On February 12 & 13, the Federal Bar Association Intellectual Property Law Section’s 2025 Art & Fashion Law Conference returns to Dunnington Bartholow & Miller LLP. Featuring ten CLE sessions, two keynote speakers and networking opportunities, this two-day conference held in the heart of New York City is a must for those interested in the intersection of art, fashion, and the law. Registration is now open!
A 10% early bird discount will be automatically applied when you register by January 11th.
Save the Date!
Dunnington’s annual Art & Fashion Law Conference will be held on February 12 & 13, 2025.
Featuring 10 panels across two days, the conference will span a breadth of the latest issues in the art and fashion law sectors, provide networking opportunities, and offer CLE credits for new and experienced attorneys. Registration will open next week.
On December 3rd, Dunnington, Bartholow & Miller LLP partner Jay Safer will present an in-depth look at the ethical and practical aspects of conducting litigation across state lines in a CLE webinar hosted by the Beverly Hills Bar Association Litigation Section. Mr. Safer will be joined by speaker David D. Samani and moderator Sidney Kanazawa. One California CLE credit is available (eligible for credit in additional jurisdictions; see website for details).
For more information and to register, click here:
https://myemail.constantcontact.com/Advanced-Trial-Tactics–Practical-Considerations-for–Cross-Jurisdictional-Litigation.html?soid=1102591689817&aid=ljaXY2pZGJw
Whenever you sell real property in the United States, the buyer will require you to sign a FIRPTA affidavit swearing that you are or are not a foreign person. FIRPTA refers to the Foreign Investment in Real Property Tax Act of 1980. Here is a link to a detailed explanation of FIRPTA from the Internal Revenue Service.
Why does a purchaser require the information as to whether or not you are a foreign person?
Because the IRS will charge the purchaser any tax that you, the seller, might owe if it goes unpaid.
But what does that have to do with being a foreign person? Well, the IRS doesn’t trust a foreign seller to pay any tax owed if the foreign seller takes the proceeds overseas after closing the sale.
This IRS concern gives rise to the dreaded “FIRPTA tax withholding” requirement. FIRPTA requires both parties to the sale, i.e., the purchaser as well as the seller, to account at the time of closing for any tax owed on the sales proceeds by the seller. Either the seller convinces the IRS ahead of the closing to grant an exemption from any tax or – more likely – the parties put 15% of the sales price into escrow until the seller gets the exemption or files their tax return.
And because the IRS will take its 15% from the purchaser if it isn’t put aside at the time of closing, the purchaser will do whatever it takes not to lose that money. Which means that the purchaser has two options. One: the purchaser gets an affidavit from the seller that the seller is not a foreign person subject to FIRPTA; Or two: the purchaser gets the seller to agree to put 15% of the sales proceeds aside at the closing, usually by giving it to the purchaser’s title insurance company to hold in escrow, until the seller takes care of the IRS by getting an exemption or filing a tax return and paying whatever tax is due.
So, this is why you need a FIRPTA affidavit when you sell real property in the US. Aren’t you glad you asked?
Andrew Weltchek is a member of Dunnington’s construction, real estate and litigation, arbitration and mediation practice groups. He counsels owners of commercial properties in New York City on closing sales and purchases, dispute resolution and settlements, both in and out of court. In 1992 he transitioned from the Real Estate Finance Bureau of the New York State Attorney General’s office into private practice. Along with commercial real estate, Mr. Weltchek has experience defending Americans with Disabilities Act claims and knowledge of Condominium and Cooperatives Law in New York City. Read More
Believe it or not, New York real property owners should be aware of the “rule against perpetuities” when structuring transactions – the rule arises in many more cases than you think. New York’s rule against perpetuities is taught in the first year property courses of law schools, included in bar review courses, and usually promptly forgotten.
But that’s dangerous. I’ll explain why.
Here’s the Rule Against Perpetuities in NY: “No estate in property shall be valid unless it must vest, if at all, not later than twenty-one years after one or more lives in being at the creation of the estate and any period of gestation involved. In no case shall lives measuring the permissible period of vesting be so designated or so numerous as to make proof of their end unreasonably difficult.” EPTL 9-1.1(b).
Got it?
I thought not. The short version is that no interest in real property is any good unless is vests, that is, comes into being, no later than twenty-one years after a life in being as stated in the instrument creating the interest, such as a deed, will, or contract. And if there is no “measuring life” mentioned then you count twenty-one years from the date of the instrument.
Here’s why you should care.
For one thing, you should care because you are going to die and you want to plan for what happens to your property when you do. But if your plan is not careful, it might violate the Rule Against Perpetuities and your property goes nowhere but to court where your survivors fight over it.
For example, you could will your house to your sister for life and then to the oldest of her surviving children when they turn 30. This violates the Rule Against Perpetuities because it’s possible that no one alive today will receive the interest. For example, if your sister’s children die, and then she has another child and dies, the interest might not vest in anyone alive.
Or for another example suppose you will a building you own to your sister, so long as it is never used as a bar or restaurant, in which case it goes to your brother. That violates the Rule Against Perpetuities because it is possible for the interest to vest — someone opens a bar in the building and it goes to your brother’s heirs — more than 21 years after the death of everyone involved when you willed the building to your sister. Thus, the conveyance is not valid.
But what about while you’re still living, should you care about the Rule Against Perpetuities then? Yes.
But why, you ask? I’ll tell you.
Let’s suppose you own a nice little building in Brooklyn with a small grocery you run on the ground floor and two nice apartments upstairs, one of which you live in and one you rent out. And suppose further that knowing that you are going to die someday you decide you don’t want to spend the rest of your life selling groceries. So you decide to sell your building, take the money, and live out your days on the beach.
But you care about your neighbors and what could happen to them after you leave. In particular, you don’t want their children to be exposed to drugs. And now that pot is legal, you don’t want anyone to turn your bodega into a cannabis shop.
So you tell your lawyer you want your deed to prohibit anyone who buys your building from operating a cannabis shop there or else the property will go to your son and his heirs. Sorry, no you can’t, says your lawyer. That would violate the Rule Against Perpetuities because there is no time limit on when someone could open a cannabis shop and lose the building to your son or his heirs.
Finally, let’s suppose your next-door neighbor comes to you asking to buy your building to turn it into a single-family home for him and his family. And you say thanks, no thanks, you’re not ready to move to the beach — and anyway, the little old lady who lives in the other apartment with her grandkids is protected by rent control and it would be too nasty and expensive to get her out.
Then the neighbor says that’s ok, he can wait. He just doesn’t want you to sell the building to some stranger when you’re ready to go. So he asks you to sell him the grocery now and the apartments later whenever they are vacant.
So you ask him how you can do that. And he says, you sell him a one-third interest in the building and agree on a price to buy the other two-thirds whenever the apartments are vacant. In the meantime, you and he own the building together as tenants in common with an agreement that he collects the rent from the store and pays one-third of the building’s operating costs.
You say yes. You and he sign a contract to sell the one-third now and the two-thirds at a given price later whenever the apartments are vacant. You deed him his one-third interest in the property — and then you wait, and wait, and wait. And the little old lady dies and her grandkids stay in the apartment as rent-controlled tenants. And you wait some more.
Years later after you and the grandkids have moved and the apartments are finally vacant, your co-owner says he’s ready to pay the option price to buy your two-thirds interest in the building. But now the fair market value of the property is much more than the option price and you don’t want to sell your interest at a discount.
Instead, you say that the option agreement is no good because it violates the Rule Against Perpetuities because the option agreement sets no deadline for when it can be exercised. So you refuse to give up your ownership interest in the building at the now-low price you agreed to all those years before. Then your co-owner sues you to see if a judge will order you to sell your interest in the building at the option price.
And that is another example of how the Rule Against Perpetuities works and why you should care about it.
These are real problems that real people have with their real property in New York.
If you have real problems with your real property in New York, call Dunnington to find a solution.
Padmaja Chinta chairs Dunnington’s patent group and is a member of Dunnington’s intellectual property, advertising, art and fashion law and litigation, arbitration and mediation practice groups. She is an experienced intellectual property attorney and trial lawyer. She has counseled clients on all aspects of intellectual property with an emphasis on litigation.
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Dunnington, Bartholow & Miller is a midsize Park Avenue law firm seeking a Trust and Estates Associate with at least 3-5 years of trust and estates law experience to join its practice. The ideal candidate must be a self-starter with exceptional organizational skills and the ability to lead and follow. Candidate should have experience with estate planning and administration, including drafting, asset protection, and wealth transfer techniques. Knowledge and preparation of estate tax returns and gift tax returns, as well as probate administration experience, are essential. Collegial attitude and desire to provide superior client service are imperative; the associate will be given significant responsibility for matters, including client contact.
JOB TYPE: Full-time
JOB LOCATION: New York, NY
EDUCATION: Juris Doctorate from an ABA-accredited law school; LLM in Estate Planning or Tax would be a plus
EXPERIENCE:
• NY bar admission or the ability to waive into the NY bar
• Trusts and Estates experience, Tax Experience a plus, minimum 3-5 years
SALARY: $90,000 to $100,000
TO APPLY: If you meet the criteria, please click the following link:
https://dunnington1921.wufoo.com/forms/trust-and-estates-associate-application
NOTABLE BENEFITS:
• Monthly professional individual coaching.
• 12 vacation days plus 10 personal days, which increases to 20 vacation days and 10 personal days after 1 year of employment.
• 401K, Health, Dental, Vision, and Life insurance.
WHO WE ARE:
Founded in 1921, Dunnington, Bartholow & Miller LLP is a growing New York City-based international firm that maintains its core values of reliability, trustworthiness, and commitment to excellence. Dunnington provides a full array of legal services, including counsel in Corporate, Litigation, Employment, Trust & Estates, Intellectual Property (with Fashion and Art law), Real Estate, Immigration, and Not-for-Profit practice areas. The Firm is organized into practice teams focused on Italy, France, Latin America, the United Kingdom/Commonwealth and is a member of the Cicero League of International Lawyers.
As the Firm celebrated its centennial in 2021, we are dedicated to providing clients with a personalized approach for an efficient, cost-effective way to tackle the problems at hand. Dunnington, Bartholow & Miller LLP is a signatory to the New York City Bar Association’s Statement of Diversity Principles and believes that through increased diversity, the legal profession can more effectively address societal and individual needs by bringing to bear more varied perspectives, experiences, and knowledge to the practice of law.
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Yes, you should. Trademarks are like a muscle, the more you use it, the stronger you become. Using this muscle analogy, you know that exercise does not magically create a muscle, it rather develops it and makes you stronger overall. Registration at the USPTO works in a similar fashion. Registration does not grant you trademark rights, it rather enhances them, and makes your brand stronger overall. Without a federal registration, you are limited in your development and will face difficulties in warding off infringers. In other words, your muscles are weak, and you lack the strength needed to defend yourself.
Trademark rights in the United States are based on the “first-to-use” rule, not the “first-to-file” rule. This means that trademark rights are given to marks that have been used in commerce the longest. It is actual use that matters, rather than registration. So the moment you start using a trademark in commerce (i.e. selling goods or services using the mark), it is your baseline from which you can determine whether someone is infringing upon your mark. This is called “common law” use of a trademark. These are rights based solely on use of the trademark in commerce within a particular geographic area. In other words, your rights in that “common law” trademark are limited to the specific geographic area where the trademark is used.
Registering your trademark with the USPTO, however, creates rights throughout the entire United States and its territories. Once you submit an application, your application is immediately visible in a publicly accessible database of registered trademarks and pending applications. This application gives you priority over subsequently submitted applications for confusingly similar marks. This visibility is important, as it provides public notice to anyone searching for similar trademarks.
There are other significant benefits. A registration can provide you a basis for filing for trademark protection in foreign countries. It also gives you a legal presumption that you own the trademark and have the right to use it (i.e. you do not need to spend loads of attorneys’ fees trying to prove the mark is yours). You can also register your trademark with the United States Customs and Border Protection, which can stop the importation of goods with an infringing trademark. It also grants you the right to bring a lawsuit concerning the trademark in federal court, which can be a significant strategic advantage. You can also use the federal trademark registration symbol ® to show that you are registered with the USPTO, which can have a deterrent effect on potential infringers.
Does that mean that if you have “common law” rights, you have no rights against a subsequent filer at the USPTO? No, as long as you are the senior user. You may be able to challenge the legitimacy of a registration at the USPTO if you are the “first-to-use” a similar trademark. However, the path to do so can be expensive, time consuming, and could have been avoided simply by registering in the first place. There are contested proceedings (i.e. a lawsuit) before the Trademark Trial and Appeals Board that require you to hire an attorney to prove you are the senior user. These can cost anywhere between $5,000 and $100,000 or more in legal fees. In other words, registration saves you money in the long term.
We wrote here about prior searches (https://dunnington.com/trademark-talk-should-i-conduct-a-prior-trademark-search/). Many would-be filers at the USPTO merely conduct a search on the USPTO database to determine whether someone else is using a similar mark. If you are a “common law” user, your mark will not appear in these searches, and thus your mark will not prevent someone from registering their mark at the USPTO. This means that the only way for you to prevent this subsequent use is to file a contested proceeding at the TTAB, or a federal lawsuit. Both are very expensive options.
So save yourself the aggravation, and register at the USPTO. You may find these other articles useful in navigating that process:
- Do I need an attorney to register my mark? https://dunnington.com/do-i-need-an-attorney-to-register-my-trademark/
- Should I conduct a prior trademark search? https://dunnington.com/trademark-talk-should-i-conduct-a-prior-trademark-search/
- What makes a trademark “strong”? https://dunnington.com/trademark-talk-what-makes-a-trademark-strong/
- What is a trademark? https://dunnington.com/trademarktalk-whatisatrademark/
This is a simple question that requires a nuanced answer. As a law firm, we always recommend use of counsel in the filing of a trademark. An attorney provides you guidance on the selection of a mark https://dunnington.com/trademark-talk-what-makes-a-trademark-strong/, and prior searches https://dunnington.com/trademark-talk-should-i-conduct-a-prior-trademark-search/.
But as a practical matter, no, you are not legally required to have counsel file a trademark application if you are domiciled in the United States. If you are a foreign domiciled trademark applicant or registrant, however, you must have a US-licensed attorney represent you.
The trademark registration process can take years, and may entail multiple substantive correspondences with an examining attorney from the USPTO. In the long run, hiring an attorney can save you money, as experienced counsel can help you navigate the clearance and registration process, and address post registration issues such as potential infringements and the maintenance of your mark.