Engagement Agreement (May 29, 2019 and Earlier)
Engagement Agreement
The following terms are agreed to between you (the “client”) and J. P. Green Law Firm (the “law firm”). Please print this page and/or download it for your records.
1. All advance fees and reimbursements are fully refundable until services are rendered. The client is entitled to a refund of money for services not yet rendered, at any time during the process. If services have only partially been rendered, the client is entitled to a reasonable partial refund.
2. The client acknowledges that the law firm may currently represent, may have represented in the past, or may represent in the future, a competitor of the client or even a party legally adverse to the client. The client consents to representation in the aforementioned situations. Possible situations may include, but not be limited to, helping a competitor’s trademark application succeed even if that application’s success may weaken or dilute the client’s trademark, or strengthen a competitor’s legal case against the client. However, the law firm will not represent one client in a way that violates the law firm’s duties to any other current client, and will withdraw from representation in a matter where it believes it cannot in good conscience fully represent both clients.
3. The law firm and the client both reserve the right to terminate the attorney-client relationship at any time. In such a case, the client is will receive a refund for any services not yet rendered.
4. The client is only retaining the law firm to represent it on the matter detailed in the form or otherwise agreed to between the law firm and the client. Further, the law firm is not obligated to perform any additional services relating to this matter that it has not agreed to (e.g. substantive office action responses, licensing agreements, litigation) until those services are agreed to by both the law firm and the client. The law firm will not charge an unreasonable amount for any further services, and will base all fees, whether billed hourly or on a flat fee basis, on the law firm’s hourly rate of $290. Additional tasks that are billed hourly can take anywhere from one half-hour to five or six hours in extreme cases. The law firm will give estimates of how long such tasks will take before client agrees to them and these estimates will generally be accurate to within one half-hour. The law firm’s hourly rate is subject to increase as the firm’s demand, experience, and client base grow. However, the law firm will not increase its hourly rate to an unreasonable extent.
5. The client agrees that funds paid to JPG Legal in advance will be deposited to the law firm’s operating account and treated as the law firm’s own funds, as allowed under New York Bar ethics rules. Regardless, the client is still entitled to a refund at any time before services are rendered.
6. The client gives the law firm permission to publicly acknowledge the client’s status as a client and to use the client’s name and branding on the law firm’s website and in promotional materials, as a way of showing examples of “success stories.” The client gives the law firm permission to write about details of the client’s case or the client’s business on the law firm’s website, legal blog, and social media, and to quote emails from the client for testimonial purposes. The client may revoke either of these privileges at any time. Regardless, the law firm will not reveal any information of the client’s that it deems to be sensitive. Note that many of the details provided by the client to the law firm, including name and mailing address of the individual or business entity that owns the trademark, will become part of the public record once a trademark application is filed, and these details will be available, permanently, on the USPTO trademark database. Note that any data you enter into the law firm’s forms or that you otherwise reveal to the law firm might be used for the law firm’s own internal analytics, or might be compiled anonymously into data reports (for example, blog posts about what percent of JPG Legal’s clients are from Australia). The law firm also makes use of Google Analytics and FullStory to track various data about visitors to its website.
7. The client is paying not only for the specific trademark action requested, but also for the availability of an attorney, as well as communication with the attorney. Any fees or reimbursements still held by the law firm after two years from the date of payment will be considered to have been earned as an “availability fee” and will no longer be refundable after that amount of time has passed, unless long-term holding has specifically been arranged between the law firm and the client.
8. The client understands that these engagement terms are subject to change from time to time and the client is responsible for checking these terms periodically. Regardless, the law firm will not mislead the client by promising or advertising one included service and then materially altering the terms to remove its obligation to perform that service.
9. The client is either at least 18 years old or has express permission and guidance from a parent or guardian throughout this process.
Additional Engagement Terms for Trademark Opinions and Applications
1. For search packages: If the client decides not to move forward with the original proposed trademark, the client may request one additional free clearance search for a new proposed trademark.
2. The $275 filing fee is meant to cover a range of possible fees that the law firm may have to spend to file a federal trademark application, as well as payment processing fees and the law firm’s time spent filing the application. The law firm will keep or pay for, respectively, any surplus or deficit remaining after paying the actual cost of filing the application. The filing fee is not a direct reimbursement; it is an advance legal/service fee paid to the law firm in addition to the client’s trademark package fee.
3. For clients who retain the firm for a conflict search: Though the law firm will make a reasonable effort to find any potential trademark conflicts, this does not guarantee that a trademark conflict does not exist. The law firm does not use any specialized search engines or databases to perform its conflict searches.
4. If the client does not answer “yes” to the question on the law firm’s submission firm regarding current commercial use of the trademark, the law firm has permission from the client to file the application on an “intent to use” basis, which will require the filing of proof-of-use later in the process, if the application is otherwise successful. Filing proof-of-use after the original application requires reimbursement for a $100 government filing fee per class. Reimbursements for $125-per-class six-month extensions may also be required by the firm if the client cannot supply proof-of-use in commerce to the law firm within six months of the Notice of Allowance (i.e. notice of success for the application in almost every way except for proof-of-use in commerce). The law firm does not charge a substantial professional fee on top of these reimbursements, but it may charge up to $75 per class on top of these reimbursements to cover credit card fees and time spent filing.
5. The law firm may have to switch status from “Use In Commerce” to “Intent to Use” for procedural reasons, such as an inadequate specimen. If this is the case, the law firm will charge the client for intent-to-use–related fees as described in the previous paragraph.
6. Representation ends either when the trademark application reaches registration or is permanently abandoned. Client is no longer a client of the law firm after one of these two milestones is reached.
7. The search and legal opinion that come with the Safe package require somewhat more analysis and effort than the standard search and legal opinion, because the law firm’s attorneys must calculate not just the likelihood of getting approval, but the likelihood of success of the free legal argument that comes with the Safe package in the event of a Substantive Office Action. Further, the Safe package comes with a level of availability that exceeds that of the Value package. Thus, while the standard search-and-legal-opinion, whether as a standalone package or as part of the Value package, is valued at $299, the search-and-legal-opinion that comes with the Safe package is valued at $349. This value affects the amount that is refunded to a client if they order the Safe or Value package and then decide not to file the application.
8. The law firm sends the client a PDF version of the registration certificate when the client’s mark reaches registration. Because of the considerable time and effort involved, if the client wants the law firm to mail the certificate to the client or have a certified copy of the certificate mailed to the client, the law firm will charge $100 including mailing fees per certificate.
Additional Engagement Terms for MarkHound Services
1. MarkHound Watch. A MarkHound Watch subscription comprises approximately one check a month for new applications that are similar to the client’s chosen mark, and an email sent to the client whenever the law firm deems a result to be of significant interest to the client. MarkHound Watch searches are performed only for words; if the chosen mark is a design/logo mark, the law firm will only search for the words and variations of the words in the design, not the design itself. MarkHound Watch searches are primarily based on software that regularly scans the USPTO database for exact words chosen by the law firm. The law firm is not responsible for missing a new application of interest because of a limitation of either the software or the attorney performing the search.
If the client orders our Safe package, a one-year MarkHound Watch membership is included for free. This membership is not tied to the trademark application the client hires the law firm to file. The client may choose any mark for the law firm to monitor, at any time, regardless of the status of the application the client hired the law firm to file.
2. MarkHound Threaten. MarkHound Threaten subscriptions include a limit of five letters in any given month, or six different letters in any given year. The law firm will only send letters that have at least some legal merit. The law firm will not send letters that it deems to be frivolous, gratuitous, or in bad taste. Unless the client specifically requests a physical mailing and reimburses the law firm for that mailing, including time spent on the mailing, the law firm will send all letters by email. MarkHound Threaten packages include some free negotiation, but any communication beyond a few emails or phone calls will be billed at the law firm’s hourly rate of $290. The law firm will inform the client before the limit of the client’s package is reached. The law firm will not charge the client any additional fees without warning the client first and getting the client’s consent. Mailing fees are not included in MarkHound Threaten’s price. By default, letters are sent in PDF form by email. Client may elect to pay $25 for standard USPS mail delivery within the contiguous United States or $60 for UPS or FedEx within the contiguous United States.
3. Markhound Oppose. MarkHound Oppose subscriptions include a limit of three notices of opposition (“oppositions”) or Petitions for Cancellation (“cancellations”) in any given month or four in any given year. MarkHound Oppose fees do not cover the $450 government filing fee reimbursement per opposition or cancellation ($400 for the USPTO fee and $50 to cover payment processing fees and time spent). The law firm will not file oppositions or cancellations that it deems to be frivolous, gratuitous, or in bad taste. MarkHound Oppose packages include some free negotiation, but any communication or litigation beyond the original opposition/cancellation and a handful emails or phone calls will be billed at the law firm’s hourly rate of $290. The law firm will inform the client before the limit of the client’s package is reached. The law firm will not charge the client any additional fees without warning the client first and getting the client’s consent.
Cease and Desist Letter Add-On
1. By adding the cease-and-desist letter option onto a trademark package, the client keeps the law firm on reserve for one cease-and-desist letter (sent as a PDF on the law firm’s letter head, attached to an email) for three years. $187 of the $249 total goes toward the drafting and sending of a letter while $62 of the $249 reserves the availability of an attorney affiliated with the law firm for the drafting and sending of a cease-and-desist letter. Thus, $187 out of the $199 is refundable if the client requests a refund without having requested a cease-and-desist letter.
2. The law firm will not send a cease-and-desist letter if it believes the client does not have a claim that justifies the sending of the letter. This may mean that if the client has a pending trademark application, the law firm will refuse to draft and send a letter until the application has received approval, or possibly even reached registration.
3. The cease-and-desist letter does not include any negotiating or litigation following the sending of the letter. The law firm charges an hourly rate of $290, billed in tenths of an hour, for any further communication with the target of the letter. The law firm will not charge the client the law firm’s hourly rate until the client consents to being billed for further work by the law firm. If the client does not wish to be billed for further work relating to the cease-and-desist letter, the law firm will direct any involved opposing parties to correspond directly with the client, or with the attorney of the client’s choice.
