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The Legal Blog of Jeremy Peter Green

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About

Jeremy with somebody else's dog.

 

Jeremy Peter Green is an entrepreneurship attorney who helps businesses protect and expand their brands. Green handled 770 new federal trademark applications in 2018, making him the 10th most prolific trademark attorney in the United States. Green graduated from Northwestern University School of Law on a full scholarship.

 

Green 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. He is best known for owning ClintonKaine.com and hosting "Hillary Potter" fan fiction there during the 2016 election, before selling the domain.

 

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Jeremy's Twitter

 

Green is based in Lower Manhattan in New York City. He formerly served as in-house General Counsel and Webmaster for Teamsters Local 922 in Washington, DC.

 

You may contact him at jpg@jpglegal.com.

The New USPTO Rule: What Do Foreign Trademark Applicants Need to Do With Their Existing Trademarks?

What Is The New USPTO Rule?

Earlier this summer, the USPTO announced a new rule requiring that all foreign-domiciled trademark applicants and registrants must be represented by an attorney with a U.S. bar license. This rule applies to any applicant “whose permanent legal residence or principal place of business is outside the United States.”

In addition, all attorneys filing trademarks on behalf of clients must now enter the state in which they’re licensed, their date of bar admission, and their state bar number (if applicable in that state). They must also affirm their good standing as an attorney licensed by a U.S. state bar.

Screenshot from the USPTO TEAS Plus trademark filing form.

If I Already Filed an Application Before the New Rule, Am I Affected?

While I knew this would stop foreign companies and businesspeople from filing trademark applications on their own behalf, I didn’t really think about how it might affect foreign applicants who had filed their applications before the rule took effect. Unfortunately, most of those applicants, despite filing their application before the rule took effect, will have to comply with the new requirement.

If you are an applicant based in a foreign country who has a pending trademark application with the USPTO, you will need to hire a U.S.-licensed attorney to represent you if the application requires any additional filings.

This means that you will need to hire a U.S.-licensed attorney if:

  • ●Your application receives any office action, including minor office actions like a disclaimer requirement or a change to the description of the mark. The USPTO issues office actions for the majority of US trademark applications. Even examiner’s amendments made by a USPTO examiner with your consent require a U.S. attorney.

  • ●You filed under a 1(b) intent-to-use basis, or under a 44(d) foreign filing basis. Both of these bases require that the applicant submit an additional filing before reaching registration — either a statement of use for 1(b) or a foreign trademark certificate for 44(d). These additional filings must be filed by a U.S. attorney.

  • ●You want to make any amendment to the application, including the goods/services identifications or any information about the owner of the trademark. This is true even if your trademark has already reached registration.

What If I Already Own a Registered U.S. Trademark?

Unfortunately, even if you managed to fully register your trademark before the new rule was implemented, you will still need to hire a U.S.-licensed attorney to file your six-year maintenance filing and your ten-year renewal filing.

Multiple foreign entrepreneurs have already reached out to me with urgent requests for renewal filings because they waited until the last minute, thinking they would just file it themselves a few days before their renewal deadline. Don’t let the new requirement catch you by surprise!

How Do I Find an Inexpensive U.S.-Licensed Trademark Attorney to Take Over My Trademark?

You can try Google. That’s how most of my clients find me. Or, since you’re already here, you can hire my firm, JPG Legal! We offer low, flat-fee pricing to take over a pending USPTO trademark application and file an office action response or to renew a USPTO-registered trademark.  


How Early Should You Form Your LLC?

Informal Beginnings

When people ask me how long I’ve been running JPG Legal, it’s hard to decide what to say. My first client hired me for trademark work in the summer of 2015, back when I was just Jeremy Peter Green. As I started picking up more clients, I put up a website in mid-2016, filed a trademark application, and registered “JPG Legal” as a DBA (Doing-Business-As, similar to a trade name or fictitious name in other states).

2016 JPG Legal website screenshot
The JPG Legal website on September 28, 2016.
I continued as a sole proprietor for a while. JPG Legal was my day job for a few months, then my side gig for the first half of 2017, and then my day job again after my first Google Ad campaign took off. I wasn’t being lazy or cheap, really; I just knew that as an individual business owner and as an attorney, the difference between being a sole proprietor and being a single-member LLC was negligible, in terms of liability. Attorneys with LLCs are still individually responsible for any ethical issues, and my general impression was that the layer of protection provided by a single member LLC to its owner is pretty thin compared to that of a corporation or an LLC with multiple members.

Falling Into Formation

Regardless, after I had a couple of big months and I quit my day job, I finally formed an LLC in July of 2017. I had formed LLCs for several clients at that point, so it seemed appropriate to do so for myself. DC actually wouldn’t let me form an LLC named JPG Legal because the name was already taken by my DBA. Bizarrely, I had to formally dissolve my DBA in person at the DC business agency office, then form my LLC online as soon as I received notice in the mail that my DBA had been dissolved. So I actually had a period of a few days where I was, arguably, illegally presenting myself as JPG Legal!

Why I Should Have Formed the LLC Earlier

Liability didn’t turn out to be relevant at all. But I still wish I had incorporated earlier. In mid-2018, around a year after I formed the LLC, I decided to look into small business loans. I figured that with my six-figure revenue, I had a decent chance of getting a solid offer. I set up an appointment with Capital One, with whom I maintained my checking account and my main business credit card. Once I got there, the bank representative asked me how long I had been running the business. I said, “Well, I technically formed my LLC about a year ago, but I’ve been in business for about three years.”

The Loan Wanderer

Unfortunately, they didn’t actually care how long I had been doing business — they only cared about how old my LLC was. They had a strict, unbending requirement that the business entity be at least two years old. Anything less than that and they wouldn’t even start the application process with you, no matter how much revenue you’d earned and how long you’d been doing business without an entity. I found that most other banks had the same requirement, so I gave up on getting a loan at that point.

For that reason alone — a loan — I wish I had formed my LLC earlier. It’s still possible to get a small business loan with favorable terms if your entity is less than two years old, but your options are limited.

JPG Legal has three full-time employees including myself and brought in over $700,000 in revenue last year, but because of an arbitrary requirement on the part of many banks, a lot of doors will open for us simply because our LLC will be two years old in two weeks.

  


Amazon’s Project Zero Means Getting a Trademark Is Now More Important Than Ever


Amazon announced a new program yesterday ambitiously named Project Zero. Unlike similarly named projects that aim to reduce things like traffic fatalities or carbon emissions, Amazon’s Project Zero “empowers brands to help drive counterfeits to zero.”

Counterfeiters and Listing Hijackers

Counterfeit products and the associated act of “listing hijacking” — where a counterfeiter lists what they claim to be the owner’s product for a lower price so the counterfeiter shows up as the default seller on the owner’s own product listing — have been a major issue for Amazon over the past couple of years. Roughly half of my trademark clients are Amazon sellers, many of whom only initiate the trademark process after they’ve found their listings hijacked.

Previous Solution: Amazon Brand Registry

Until now, Amazon’s main method for dealing with these counterfeiters has been the Amazon Brand Registry, Amazon’s program that gives sellers enhanced branding options including better listing customization as well as the ability to report hijackers, counterfeiters, and other people infringing on the seller’s branding. The only requirement for membership is a registered trademark.
 
Because of the minimum wait time of roughly eight-to-twelve months to finish registering a trademark in the U.S., sellers who wait to file their trademark applications until after they’ve been harmed by counterfeiters are due for several months of frustration during which they’ll be unable to do anything to stop these infringers from taking over their listings. Some unfortunate sellers may even discover that the counterfeiters have beaten them to their own trademark!

Even with Amazon Brand Registry membership, sellers are still required to write out each individual product listing that infringes on their trademark and wait for Amazon to manually remove the offending listings, which can be a tedious process if a counterfeiter has launched dozens of imitations of the seller’s products.

Introducing Project Zero

Project Zero is meant to assist with the prevention of counterfeiting through the followings means:

1. Automated Protections

Amazon will automatically remove infringing listings with their new artificial intelligence engine, making use of trademark information and other data submitted by participating sellers. Presumably as this engine is fed more data by sellers, it will get better and better at identifying and removing counterfeiters through machine learning.

2. Self-Service Counterfeit Removal Tool

Amazon will allow sellers who are members of Project Zero to remove counterfeit listings on their own, without having to submit a request to Amazon. If this is as convenient as it sounds, it will make deleting counterfeit listings as easy as deleting spam emails from your inbox.

3. Product Serialization

Apparently by having sellers mark every product’s packaging, Amazon will prevent counterfeit goods from reaching consumers by catching them during the shipping process.

Where Does Trademark Registration Come In?

At the moment, Project Zero is invite-only, but this will surely change as the kinks are worked out. Once it’s opened up for general use, the main requirement for joining will presumably be trademark registration, as with the Amazon Brand Registry. As important as Amazon Brand Registry membership has been up to now, Project Zero membership will be essential. The difference between being a seller with Project Zero and without Project Zero will be even more stark than with Brand Registry, because the remedies for removing counterfeiters will be much more powerful.
 
As counterfeiters continue to hone their processes for exploiting Amazon, sellers who don’t have fully registered trademarks will be more and more vulnerable compared to ones who are able to use the powerful tools that come with Project Zero. So don’t put off the trademark application process; get in contact with a lawyer — perhaps the very lawyer writing this blog post — as soon as possible.

  


JPG Legal Update: New Attorney, New Space in Dumbo

The view from our roof.

 

Meet Our New Associate Attorney: Oyebola

Our attorney search is over! Oyebola practiced law in Lagos, Nigeria before coming to New York City and getting an LLM in Intellectual Property at Cardozo Law on a Dean’s Merit Scholarship. She beat out over 200 other applicants to get this position. I believe in Silicon Valley lingo she’s what would be described as a “badass.” You can read a bit more about her on our About page. She’s passed the New York Bar Exam and will be licensed here soon, so she’ll be handling a large portion of our trademarking filing and research.

 

A Bridge Not Too Far

 

JPG Legal needed more space, so we moved to a new 1400 square foot loft space in Dumbo (short for “Down Under the Manhattan Bridge Overpass”) in Brooklyn, New York, which has become a hub for startups in recent years. The picture above is from the roof, which is right on top of our office’s ceiling, and which we have easy access to.

 

New office cat too! Follow Kiké on Instagram at @kikekitty.

We were lucky enough to get an office with 13-foot ceilings and beautiful views of the Manhattan and Williamsburg bridges. I still haven’t gotten used to how beautiful our new space is.

 

We’ll be building some tiny private offices in here, but we’ll make sure they don’t block the windows from the common areas. We’re also letting Distill Creative run crafting workshops here and we’re using the space as an art studio. We have an office cat named Kiké that we’ve been bringing back and forth between home and work as well.

 

Yes, it’s a little big for three people right now, but we wanted room to expand.

 

  


JPG Legal Is Hiring Its First Associate Attorney

It’s finally time. Gross revenue has been at or above $60,000 a month for four straight months now, and I’m barely maintaining my sanity under the weight of my current workload, so I’ve put out a job listing for JPG Legal’s first associate attorney, a full-time position.

 

Hopefully, after some training, this person will lighten my workload enough that I can spend more time growing the firm, programming trademark-related software applications, and running my retail store in Manhattan. Maybe I can even start drawing comics again.

 

This will be a good job. I’m a socialist with a legal background in the labor movement, so I feel obligated to create a job that doesn’t keep the associate working or “on call” outside of their preferred working hours, has excellent remote working options, and doesn’t have a billable hour quota (one of the worst things about working at a conventional law firm). It’ll pay between $60,000 and $70,000 a year depending on experience, plus a substantial bonus, with health insurance and ample paid time off.

 

It makes me sad to hear my friends at other law firms tell me about how they’re regularly expected to be in the office until late at night and on weekends, and always have to be able to respond to emails immediately even when not working. Those are abusive conditions.

 

It’s also an ideal position for somebody who has just graduated from law school, because the associate will learn trademark law very quickly, and their salary will grow as the firm grows. They’ll be eligible for an ownership stake sooner than at a conventional law firm, as well. Plus they’ll have a 27″ 2017 iMac, an adjustable sit-stand desk, and a $1,000 lower-back-supporting office chair!

 

So if you know anybody looking for a legal job, please point them to the listing. The plan is to interview the top candidates around the end of August.

  


Next Page »
 

The New USPTO Rule: What Do Foreign Trademark Applicants Need to Do With Their Existing Trademarks?

What Is The New USPTO Rule? Earlier this summer, the USPTO announced a new rule requiring that all foreign-domiciled trademark applicants and registrants must be represented by an attorney with a U.S. bar license. This rule applies to any applicant “whose permanent legal residence or principal place of business is outside the United States.” In addition, all attorneys filing trademarks on behalf of clients must now enter the state in which they’re licensed, their date […]

How Early Should You Form Your LLC?

Informal Beginnings When people ask me how long I’ve been running JPG Legal, it’s hard to decide what to say. My first client hired me for trademark work in the summer of 2015, back when I was just Jeremy Peter Green. As I started picking up more clients, I put up a website in mid-2016, filed a trademark application, and registered “JPG Legal” as a DBA (Doing-Business-As, similar to a trade name or fictitious name […]

Amazon’s Project Zero Means Getting a Trademark Is Now More Important Than Ever

Amazon announced a new program yesterday ambitiously named Project Zero. Unlike similarly named projects that aim to reduce things like traffic fatalities or carbon emissions, Amazon’s Project Zero “empowers brands to help drive counterfeits to zero.” Counterfeiters and Listing Hijackers Counterfeit products and the associated act of “listing hijacking” — where a counterfeiter lists what they claim to be the owner’s product for a lower price so the counterfeiter shows up as the default seller […]

JPG Legal Update: New Attorney, New Space in Dumbo

  Meet Our New Associate Attorney: Oyebola Our attorney search is over! Oyebola practiced law in Lagos, Nigeria before coming to New York City and getting an LLM in Intellectual Property at Cardozo Law on a Dean’s Merit Scholarship. She beat out over 200 other applicants to get this position. I believe in Silicon Valley lingo she’s what would be described as a “badass.” You can read a bit more about her on our About […]

JPG Legal Is Hiring Its First Associate Attorney

It’s finally time. Gross revenue has been at or above $60,000 a month for four straight months now, and I’m barely maintaining my sanity under the weight of my current workload, so I’ve put out a job listing for JPG Legal’s first associate attorney, a full-time position.   Hopefully, after some training, this person will lighten my workload enough that I can spend more time growing the firm, programming trademark-related software applications, and running my retail […]

Next Page »