Filing and USPTO Responses

Search, Opinion, Filing, USPTO Responses

Search, Opinion, Filing, Responses, and Legal Briefs

  • Federal trademark application filed by an attorney.
  • Attorney overturns non-substantive USPTO Office Actions for free. Application monitored throughout its lifetime.
  • Attorney available for your questions before and after filing.
  • Comprehensive USPTO database and common law conflict search performed by the attorney. Free second search on alternative mark if needed.
  • Legal opinion on odds of success of your trademark drafted by attorney and emailed to you.
  • Attorney researches, drafts, and files any legal brief that might be needed to overcome a substantive USPTO Office Action.
  • One-year Markhound Watch membership (a $249 value).

Subscribe to receive free trademark advice for small businesses.

 




 
 

About JPG Legal

JPG Legal is a law firm that has been helping businesses and individuals protect and grow their brands for years. In 2018, JPG Legal was ranked the #22 law firm in the United States by number of federal trademark applications filed.

 

JPG Legal was founded by Jeremy Peter Green, who has been profiled on USA Today, CNBC, CNN Money, NPR’s Morning Edition, WIRED, MSNBC, the New York Daily News, HLN, CNN Politics, DCist, Vox.com, CNET, Mic.com, NBC News, Refinery29, the Globe and Mail, and several other news sources. Green was the 10th most prolific trademark attorney in the United States in 2018, having handled 770 new federal trademark applications last year.

 

Have additional questions?

 

  • Call us at (917) 268-7054‬. Se habla español.
  • Email us at info@jpglegal.com.
  • Check out the Frequently Asked Questions below.
  • Need us to take over your application? Go here instead.

 


Frequently Asked Questions

 


Question: Where are you licensed as an attorney? Can you represent me?

 

Answer: Green, the founder and managing attorney, is licensed to practice law in New York and Washington, D.C., but we represent clients from all over the United States and the world, ranging from Amazon sellers to retail chains and large IT companies. The bar licensing information for the other attorneys at JPG Legal can be found on our About page.

 

Jeremy P Green D.C. Bar Card

 

Jeremy P Green New York Bar Certification

 
JPG Legal is based in the neighborhood of DUMBO, Brooklyn in New York City.


Question: Where did you attend law school?

 

Answer: Green attended Northwestern University School of Law on a full tuition scholarship.


Question: How long does the process take? Can I expedite my order for faster service? How will I know when you’ve filed my trademark application?

 

Answer: We are a small law firm and sometimes we get sick or bogged down in litigation. We aim for a one-week turnaround time, but it may take us as long as or longer than two weeks to give you a major update, whether that means that we have a legal opinion for you, that we’ve filed your trademark application, or that we need more information. For packages that include a search and legal opinion, we generally file the application within two weeks after you’ve given us consent to file. After we’ve filed, we will email you to let you know, with proof-of-filing attached.

 

If you need the application filed immediately, choose any of our packages and add our expedited filing option for $100 for our Basic package or $200 for our Value and Safe packages on our form.

 

Once the application is submitted, we should hear an initial answer from the USPTO after four (4) months. If everything goes right, you should have a fully registered trademark in 9 to 12 months, at which point you can stop using the TM symbol and start using the ® symbol next to your brand.


Question: When can I use the TM and ® symbols? Am I unprotected until the application process is finished?

 

Answer: You can use the TM symbol whenever you want (even before filing a trademark application). The TM symbol simply means that you consider yourself to have “common law” rights to your trademark, and it has very little legal significance. In the United States, you can only use the ® symbol next to your trademark when it is fully registered at the federal level, which is what we help you with.

 

While your mark will not be fully protected until you’ve reached registration, you do gain two things on the day you file your trademark application. First, your application will have priority over any trademark application that has a later filing date than yours. Second, once you do reach registration, you will have retroactive trademark protection going back to the day you filed your application, meaning you can threaten anybody who started using an infringing mark after you filed your application, even if they started using it before you actually reached registration.


Question: How long does a trademark last? Do I have to renew it?

 

Answer: Trademark protection lasts for as long as you’re using the mark in commerce, which could be hundreds of years if you want. Five to six years after registration, you have to file a maintenance document showing that you’re using the mark in commerce in the US. Four years after that, and then every 10 years, you have to renew your registration. As part of either of our trademark packages, we do our best to let clients know when these deadlines are coming up at no additional cost.


Question: What forms of payment do you accept?

 

Answer: We accept credit/debit card and PayPal. If you would like to pay by some other method, let us know.


Question: Do you need any documents from me?

 

Answer: Generally, no. All of the information we need from you is covered by our online form.


Question: I’m a citizen of a foreign country and I don’t have an address in the United States. Can I still apply for a U.S. trademark?

 

Answer: Yes. There is absolutely no problem with using a foreign home address or foreign business address for a U.S. trademark. You may file as a foreign individual or as a foreign business entity. Get started now.


Question: Should I file a trademark application as an individual or as an LLC?

 

Answer: Either way is fine, but there are some advantages to filing with an LLC or other business entity listed as the owner of the trademark. Filing with a business entity is helpful because you won’t have to re-assign ownership of the trademark if you sell the business to somebody else.
 
Filing as a business entity is also good for individuals who do not wish for their personal details to be made public. Several websites “crawl” the USPTO trademark database, ensuring that applicants who file as individuals have their names, mailing addresses, and countries of citizenship listed prominently on Google and other search engines in connection with their trademark.
 
We offer instant business entity formation services on our business services page if you are interested in forming a U.S. LLC or corporation. As soon as you’ve requested an entity formation from us, you may then list that entity’s details on our trademark form.

If you wish to assign/transfer the rights of your trademark later on, we charge $200 to draft and customize a trademark assignment document for you and record it with the USPTO, plus a $50 filing fee per trademark.


Question: Why are you so much less expensive than other trademark attorneys?

 

Answer: There are two main reasons:
 
1. Ease of client acquisition. Most attorneys have a difficult time acquiring clients. They spend a lot of time and money attempting to acquire clients and they try to bill their existing clients for as many little tasks as they can in order to make a living from a relatively small book of clients. The attorneys who do have plenty of clients have spent decades networking and tend to bill at “partner” rates of anywhere from $500 to $1500 an hour because this is how the legal profession rewards them for acquiring enough clients to make themselves rich and provide livings for the associates working under them. JPG Legal has no trouble acquiring clients so we don’t worry about maximizing our revenue from each individual client the way other firms do.
 
2. Trademarking doesn’t actually take that much time. It simply doesn’t take much time to perform a conflict search or file a trademark application. The client is paying our attorneys for experience and expertise, not time. Traditional trademark attorneys waste a lot of time and bill their clients for it, primarily because of the fore-mentioned difficulty traditional attorneys have in acquiring clients. Because we work efficiently and have plenty of clients, we can charge 25-50% of what other trademark attorneys charge and manage to earn a good net hourly rate. You can read more about our business model here.


Question: Do you really answer the phone?

 

Answer: Yes. Call us at (917) 268-7054. However, our business model primarily involves communicating by email, so that’s our preferred method of communication whenever possible. Most attorneys love speaking on the phone because they bill their clients for the time spent on the phone. On the other end of the spectrum, “legal services” companies don’t charge for phone calls because they have underpaid, under-qualified customer service representatives answering their phones.
 
We offer unlimited phone time for our clients (and prospective clients) at no cost, but we hope that clients understand that we are able to keep our fees low because we’ve managed to digitize most of our processes. If we are having trouble returning your call because we have upcoming deadlines or a deluge of tasks during a particular week, we urge you to put your thoughts into an email if possible. Also note that though you may call us at any time, as a policy we do not schedule phone calls ahead of time.


Question: Should I bother paying for a search? I already checked and my name isn’t taken.

 

Answer: The Basic package (filing and monitoring with no search) is meant for people who are already heavily invested in their brand names, have been selling their product for years, and know that they’re not going to change it at this point.

 

The search that comes with the Value and Safe packages is valuable not because the attorney searches a database (or Google) and tells you if the name you want is taken — it’s valuable because the attorney uses their experience to advise you when the situation is unclear. We know what to search for and how to identify whether any existing trademarks and brands are problems. Often it’s not the exact phrase being used that’s the issue, but rather a similar phrase in a related, but not identical, industry.

 

Clients also frequently don’t realize that one of the words in their name is descriptive or generic in their industry, thus reducing the distinctiveness of their brand name. For example, if you’re a furniture company with the brand name SASSYCHAIR, the USPTO will consider SASSY the more significant part of your brand when they analyze your trademark application.

 

We give you a summary of the potential issues with the trademark, and break it down to an estimated percent chance of reaching registration. We also evaluate whether you’re likely to be sued for using the name. Note that our trademark form also offers a standalone search option for $299. As with the Value and Safe packages, this option comes with a second search if the results of the first search are largely negative.


Question: Should I pick the Value package or the Safe package? What is a “legal brief that might be needed to overcome a substantive USPTO Office Action”?

 

Answer: An “Office Action” is a refusal or rejection issued by the USPTO for a trademark application. Most Office Actions are “non-substantive” or “procedural” Office Actions, meaning the USPTO examiner needs a relatively minor amendment made to the trademark application, such as a word disclaimer, a translation, a change to the goods/services classification, or a new specimen. Most trademark service providers with low initial fees earn a large portion of their revenue by charging additional fees to handle these types of Office Actions. JPG Legal responds to these Office Actions for free as part of any of our packages.

 

Some Office Actions are more “substantive” rather than procedural, though, and the only way to have even a reasonable chance of overturning them is by having an attorney research, draft, and file a legal argument in response to the rejection. The most common reasons for these rejections are likelihood of confusion with an existing trademark registration, mere descriptiveness or genericness of the words in the proposed trademark, or that the proposed trademark is “merely a surname”. Some substantive Office Actions include a combination of these rejections (for example, a client’s application for ELECTRIC APPLE for headphones may be rejected because ELECTRIC is descriptive/generic, thus needing to be disclaimed, and the word APPLE by itself is confusingly similar to an existing trademark registration owned by Apple Computers, Inc.).

 

Only the Safe package includes the researching, drafting, and filing of legal arguments in response to substantive Office Actions. Normally we charge a flat fee of $825 to put together one of these arguments, because it takes time. Not only do these arguments cost a lot, but they’re only successful maybe 50% of the time. The Safe package is a sort of insurance policy that our clients can purchase before we perform our search, ensuring that if the trademark application is rejected, JPG Legal will be able to take any action necessary to overturn the refusal without cost being a factor.


Question: Can I upgrade from the Value package to the Safe package if you tell me we’re likely to get a substantive Office Action after you perform your search?

 

Answer: Yes, but it will be a little more expensive than if you had gotten the Safe package from the start. To upgrade from the Value package to the Safe package after we’ve given you legal advice about your mark, just ask us and we’ll send you an online invoice for $400, which includes the $300 fee difference plus a $100 upgrade charge.

 

Note that this upgrade option is not available once the USPTO has issued a substantive Office Action against the application (most commonly this means an Office Action refusing registration because of a likelihood of confusion with an existing mark or mere descriptiveness of the words in the mark). At that point, the full cost will be required if you want us to draft and file a legal brief to attempt to overturn a substantive Office Action. At the moment, our fee for this is $825.


Question: Should I register my name in plain text or should I register my logo? What if I want to trademark both? What if my logo has my name in it?

 

Answer: Filing both a name/word mark and a logo requires two separate applications, but JPG Legal only charges an additional $200 legal fee on top of extra $275 filing fee, as long as the name and logo are for the same brand, meaning that if you want to trademark both the name and logo, you will need to pay an additional $475 in total if you’re registering your trademark for one class of goods/services.
 
For most businesses, the most important thing to trademark is their name in plain text. Registering the logo should usually be done as a separate trademark application. Technically you can save money and protect both your name and logo by registering the logo if it contains the name in it, but this is not recommended because if you ever change the design of your logo, you will risk losing your federal protection for the name. You can choose whether you want to trademark a word/phrase, a logo, or both using our online form.
 
Note that if you file for a name or logo and then later want to file for the other, JPG Legal will charge the discounted legal fee if it is paid for within six months of filing the original application. Otherwise we will treat it as a separate trademark package.


Question: Can you file trademarks for Amazon sellers?

 

Answer: It’s important for Amazon sellers to register their brands as trademarks. We work with many Amazon sellers around the world and files all trademark applications in a way that Amazon and the Amazon Brand Registry recognize, as a standard character mark. All clients also receive proof of filing immediately after we file the application, and will be updated on the progress of the application as it proceeds toward registration.
 


Question: What if I only want a search, without the filing and monitoring?

 

Answer: Our trademark form offers the option to only hire us for a search (and the accompanying legal opinion) for $299. If the results of that search are largely negative, you may have us perform a second search and give you a second legal opinion for free.


Question: What if I pay for a Value or Safe package, but I don’t end up filing a trademark for whatever reason?

 

Answer: If you change your mind about filing a trademark application after we perform a conflict search for you (or after we perform both the first conflict search and the free backup conflict search), you are entitled to a partial refund. For the Value package, we will keep $299 for the conflict search and will refund the remaining professional and filing fees to you. For the Safe package, we will keep $349. Any additional fees paid to add logos or goods/services classes on will also be refunded. If you ordered the trademark document bundle, that $75 fee will not be refunded. If you paid $200 for an expedited Value or Safe package, you’ll get $100 of that back.


Question: What if both the first search and the second search result in negative opinions? Can I get more searches?

 

Answer: If our legal opinions for both your first choice of trademark and your second choice of trademark cause you to want to explore a third trademark, you can order a bundle of two more trademark searches/opinions for $200 total.


Question: Do I need to submit a specimen showing use of my trademark in commerce? What if I’m not selling the product yet?

 

Answer: If you are already using the trademark in commerce, we find your website or online listing ourselves and take a screenshot as proof of use. In the rare scenario where we fail to find this proof, we will ask you for a photograph of your product or advertising materials.
 
If you are not using the trademark in commerce yet, and our trademark application is successful, we will have to file a follow-up specimen several months after filing, which will cost $175 per good/service class ($100 government fee plus our $75 fee for payment processing and time spent) to file. If you are not using the mark in commerce yet for your goods/services within six months of receiving approval from the USPTO (called a Notice of Allowance), you can get up to five six-month extensions of time, for $175 each ($125 for the government fee plus $50 for payment processing and time spent) per class.


Question: What if I want to file trademark applications for more than one brand? Do you offer bulk pricing?

 

Answer: Fill out a separate one of our trademark forms for each brand.
 
If you want to register several trademarks at once, we offer a “bulk” discount for three or more trademark packages purchased within a few weeks of each other. This discount is applied as a partial refund/rebate after the third purchase and each further purchase within a short timeframe, in the amount of 20% of the average legal fee (not including the filing fee) of the all of the packages. Note that the discounts are not applied to the first and second packages.
 
So, for example, if you retain us for five of our Value packages in a short time period, at a normal legal fee of $599 each, your third, fourth, and fifth package will each have a partial refund of approximately $120 applied (20% of $599), for a total discount of $360. The best way to hire us in this manner is to use our online form once for each trademark package, mentioning that you want bulk pricing in the “Additional Notes” section of your form, the third time you submit the form.


Question: Can I file for more than one class of goods/services? Should I?

 

Answer: Yes, you can file for more than one class of goods/services. The USPTO charges an additional full filing fee for each class, and we charge a small amount to cover payment processing and labor, so you’ll have to pay an additional $325 total fee for each extra class. If you want to file an application for more than one class, please mention this in the “Additional Notes” section of our trademark form.
 
Here is a list of the 45 trademark classes.
 
Here is the USPTO’s goods/services identification search engine, where you can find out in what class a specific good or service fits.
 
Most of our clients don’t need more than one class. While legal classes and categories of goods can be fairly specific sometimes (and surprisingly general at other times), trademark protections in the United States are fairly broad. If you own a federal trademark for your brand name for pillows and bedsheets, you will almost definitely win a lawsuit against a competitor who steals your brand name to sell mattress toppers.
 
Judges and trademark examiners, in their analysis of potential trademark infringement cases, ask themselves whether consumers would be likely to think both brands come from the same source. A reasonable consumer would assume that a company called KOALA SLEEP that sells mattress toppers is the same entity as a company called KOALA SLEEP that sells bedsheets and pillows. So in this case, the KOALA SLEEP who came first would win.


Question: Are there any hidden costs in addition to the fees listed on your website?

 

Answer: If you want to file for products in more than one class of good, you’ll have to pay an additional $325 filing fee per class, which we will send you a separate invoice for after you submit our form. One class is generally enough for most small businesses. See the question above for more information.

 

In addition, if you are not using the brand in commerce for all of the products on your application on the day we file, we will have to file under an Intent-to-Use basis. This means that if the application is successful, you will have to pay a $175 filing fee ($100 government fee plus $75 fee for processing and time spent) per good/service class near the end of the application process in order to complete registration. If you are already using the brand name or logo in commerce when we file, you will not have to pay this fee.

 

If you want us to use a foreign trademark application or registration as the basis for registering our application here in the United States, we charge an additional fee of $50 per class because of the additional time we need to spend on such applications making sure the goods/services identifications are altered to be compatible with the U.S. Trademark Identification Manual. We’ll send you a separate online invoice for this fee after you’ve submitted our form, if you indicate that you wish to use a foreign application/registration as your filing basis.

 

Note that none of our packages cover litigation costs if a third party opposes the application or sends a cease-and-desist letter because of the application. We handle some initial communication with third party opposers, but beyond that, we will have to charge our hourly rate of $290, billed in tenths of an hour. We will warn you and get your consent before charging our hourly rate.


Question: What is MarkHound Watch membership?

 

Answer: MarkHound Watch is a subscription service we offer through which you can have us monitor the USPTO database for new submissions that resemble your trademark, and alert you when we find something objectionable. If you order our Safe package, a one-year MarkHound Watch membership is included for free. This membership is not tied to the trademark application you hire us to file. You may choose any mark for us to monitor, at any time, regardless of the status of the application you hired us to file.


Question: Do I have to renew my trademark after it’s registered?

 

Answer: Between the 5th and 6th year following registration, you have to file a maintenance document with the USPTO to keep your trademark alive. Between the 9th and 10th year following registration, you have to file a renewal for your trademark. Costs depend on how many classes your trademark has and what basis you registered the trademark under. Our form for trademark maintenance and renewal is here. We will try to remind you when your maintenance and renewal deadlines are coming up, but it’s not something we can guarantee because they’re so far in the future.


 

 

JPG Legal


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SUCCESS STORIES

 

Republic Restoratives


Rodham Rye People Screenshot

Republic Restoratives, a D.C.-based, woman-owned distillery, wanted to dedicate a whiskey to the women who inspired them. The United States Patent and Trademark Office, however, disagreed with their vision and rejected their trademark application for being “named after a living person.”

 
Kara Swisher presents Hillary Clinton with Rodham Rye live on MSNBC.
Kara Swisher presents Hillary Clinton with Rodham Rye whiskey live on MSNBC.
 

Fortunately, Jeremy Peter Green was their trademark attorney. He quickly drafted and filed an Office Action Response, citing various precedents and statutes, and the rejection was overturned. Now Rodham Rye is being sold in a multitude of stores around the East Coast.

Rodham Rye People Screenshot

 
Menu background photo by Denis Labrecque. Prior results do not guarantee a similar outcome.    

Attorney Advertising.

JPG Legal LLC operates as J. P. Green Legal in the state of New York.
68 Jay Street, Suite 612
Brooklyn, NY 11201
(917) 268-7054


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