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 […]
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.
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 firstname.lastname@example.org.
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
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.
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.
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.
Mid-2018 Update on JPG Legal’s Growth
It’s been about ten months since I last updated you on JPG Legal’s financials. To my surprise, occasionally somebody will hire me and tell me they appreciated the transparency about my firm on the blog. So I’ll keep making posts updating people on JPG Legal’s progress as a law firm and a business. Here’s the latest. All numbers in this post are rounded to the nearest $500.
I ended up finishing 2017 with $227,000 in gross revenue. This is up from a gross revenue of $13,000 in 2016, meaning an annual growth in revenue of 1625% from 2016 to 2017. This is because, as my spreadsheet below hints at, I actually started promoting my solo practice in April 2017. Once I started doing this, the results were positive enough that I immediately made preparations to transition out of my day job as General Counsel of Teamsters Local 922, securing my own Washington, DC office space on July 1, 2017.
Some notes about 2017:
- I did not experience consistent monthly growth in 2017. I actually had a dip after a strong showing of $35,500 for July, before peaking at $41,000 in October, finishing the year with an alarmingly poor performance of $19,500 in December 2017.
2018 saw my move to the Lower East Side of Manhattan — where my great grandfather Max Greenberg once ran a grocery store — at the end of January. My revenue so far this year, from January to May, has been $272,500. Monthly revenue growth has been surprisingly consistent, peaking so far at $74,000 in revenue for May.
I attribute this growth in part to revisions I made to my filing packages. In particular, I added a third, “premium” filing package. This package turned out to be popular, as clients appreciate having the option to cover any potential legal briefs that may need to be drafted in response to substantive office actions at a reasonable, upfront cost. It’s become such an important part of my law practice model that it’s hard to imagine that I only had two packages for so long.
I also made some improvements to my Google ad campaigns, which I continue to hone all the time. And of course, many of my previous clients who have been happy with my work hire me for new trademarks and recommend me to their colleagues. I also periodically poke my head into Facebook groups with names like “Amazon Private Label Ninjas!!!” and “ELITE MASTERS OF AMAZON”.
Some more revenue stats:
- 24% growth from April 2018 to May 2018.
- Annualized revenue based on first five months: $653,494
- Projected annual revenue if revenue stays at May level: $789,470
- Projected annual revenue if average monthly growth from first five months stays the same: $1,285,892
Does Gross Revenue Mean Much?
Gross revenue is a vanity metric if touted without context. It’s useful for showing how much money people are spending on you, which indicates your share of your industry and of the general economy. Pursuit of revenue growth at any cost is common among Silicon Valley-style tech startups, and seems to lead to the collapse of many businesses that may otherwise have thrived.
Revenue isn’t a business’s main purpose, and as a metric it does not differentiate between money that actually goes into paying for a business’s operating costs or growth, and money that passes straight through to suppliers or government filing fees. If my area of law did not require the frequent filing of government documents, my revenue numbers would be drastically lower. Every month, about 40% of my revenue goes directly to government filing fees.
Advertising costs eat up about 18% of my revenue. Payment processing fees, through Stripe and PayPal, cost about 3% of my revenue. I also refund between $1000 and $4000 to my clients per month — sometimes my legal opinion on a trademark is negative and the client would rather get a partial refund than use a different brand name, and sometimes my clients change their plans and need a full refund before any work is performed. Finally, my current office space costs $3200 a month plus utilities, but it’s a street-level retail space in Lower Manhattan, and my girlfriend and I sell various goods and host creative workshops here, so I count it as $1600 a month in my books.
These numbers in green are not quite my Earnings-Before-Taxes (EBT), as they do not include a lot of the spending I’m doing this year to expand the business, including hiring a full-time associate attorney and buying computer equipment. But they represent what my personal income would be if I were not choosing to reinvest most of my surplus into growing the firm. 2016 Jeremy would be flabbergasted at what JPG Legal has become in 2018.
The Next Steps
Once I hire and train an associate attorney this summer to take over a lot of the day-to-day trademark work for me, I’ll be able to dedicate some time to the features I want to add to JPG Legal:
- Powerful, web-based trademark search engine. I have a modest software programming background, and I’m planning to download the entire USPTO trademark database onto my own server and create an interface on my website that will help people perform their own preliminary trademark searches. It will also help my clients keep track of their trademark applications, and send them emails with updates. Eventually I want to design a powerful trademark search platform that automatically generates reports that show all potentially relevant results for a proposed brand name, including spelling variations and translations. I will release this for free online to all, and offer an enterprise version that other attorneys can pay a reasonable fee to use, maybe $100 per month for unlimited searches.
- Legal document library. I want to offer an online library of various contract templates and legal resources. I’m thinking I’ll charge a small fee, maybe $50 or $100 for lifetime membership, but I’m not sure yet.
- Other legal services. I do eventually want to expand JPG Legal’s offerings to include other legal services, including business entity formation, copyright, patent, contract drafting, and eventually even unrelated areas of law like wills and estates.
For now, though, I have to focus on hiring and training an associate attorney while keeping up with my current workload, and running the retail store I share with my girlfriend in Lower Manhattan called Eche Verde. If you know any recent law school graduates who might be interested in an attorney position, let me know!
MoMA v. MoMaCha: a Trademark Attorney’s Perspective
The Museum of Modern Art (MoMA) is suing MoMaCha, a Manhattan-based coffee shop , art gallery, and gift shop, for trademark infringement. MoMA has filed an Opposition against MoMaCha’s federal trademark application and a lawsuit against MoMaCha in Manhattan’s federal court.
Does MoMA have a good case against MoMaCha?
I now live in the Lower East Side of Manhattan and I’m opening a new mixed-use gallery, studio, and office space about five blocks from MoMaCha, so this case is relevant to me. I’ve seen all of the hype for MoMaCha in the local press, and I’ve even gone inside the store. I wondered how they had worked out their trademark situation, thinking, “there’s no way somebody would open an art gallery and cafe in Manhattan using MoMA’s name, in a clear reference to the world-famous Manhattan museum, without making some kind of arrangement with MoMA.”
Well, I was wrong. Apparently somebody had the arrogance to think they could actually open what is essentially a counterfeit MoMA gift shop without suffering any legal consequences. MoMaCha has said, in the store’s defense, that it isn’t a museum and isn’t competing with MoMA, stating:
“Our platform is a hybrid: matcha bar, flexible exhibition space, and all around community that is organically connected to the arts in countless ways but never have we represented ourselves as having any affiliation to the MoMA, nor are we interested in upholding the responsibility of such,” a rep from MoMaCha told Law 360 (subscription required). “We’re not only working with artists, we’re activating our space with set designers, pastry chefs, schools and all around people who have a story.”
What were they thinking?
MoMaCha’s legal argument is terrible. MoMaCha is directly competing with MoMA. It displays modern art and is using a famous modern art museum’s name to do it. This is an absurdly simple case. The idea that selling coffee and retail goods and exhibiting non-visual art somehow exempts MoMaCha is ludicrous, even ignoring the obvious reality that MoMA and other museums almost always have cafes and gift shops, and frequently have unconventional exhibits of the types described by MoMaCha.
As MoMA noted in its lawsuit, people have already assumed the two establishments are related. Presumably several thousand people, like me, have assumed that this coffeeshop couldn’t exist without some kind of licensing arrangement. MoMaCha will be lucky if the only consequence it endures is having to change its name; MoMA has already suffered from this false association, and MoMaCha can’t claim it wasn’t aware of the existing trademark rights of MoMA.
Quite the opposite: MoMaCha was clearly, undeniably founded with the intent of leaching from the goodwill and brand recognition developed by MoMA over its 88-year history. Two of the store’s three founders, Eric Cahan and Nev Schulman (best known as the filmmaker behind the “Catfish” documentary and television show), are experienced art entrepreneurs and should really know better. Apparently they even received a cease-and-desist letter from MoMA in March before opening, and disregarded it.
What kind of hubris leads people to do something so short-sighted and, arguably, distasteful? It’s not as though they’re a scrappy ma-and-pa store being harassed by a giant, evil corporation like Nestle. I’ve fought countless large bullies on behalf of small businesses, even occasionally winning (See SKINNY COW v SKINNY SQUARES). This is not one of those situations; this is three well-off, experienced businesspeople ripping off the name of a non-profit museum, however big it may be, and forcing it to waste its money on legal fees.
My Unsolicited Legal Opinion
I have to assume MoMaCha’s founders never bothered to talk to an attorney while developing their store. Even a traffic attorney could have told them this was a horrible idea. Presumably they have a lawyer now, and if I were that lawyer, I would advise them to do everything they can to get MoMA to sign a settlement through which MoMaCha agrees to completely change its name and destroy all branded merchandise and signage in exchange for MoMA agreeing not to press for damages.
There is no possible way that MoMaCha can win here. The best possible scenario for this coffeeshop and its founders is that they only have to pay for a rebranding of their store, and not for MoMA’s attorney’s fees and the monetary value of the consumer confusion and dilution of MoMA’s brand caused thus far.
I imagine the MoMaCha founders’ next planned venture is a Manhattan store called Katz’s DelicaTeassen, which sells pastrami sandwiches like the famous Manhattan deli, but is exempt from hundreds of years’ worth of U.S. trademark precedent because it also sells tea.
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 […]
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 […]
It’s been about ten months since I last updated you on JPG Legal’s financials. To my surprise, occasionally somebody will hire me and tell me they appreciated the transparency about my firm on the blog. So I’ll keep making posts updating people on JPG Legal’s progress as a law firm and a business. Here’s the latest. All numbers in this post are rounded to the nearest $500. 2017 I ended up finishing 2017 […]
The Museum of Modern Art (MoMA) is suing MoMaCha, a Manhattan-based coffee shop , art gallery, and gift shop, for trademark infringement. MoMA has filed an Opposition against MoMaCha’s federal trademark application and a lawsuit against MoMaCha in Manhattan’s federal court. Does MoMA have a good case against MoMaCha? I now live in the Lower East Side of Manhattan and I’m opening a new mixed-use gallery, studio, and office space about five blocks […]