Administrative
Report
H.14., File # 24-1386 Meeting Date: 8/20/2024
To: MAYOR AND CITY COUNCIL
From: MICHAEL W. WEBB, CITY ATTORNEY CRISTINE SHIN, SENIOR
DEPUTY CITY ATTORNEY
TITLE
APPROVE THE AGREEMENT FOR LEGAL SERVICES WITH INNOVENT LAW, P.C., A
PROFESSIONAL CORPORATION
EXECUTIVE SUMMARY
The City of Redondo Beach (“City”) has been discussing the trademarking of its logo in a series of City Council meetings. Specifically, during the meetings on May 7, 2024, and July 9, 2024, the City Council discussed protecting the intellectual property of the City’s logo. The City Attorney’s Office has identified Innovent Law, P.C., a professional corporation (“Innovent Law”) specializing in patent, copyright, and trademark services, as a recommended firm to handle this matter.
BACKGROUND
The City’s logo has been a topic of discussion across multiple City Council meetings. Initial discussions began on February 14, 2023, with the City Council exploring various aspects of the logo design. This topic continued to be discussed in subsequent meetings on October 17, 2023, February 13, 2024, April 2, 2024, and April 16, 2024. The concept of trademarking the City’s logo was formally addressed on May 7, 2024. During this meeting, City Manager Witzansky discussed the development of a color palette for the logo, the consideration of various gradient versions, and the implementation of trademarking and additional protective measures. The discussions culminated on July 9, 2024, when Councilmember Behrendt inquired about the impact of selecting a specific gradient on the City’s ability to protect the intellectual property of the logo.
The City Attorney’s Office identified Innovent Law as a firm with the expertise required to manage the trademarking process. Innovent Law offers comprehensive services, including conducting clearance searches to ensure the trademark is protectable and does not conflict with existing marks. They will register the trademark with the U.S. Patent and Trademark Office (“USPTO”), state offices, and international trademark offices if necessary.
When Innovent Law files the trademark application, they will specify the appropriate classes for the goods or services associated with the trademark. This is done according to the classification system used by the USPTO to organize different types of goods and services. For example, merchandise may fall under Class 25 for clothing; promotional materials may fall under Class 35 for advertising services; and community events may fall under Class 41 for
H.14., File # 24-1386 Meeting Date: 8/20/2024
fall under Class 35 for advertising services; and community events may fall under Class 41 for educational and entertainment services.
Innovent Law's trademark practice includes:
1. Advising clients on the selection of names and logos for trademark
2. Registering and maintaining trademark rights in the U.S. and internationally
3. Representing clients in trademark infringement lawsuits and opposition proceedings
4. Licensing and transferring trademark ownership
5. Handling all procedural aspects of trademark applications Innovent Law's process for securing a trademark involves several steps:
1. Conduct a Search: Innovent Law conducts thorough searches on the USPTO website and other relevant platforms to ensure the chosen logo does not infringe on existing trademarks.
2. File the Trademark: If the mark is unique, Innovent Law files the trademark application with the USPTO.
3. Respond to Office Actions: Responding to any inquiries or objections from the USPTO.
4. Publish the Trademark for Opposition: The trademark is published for opposition to allow any objections from third parties.
5. Provide the Registered Mark: After addressing any opposition, the trademark is registered.
The detailed timeline for Innovent Law's trademark application process is provided in the attachment labeled “Innovent Law Trademark Application Process Timeline”.
COORDINATION
The Agreement has been approved by Innovent Law and the City Attorney’s Office.
FISCAL IMPACT
Innovent Law has proposed a set fee of $1,800 per mark, $350 per class for up to three classes, and $700 per class for any additional classes beyond the first three (this $700 includes both legal and application fees) for trademarking the City's logo, as outlined in the attached “Innovent Law Trademark Services and Pricing Guide”, which is incorporated into the Agreement for Legal Services.
Any other services not explicitly described in the attached pricing guide will be billed at an hourly rate of $450.
The total cost will depend on the number of classes, currently estimated at fourteen, resulting in an estimated $10,550 for the trademarking of the City’s logo. This amount does not include potential hourly fees that the City may incur during this process. Funding for this trademark work is available in the various annual budgets of the affected operating departments. Final expenses will be allocated on a per trademark class, per department basis.
H.14., File # 24-1386 Meeting Date: 8/20/2024
ATTACHMENTS
1. Agreement for Legal Services with Innovent Law
2. Innovent Law Trademark Services and Pricing Guide
3. Innovent Law Trademark Application Process Timeline
4. Karima Gulick Biography