to Disney on a family trip and you like to put your last name, um, like insert here last name. So family. And everyone's like identified by the customized T shirt. So there's, there's this like whole thing where graduate students, senior, senior, uh, high school students buy T shirts, um, of the university that accepted them, but they just go to your neighborhood T, ah, shirt printing shop and uh, slap on a Harvard or Berkeley. And it's like, I like the sentiment that you're like, very proud and all, but that's streamwork infringement.

Speaker A: Yeah, yeah. I mean, I think that really part of the problem I see is that IP is considered to be a legal subject. And um, therefore, you know, a designer or marketer thinks, well, that's legal and they don't think they need to know it because they think, I can bring in a lawyer. But actually, a lot of the IP principles are just part of how you would design a business. It's not really law. I mean. Yeah, it's sort of just general knowledge that somebody needs to have when they're designing a business and brand. Yeah, you go to lawyers for certain things, but it doesn't mean you yourself mustn't have this sort of body of knowledge. And that's what I'm trying to change is to, you know, separate IP principles that I think anyone should know from IP laws which are going to be specific to lawyers to know and understand. So.

Speaker B: Yeah, I agree. Um, what I think I can add that got me to IP is that I never think like a lawyer. I always think like a business person.

Speaker A: Yeah.

Speaker B: And that, that's what gets me thinking out of the box and going with these crazy ideas of combining gastronomy with ip. And um, I was like one of the few people that first started talking about the subject. It's not until now, like literally tomorrow that there's going to be the first event about law and gastronomy. I was like, oh, now you guys want to talk about the subject?

Speaker A: Okay, so you. You were writing about law and gastronomy, were you? Yeah, but from a, uh, business perspective, and then bringing IP into it to the extent that it mattered.

Speaker B: Yeah, yeah, exactly.

Speaker A: Yeah. I think this whole area, uh, especially ip, is. Isn't just law, you know, you need to understand business and the context in which people are using ip.

Speaker B: Exactly.

Speaker A: So that's your experience, too. Great. Before I. We finish, I just wanted to ask how you would define a brand.

Speaker B: I would define a brand as. It's so much more than ip. It's you as a person. And what defines you? Um, um, your values, your mission, both professionally and academically. And it just so happens that it's, uh, transferred into a business that gets you money and, like, fulfills that person in that purpose. Um, I happen to be lucky that, like, those that both my career and my purpose in life are aligned M. And that way I feel like, fulfilled of, like, have. Having combined everything. And that's how I define a brand.

Speaker A: What is your purpose?

Speaker B: Um, my purpose is to. To see if, like, IP can be less scary and that, uh, people can see the value in that and that, uh, it can have so much potential beyond just like, a simple register.

Speaker A: Yeah. The nuance of IP is something really that people need to understand because I find people come along and say, how can I protect this? And then if you say, well, this, you can't protect it. But the name is very important that, uh, actually protects the concept. They're a bit disappointed. They don't seem to understand how no name is no.

Speaker B: And. And like, my main purpose is to first educate. I love to educate. That's why I. The first things I did when I, um, finished all of my studies was become a professor. Then we can talk about all the contracts and all the paperwork.

Speaker A: Yeah. So do you also run your own business? Apart from being a professor, Are you also in business?

Speaker B: Yes. So I'm. I'm a professor and I manage the master's in law program and the international exchange programs at the University of Puerto Rico, the law school. Um, and on top of that, I, um, have my own client, so.

Speaker A: So you have your own law firm?

Speaker B: Yeah, yeah, it's just me and my dog, if you can count that as. As an employee.

Speaker A: And, um, how can people get in touch with you, Paola, if they, you know, if they want to reach out for any reason, what's the best way?

Speaker B: Well, speaking of brands and ip, you can search with my two last names, which happen to be a registered trademark. It's Saragosa Cardinales. And you can find me in my website, saracarales.com and also through social media, where I do, um, reels and short clips about, like, interesting stories of ip. So it's like a little bit of history of and a little bit of. Did you know this is ip?

Speaker A: Oh, right. So you're on Instagram, presumably? You do that?

Speaker B: Yes, Instagram and Facebook.

Speaker A: Well, we'll be sure to link to those in the show notes. So thank you very much, Paola, for this chat. Very nice to have met.

Speaker B: Thank you so much for the opportunity.