The McConnell Valdés Intellectual Property Practice Team is widely regarded as one of the most respected and accomplished in Puerto Rico.
Government officials frequently rely on our expertise when drafting intellectual property laws, regulations, and amendments. McConnell Valdés was invited to contribute to the drafting of the new Puerto Rico Trademarks Act and the Consumer Defense Code. Amendments to DACO’s Regulation on Misleading Practices and Advertisements incorporated several of our firm’s proposals. In addition, one of our attorneys played a key role in drafting the Right of Publicity, Trade Secrets, and Moral Rights bills, all enacted between 2011 and 2012.
Recognizing that intellectual property is a critical corporate asset, we are committed to helping clients secure optimal protection for their trademarks, service marks, patents, and copyrights under both U.S. and Puerto Rico law. We also regularly coordinate international IP protection and enforcement through close collaboration with trusted attorneys around the globe.
Our team, composed of lawyers from both corporate and litigation practices, has achieved significant victories across the full spectrum of IP challenges—from trade dress disputes and cross‑border copyright infringement actions to cases involving counterfeit goods and false advertising. Our experienced litigators have prevailed for clients in federal, state, and local courts, as well as before Puerto Rico’s trademark, trade name, and moral rights registration agencies.
We also effectively prosecute—and vigorously defend—clients' IP rights before the U.S. Copyright Office and the United States Patent and Trademark Office (USPTO).
Our representation extends to defending clients in matters involving the Business Software Alliance (BSA) and assisting with a wide array of related compliance and enforcement issues including:
- Formulating responses to BSA claims.
- Advising clients on software audits.
- Establishing and crafting corporate software use policies and internal controls to prevent unauthorized software copies.
- Preparing memoranda to employees regarding the unlicensed duplication or use of software.
- Preparing corporate–employee agreements.
Top-ranked by Legal 500, Chambers and Partners and the peer-based The Best Lawyers in Puerto Rico guide, our attorneys are active members of the International Trademark Association (INTA) and participate in many of INTA's regional committees.
What We Do
The McConnell Valdés Intellectual Property Practice Team:
- Assists clients in obtaining trademark, copyright, patent, and service mark protection
- Assists clients in managing their IP portfolios
- Drafts sponsorship agreements
- Drafts trademark license agreements
- Obtains injunctions against the importation of counterfeit, infringing and gray market products into Puerto Rico
- Obtains injunctions in false advertising claims
- Obtains injunctions in right-of-publicity cases
- Represents clients before federal, state, and local courts and before the USPTO and Copyright Office, as well as Puerto Rico agencies
- Represents clients in connection with claims presented by the BSA
Representative Clients & Matters
Representative Clients & Matters
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Successful representation of clients such as Tous, Cartier, and Romero Britto, obtaining temporary restraining orders, preliminary and permanent injunctions, and monetary damages for trademark infringement, trademark counterfeit, trade dress infringement, false designation of origin, copyright infringement, and unfair competition.
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Successful representation of record companies, such as Universal and Warner, and artists in copyright infringement actions.
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Representation of a major insurance company in a false and misleading advertisement, false association, unfair competition, and trademark infringement action filed by a competitor.
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Successfully defended client in the first false advertising case decided in the First Circuit.
- Filed the first case before the federal court of Puerto Rico under the Anti-cybersquatting Consumer Protection Act.
- Obtained an injunction ordering the withdrawal from the Puerto Rico market of the yellow artificial sweetener product SAME, since its trade dress was a copy of the trade dress of the SPLENDA artificial sweetener product.
- Successful dismissal of patent infringement suits for lack of personal jurisdiction
- Successfully defended J. Walter Thompson Company in a breach of license and copyright infringement case filed by Cartagena relating to music use in an advertising campaign
- Litigation of the first “right-of-publicity” case brought in state court in Puerto Rico in which the Supreme Court of Puerto Rico established the rights of the parties.
- Representing one of world's leading music companies in a case granting summary judgment as to time-barred copyright claims; rejecting plaintiff’s arguments under equitable estoppel doctrine.
- Representation of renowned artist Romero Britto and his exclusive international licensee in the largest trademark, copyright and civil counterfeiting case filed in the U.S. District Court for Puerto Rico
