Introduction 

In this episode, Paola Zaragoza Cardenales, a seasoned attorney and IP expert from Puerto Rico, discusses the strategic importance of intellectual property in business development. Learn how IP can benefit your company's growth and success!

Show Notes

LinkedIn: Paola Gabriela Zaragoza Cardenales

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Transcript

Shireen: Hello, welcome to the Brand Tuned podcast. My guest today is Paula, Zaragosa Cardenales, who is a New York bar attorney with her own law firm. Zaragosa Cardenales. She also has a role at UPI 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 at the University of Puerto Rico, So Paula, welcome to the Brand Tuned Podcast. I'm delighted you have come on to discuss branding and IP with me. So do you want to introduce yourself and say something about what you do and where you're based, please.

Paola's Background

Paola: Yes of course, thank you for having me. So my name is Paola Zaragoza Cardenales. I'm based in San Juan, Puerto Rico. It's a small Caribbean island. And as someone is the capital city, I'm a specialist in intellectual property. And I also work business. I recently came back home from so many years of being around the world doing different stuff. My academic and professional background is in fact around the world from the World Intellectual Property Organization, UC Berkeley for my LLM in Indiana, Bloomington for my SGD bachelor's and Juris Doctor, were here in the University of Puerto Rico, where I currently work. So it's a full circle moment.

Shireen: Right? So uh, you actually I read on your profile that you are a New York qualified attorney, is that right?

Paola: Yes, yes. 

Shireen: You have a different qualification in Puerto Rico?

Paola: Yes, it's a little bit peculiar, because 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 gonna specialize in intellectual property. And I just might as well try another bar exam. So I did that. And I've been keeping it that way since most of my clients are USPTO or US copyright registers. So it's, it's okay to kind of have that particularity. 

Puerto Rico's Legal System Vs In The US

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

Paola: Yes, we have a weird relationship. We are a territory or a colony of the United States. We're not a state, but but we do have like a similar legal system. How do I explain this? So there's the president 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.

Shireen: Right and do you have your own trademark registry or is it

Paola: Yeah, yeah. They're all copyright.

Shireen: Okay, good. Well, you see, my perspective is that brand IP is affects how you design a business and brand. And that there are universal principles that apply the world of, though the details of each country's laws might differ. So for example, in the UK, you wouldn't be able to earn a very descriptive name, you would have to, you know, 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.

Paola: Yeah, it's the same. We do have, like some strange cases here and there, where, for instance, we have a company called a 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.

Shireen: What so the target in Puerto Rico was already there before? 

Paola: Yeah.

Shireen: 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 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 the famous brand, even outside the strict area, like, you can't call your construction company Google construction, because Google is a famous mark. And that, presumably, is the same. But you know, whether some brand like Hugo Boss is famous brand, and therefore has greater protection might differ in one country rather than a another? Is that right? 

Paola: Yeah, yes.

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

Paola: Yeah, that's right. I would say like, one of the really big differences is moral rights, since our legal system is for copyright, for copyright, our legal system is both common and civil law. And the moral rights comes from the Civil Part. The US does kind of recognize more rights in the in Barbara Davis visual arts act, but it's not as extensive and as, like hardcore as our more rights.

Copyright Laws

Shireen: Okay, I'd be interested to find out more about that. So say you have a logo designed for you, by a designer, they will have copyright and moral rights. Unless we're in the UK, you can get them to assign the copyright to you, and to waive their moral rights, so that another design could then add a tagline or do something else with the logo, how would it work in Puerto Rico, then

Paola: It mainly protects you against vandalism. Most of the cases 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 everything, every bride is like sold separately. So you can say, hey, I'm just liking saying this to you. But no modifications.

How Moral Rights Change Things?

Shireen: Can you get a designer to assign all the rights, their copyright and to waive their moral rights completely? You can, you can do that. So yeah, so well, how does having moral rights? change things? Because if you can waive them, how does it you know, impact a business in practice that there's moral rights over there?

Paola: Well, I've seen cases where, for instance, the family or the secession that inherits the anything that they offered the claims that Add the publishing company or whoever, whoever has the rights isn't like honoring the person properly. And then that may add more rights can come in and and say like, Okay, we that was an agreed upon anywhere.

Shireen: What so changing what was designed?

Paola: Yeah, so even though you assign the way you can kind of sort of backtrack and say, hey, at least be respectful if you're going to do that.

Motivation To Focus On IP

Shireen: So what actually motivated you to focus on intellectual property? Tell me a bit about your, you know how your journey into intellectual property. 

Paola: 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 I would end up in IP wasn't until the third year where I 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, I chose to do community development and development. Yeah. And all the clients were farmers. And I was like, Oh, so this is a thing. 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, also, this is a whole thing. Okay, I like this even more, and I just went with it.

Intellectual Property Issues Faced By Farmers

Shireen: So farmers had IP issues. 

Paola: Yeah.

Shireen: What sort of issues would farmers have?

Paola: So for instance, registering their trademarks,

Shireen: the names of their farm

Paola: their names of the farms or, or their products they were selling. Sometimes they had a pattern. So they were like inventing stuff for we have like large areas of land where we have drought issues. So they were like, very hands on with their equipment and doing major makeshift things work

Shireen: with sprinkling water

Paola: sprinkling water. And they were interested in patenting that sometimes they were publishing books for the benefit of Otter farmers. And it's like, it was this huge community movement. And I was like, this is very cool.

Shireen: Gosh, I would never imagine farmers and social sector. I don't think I have any farmer plants. But so that's that got you involved in. But food obviously has a lot of IP involved.

Paola: Yeah, yeah. 

Shireen: Do you specialize in food at all?

Dissertation On "Del Pais" Trademark In Puerto Rico

Paola: Um, well, I did my whole dissertation on food. Yeah.

Shireen: So what was your dissertation about?

Paola: It was about this trademark that we have here in Porto Rico called del Pais and it's for agricultural products. But also, it covers both raw products and the value added product, so food, anything that you would buy in the restaurant, and 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.

Shireen: Interesting. So what about the intellectual World Intellectual Property Office? What led you there and what were you doing with them?

Internship Experience At WIPO

Paola: What led me there was the dissertation I was just Monday writing my dissertation, and I receive a newsletter because I was subscribed to WIPO, and it was a an advertisement for their internship. And it was precisely for the trademarks and geographical indications department. Okay, I'm might as well and I landed the internship. And it was really beneficial for me to see my dissertation in real life. And I had that moment of like, see, I'm not crazy, both in theory and practice this can work.

Working With Businesses On Intellectual Property

Shireen: So do you get him Have the tool when people are designing their businesses or creating brands, how do you work with businesses around that, like when they're first choosing a name?

Paola: Well, 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 and then backup in them back and forth of seeing if it's available, seeing if there's like other options, if that name is not available, and then seeing if they have already a logo, because sometimes they choose to do the logo for themselves. 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 order logos. And from there, I can go on ahead and register, I also help them with like business plans and, and trying to integrate the intellectual property to their business plan. Because at least here, it's very important that they identify and integrate that to the, to the business plan, so they can get access to incentives, and tax benefits.

Shireen: This is in the agricultural space is it?

Paola: in respective of like the type of client but most importantly, in the agricultural space, because most small and medium businesses and farmers, especially the local ones are overlooked.

Importance Of Integrating IP Into Business Plans

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

Awareness Of Intellectual Property Post-hurricane

Paola: Yeah, it's the same here. I would say that, what is going on it that might incentivize them to go to an attorney first. At least mourn now, then, several years before, first of all, was the hurricane that like triggered that change? And then

Shireen: How did the hurricane trigger?

Paola: That like a lot of farmers lost absolutely everything. And they had to start over.

Shireen: Okay. 

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

Shireen: Okay. And do they get a grant to get a lawyer, for example, did they hear they they sometimes get a grant for an IP audit, but usually they would, they would be established businesses. There are maybe libraries where people give some free advice, but usually it's staffed by people who are trying to get business or doing free work. Okay, so do you then do international checks at all? Or do you tend to focus just on low Oh, availability?

Legal Checks Performed

Paola: I do international checks. So I my search is pretty in there. So So other than international, I search all social media, plus domain names, and then all of the other registers the USPTO, Puerto Rico the work, so

Shireen: Wow, that must be expensive for them. 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

Paola: Yeah, they can be doing business as but it's so economically risky to do, especially after Hurricane Maria, that it's not. It's not sound to do it. So doing business assets.

Legal Fees

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

Paola: Well, that's, that's where I stand out from the rest of the IP attorneys here. The average IP attorney, and then like, the really huge law firms are averaging $300 an hour, which is out of the budget. Yeah, we're the average person, but but my hours are 100 to 140, depending on the complexity.

Shireen: And do 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 five hours or whatever?

Paola: Yeah, what I usually do is that, like, I know, it's gonna take me on average, 10 hours to do a search, and I charge that. But what I do is separate the register in phases. So there will 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 delivered the office action, then there's a payment, and then the last payment is when you finally get the certificate.

Involvement Of Branding Agencies

Shireen: 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?

Paola: Yeah, that's usually the route. 

Shireen: Is it? How it works in that situation?

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

Challenges With Branding Agencies And Trademark Infringement

Shireen: Yeah, I find it it's a little bit unsatisfactory, the way the two professions work together, because most branding agencies assume that just checking availability is all there is to it. I've found that actually, if people understood the brand protection dimension, you know that some names are very difficult to enforce, or are very 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? 

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

Shireen: Yeah, some of them aren't just aren't aware 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.

Paola: Yeah. Or sometimes they do like 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 like insert your 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 and senior senior high school students buy T shirts Have the university that accepted them, but they just go to your neighborhood t shirt printing shop and 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 trademark infringement?

Misconception With IP

Shireen: Yeah, I mean, I think that really part of the problem I see is that IP is considered to be a legal subject. And 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, don't really, yeah, it's sort of just general knowledge that somebody needs to have when designing a business and a 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 separate IP principles that I think anyone should know from IP laws, which are going to be specific to lawyers to learn and understand.

Paola: I agree. 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. Yeah. And that that's what gets me thinking out the box and going with these crazy ideas of combining gastronomy with IP. And I was like one of the few people that first started talking about the subject. And it's not until now, like, literally tomorrow that there's going to be the first event about Law and gastronomy. I was like, also, now you guys want to talk about the subject. Okay.

Shireen: So you you were writing about law and gastronomy, were you?

Paola: Yeah

Shireen: But from a business perspective and IP into it, to the extent that it mattered. Yeah. 

Paola: Yeah, exactly. 

Shireen: Yeah, I think this whole area, especially IP is, isn't just law, you know, you need to understand business, and the context in which people are using IP. 

Paola: Exactly.

Defining A Brand

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

Paola: I would define a brand as it's so much more than IP, it's you as a person and what defines you. Your values your mission, both professionally and academically, and it's just so happens that it's transferred into a business that gets you money and like fulfills that person in that purpose. I happen to be lucky that like, those that both my career and my purpose in life are aligned. That way, I feel like fulfilled of like, having combined everything. And that's how I define a brand.

Shireen: What is your purpose?

Paola: My purpose is to to see if like, IP can be less scary, and people can see the value in that. And it can have so much potential beyond just like a simple register.

Shireen: Yeah, the nuance of IP is something really that people need to understand. Yes, 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 it protects a concept that are a bit disappointed. They don't seem to understand how the name is.

Paola: No. And like, my main purpose is to first educate, I love to educate. That's why I have the first things I did when I finished all of my studies was become a professor. Then we can talk about all the contracts and all the paperwork.

Shireen: Yeah. So do you also run your own business apart from being a professor? Are you also in business? 

Paola: So I'm, I'm a professor And I've managed the master's program and the international exchange programs at the University of Puerto Rico the Law School. And on top of that, I have my own client. So. 

Shireen: So you have your own law firm.

Paola: Yeah. It's just me and my dog, if you can count that as, as an employee.

 How To Get In Touch

Shireen: 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? 

Paola: Well, speaking of brands and IP, you can search with my two last names, which happened to be a registered trademark. It's Zaragoza Cardinales. And you can find me in my websites, zaragozacardenales.com, and also through social media, where I do reels and short clips are about like interesting stories of IP. So it's like a little bit of history of a little bit of Did you know, this is IP.

Shireen: All right, so you're on Instagram, presumably?

Paola: Yes, Instagram and Facebook. 

Shireen: We'll be sure to link to those in the show notes. So thank you very much, Paola, for this chart. Very nice to have you. 

Paola: Thank you so much for the opportunity.