Ryan: At this time, I would like to introduce our speaker today, who we met a while back and when she was just getting her company up and running and I am really interested to hear today her perspective as she’s continued to grow her business and establish a really good brand presence and to hear how she was able to achieve her trademark status for her company. So everyone, let’s give Kara a hand.
Kara: Everybody, thank you so much Ryan. It’s great to be here and so I wanted to begin first, I guess by saying that this is going to be pretty anecdotal, I am not like a trademark specialist or anything.
Kara: I only know, kind of my limited experience and it was a very bizarre experience. I don’t like, I hope that if you guys ever have to go through the trademarking process, it will be more straightforward than it was for me because this is, it’s quite a story, which is perfect, but it was definitely nontraditional.
Kara: So, to give you like a little bit of background, I started my company, The Memory Collective in 2019. And at that point it was really just a pretty small, it was just one idea. I guess that’s what I’m trying to say.
Kara: Like it was, I wanted to start a company where I am interviewing people and that, about like their stories, their memories and then I take those stories and I transcribe them so they’re in written form, and then I use my art and design skills to format those in such a way, like incorporate their photos.
Kara: And like I can, like amateur photography, so I can do like if they have like artifacts or something that they’d like to include. Along with those things that are relevant to the memories, then I can take photographs, include those and then compile all of it into a physical book.
Kara: I don’t do the bookbinding part. I work with a local book bindery, but they use like these old kind of almost, I should not say archaic techniques, they’re just like turn of the century techniques that are, in my opinion, far superior to the mass produced, quality of most books today.
Kara: So, the idea being that these books will give you the very best opportunity for them to last for centuries and not just a like a handful of decades. So uhm, so that was the original idea and I did not know going in that like, I’m actually doing one of these books right now.
Kara: That’s my heirloom product and it is, it has now become like the most expensive. It’s kind of like a boutique product. And because it takes, I’ve been working on this project for over a year and just between like going back and forth between the clients and all of those things, it’s just a very time consuming thing and therefore it’s relatively expensive to do, especially if you have a lot of content that you want incorporated.
Kara: So that was the service that I wanted to trademark and it’s both the, my product and my Company name. When I started when I thought of that idea that product was called a memory collective and technically like it still is. I just have branded it as more like an heirloom memory collective to differentiate it from some of my other products.
Kara: So, when I thought of The Memory Collective, I thought of it probably about, maybe just like a couple weeks after the initial idea and I was already like, the more that I thought about it, the more attached I became to that name. And I realized pretty early on that I that I wanted to protect that. I didn’t make the initial jump probably until, I don’t know like at least a few months into like after I had formed an LLC, but I just realized that this name is very special and even for those of you who do already know me and know what my company is, I don’t often really talk about the actual name, The Memory Collective, and its significance.
Kara: And all the layers that it has and this actually is very relevant to the trade marking process.
Kara: Uhm, so for me The Memory Collective is representative of not only just you as an individual kind of collecting your thoughts so that they can be made into stories and shared with other people. It’s also about me as an active listener helping you collect those memories and put them into a different form.
Kara: Uhm, as the company grew, this name kind of evolved into this bigger idea of a collective of people, memory givers, who are all kind of dedicated to passing along their stories and becoming kind of part of this world collective of memory, living memory that will be passed down to future generations.
Kara: And there’s yet one more layer where I guess technically, kind of two, but the idea is that eventually I want The Memory Collective, as a company to be kind of like a hub for a whole bunch of different companies that all connect with us to help in various ways with capturing memories so the collective is artisans who all care about passing down memories and then the final layer is about like when my company Is actually employing people and we have all like this workforce of people who are all helping other people collect memories and then working with those memories and molding them, transmuting them into something that can last the test of time.
Kara: So that is like the full vision of the name, The Memory Collective, which is, as I said, pretty relevant in the trademarking process, and I will, I’ll get to why that is so relevant in a minute.
Kara: Uhm, so that’s why I really wanted to trademark it kind of from the beginning because I, well, one I didn’t want to go through all this branding process and then have someone else come along and you know trademark that and swipe it out from under me.
Kara: And then now I not only lost like this this name that I’m really attached to, but now I also have to remarket everything so it just seemed like, even though the initial cost of doing it, I just wasn’t sure if I should do it, but I’m very glad that I did, and it seemed like in the long run it could end up saving me money and a lot of heartbreak.
Kara: So I approached an attorney that was recommended to me, uhm by someone in networking group and I’m not going to reveal the name of this attorney. I’m just going to call her an attorney because you’ll understand why by the end of the story.
Kara: Uhm, but I kind of told her about my idea and why I wanted to trademark it and the initial, Uhm, just that initial product and so she kind of went. Did a little bit of digging determined like yeah this should be doable, like Google Search doesn’t reveal that somebody else is competing with this like I don’t really see anything that would conflict or create consumer confusion.
Kara: That’s one of the really big things is like if uhm, you don’t want to have, uh, or you really cannot have a trademark, you cannot trademark something that would create consumer confusion with something else with a different company.
Kara: Uhm, so if it’s too close or uh, something about the name might make you think of a different company or a different product that already is trademarked. Then you wouldn’t be able to do that.
Kara: Uhm, so we trademarked, we went back and forth about which class. There are all these different classes underneath within the trademark law. And so, I was overwhelmed by all the different classes and where I should even start. Someone recommended to me that I could do this on my own, I firmly disagree. I would not recommend trying to go this on your own if you do want to trademark something, uhm, knowing what I know now I am so glad that I didn’t even attempt that because it would have been a waste of time and money.
Kara: And I’m like, I’m a pretty intelligent person, but I still think that this this process is, it’s just tricky enough and subjective enough as we will see in a little bit, that I wouldn’t, I would not recommend.
Kara: It is not for the faint of heart, if you don’t have an attorney who can go take you along the journey.
Kara: Uh, so.
Kara: Uhm, she did a like Google search, social media search, they also used, like the USPTO uses a database called Tess, which I am, I cannot remember what it stands for, but it’s probably something like trademark electronic search system or something like that I don’t know, but that’s what they use.
Kara: If you can go look that up and I actually just looked up my application the other day. So you can use that as the database for trademarks and so she determined the best class for me to apply in would be Class 41, which is education and entertainment, and there is kind of like a sub note in there about publishing, which is what I would kind of fall into for this particular trademark.
Kara: So, she asked me if what I was doing was genealogy and it is not, what I’m doing is oral storytelling. I am not digging into people past and trying to uncover family history. I am just asking you questions and you are sharing your story.
Kara: So, what I am doing in the world of genealogy is not genealogy, so I told her no, and she said OK, that makes sense so, we’re not going to do like the genealogy class.
Kara: And I didn’t know that this was kind of red flag number one and it was both my mistake for not looking into that class more deeply and also the fact that she didn’t look into that class very deeply at all.
Kara: Uhm, so I didn’t know that I should have done that or that she should have done that.
Kara: And another thing at the beginning is that I wasn’t sure if it was a big deal that I didn’t have, like a concrete logo. At this point, I thought that I needed to have The Memory Collective like pretty much like locked down and ready, but I later learned that this is not the case at all, but all this attorney basically told me is that it would just be like a basic wordmark is what we would be applying for.
Kara: So we filed on September 18th, 2019. It normally takes about three or four months to hear back from the USPTO. At that point, we would have been assigned a reviewing attorney who would go through, they would look through our application and determine if it was viable. Or if there were any issues with it, then at that point we would have an opportunity to appeal it and or correct anything that was needed to correct it.
Kara: So in December of 2019 we did receive an office action, and I didn’t really understand ’cause she didn’t really explain it very well. That this is just part of the process. It’s not uncommon to receive an office action. It does not mean you would have been officially denied and there’s nothing you can do about it.
Kara: It just means that they found an issue that needs to be resolved. One way or another, and if you can’t resolve it then it will be ultimately denied.
Kara: So the denial, that they came back with for this was there’s a company in California, a publishing company called the Book Collective Studio, and this particular reviewing attorney thought that that was confusing to the consumer. It was too close to The Memory Collective because I deal with books and so they ultimately said like, no, you can’t do that, you can’t trademark The Memory Collective because the Book Collective Studio exists, which I thought was garbage and was pretty upset about that.
Kara: But I didn’t know like what to do about that, or really how to like, what argument to make?
Kara: And so, let’s see, I’m kind of checking my notes here. We did not have to respond for six months and my attorney basically said they are still in the process of trademarking the Book Collective Studios.
Kara: So, they thought, she thought they still need to provide evidence of use and commerce for this. So, if they fail to provide that evidence, this could be a moot point, they could deny their application and then we could just move forward.
Kara: So, she recommended that we wait just like a couple months to see if they were going to do that or not.
Kara: Uhm, so that would have a couple months later would have been February of 2020 and at that point or right around there, is of course when the pandemic started, which not only set my company into a very expansively different direction, but it also distracted me from this whole process and it, it probably did the same for her.
Kara: I realized in, probably I think it was like July, I want to say that I had not heard from her at all in the past, like six months, which is like the end of our deadline to appeal. And in this time, I had done a whole bunch of business development. I had changed directions in my company.
Kara: I still offer the heirloom, but it is no longer my primary focus because, like with the economy in a global pandemic, does not really lend to people buying a pretty expensive product and the more that I researched and looked into making this heirloom project, the more I realize like, how time intensive it would be and therefore, like not only was I needing to up my prices for that, but I like I, still to this day, I’m not sure whether they are quite high enough for the amount of work that goes into it, so I never wanted The Memory Collective as a company to be only marketing, only catering and helping the wealthy or upper middle class document their memories. That’s not what I’m about.
Kara: I’m happy to work with them, but I wanted to be able to work with everyday people, low-income families, and even families who can’t afford a single penny to this. So, I was developing products that would allow me to work with them, whether it’s through educational services or creating very, very inexpensive resources for them to be able to do this on their own.
Kara: I was developing like a consultation service, still am, and I’m creating a course that will help educate people about how to do this on your own.
Kara: And also breaking down, so instead of doing that full heirloom process, I am now also allowing people to like, I can just help you facilitate an interview, and then that can be the end of the project.
Kara: Or I can edit the audio or video for you, after which is more advantageous to you and that can be the end of the project. So, I kind of just broke things down, so with all that in mind, I kind of came back to her.
Kara: Uh, which was in July. Yeah, it was July so I came back to her and was like I’m afraid that we missed the deadline. Did we miss the deadline?
Kara: She asked if I still wanted to appeal and I explained like, well, my company is kind of going in several directions right now. So do, can we have another meeting and we can kind of discuss how to go from here because I may want to add more to this trademark application and I realize it would be a separate application, but I think it makes sense for me to do that.
Kara: So, she said that we could still make an argument, but she was kind of unhelpful about what that argument should actually be and her, to this day I still don’t understand her logic, she was kind of recommending that we incorporate some branding into the application to make it more like solidified or something, but knowing what I know now that that advice doesn’t really make any sense to me and I don’t see how it would have been helpful.
Kara: So right around that time I was involved in a pitch contest and that consumed my life. So, now we flash forward to after the pitch contest and which was a couple months later and I just kind of realized I didn’t really want to work with this attorney and in the span that I had met her, I had met a different IP attorney who actually lived in my neighborhood. And he was just, I will tell you his name, his name is Darren and he is fantastic joy to work with.
Kara: If you need an IP attorney, I will contact me and I’ll connect you with him. But he was just like, he was phenomenal in the fact that he was so invested in what I was doing. He really took the time to get to know me, my products, what I was trying to do and he really actually did research. Like we found out pretty quickly that, uhm, although genealogy, genealogy in the literal sense of like that field, is not what I’m doing.
Kara: In terms of trademark classes, it is exactly what I’m doing, so if she had done my original attorney had done any digging into that at all or I guess understood what I was doing. She should have said we absolutely, you would want to file under genealogy, probably before Class 41 and genealogy would be Class 45, so right off the bat I’m already getting like more answers and I know that he’s being more thorough.
Kara: So, in, that was September when I contacted him and we ended up, uh, preparing to file in five different classes. There was Class 16 which is print, Class 38, which is telecommunications, that would cover like my, I’m sorry if you can hear background noise, my dog is itching herself and it’s just always very loud here.
Kara: So, telecommunications would cover like the interview process, like through Zoom or at least this is, like this is still to be determined.
Kara: It’s a little bit confusing. Class 41, again because that application did die, but the initial application, so this would cover not only what we were attempting to apply in before, but also now my courses and all the educational services that I’m offering.
Kara: Class 42, which is science and technology, and I believe that covers just like email, communication and a few other things. It was more just like a formality, I was less concerned about that one, but we thought that it was still important to try and then Class 45, genealogy.
Kara: So, each one of these classes separately in 2020 costs $225. That’s just to apply. That’s not like lawyer fees or anything like that. That’s just what the state charges you. And if any of these are deemed, like they deny any of them for any reason. It can kill the entire application and you do not get a refund.
Kara: So that was pretty daunting going in, it was, and it’s a lot of work to prepare for these, so you have to have two specimens of proof per class. Which is basically your way of saying this is the proof that I’m using this mark in commerce. Which just basically means that you have this available that someone can purchase it, it doesn’t mean that you have to be making a ton of sales on it, or even have sold one.
Kara: It just has to be available for someone to purchase it. And in the case of the courses, uhm, I did not have a course, still don’t have a course done, it’s in progress, so in that case we filed for an intent to use, which basically just, it acknowledges that you don’t have it yet, but you will have it by X date or you can file for an extension.
Kara: But when it is, when you can show proof, then they just backdate it to the original application date so that if somebody came in during that process and tried to trademark your mark in that class, they wouldn’t be able to do that. So it still protects it.
Kara: So, Darren worked on what they call prefilled language of the application, which I was not Privy to, or part of the process in my original application, I didn’t even know that was a thing, so he worked on that, and that’s basically like pre-written language that other people have used and then you kind of pull from those things and adapt them to your particular application.
Kara: And, uh, so he worked on that, I worked on proofs, because although you only need 2 per class. What ends up being possible is that, so like this was particularly an issue in Class 16, which is print, so I want to do apply for all of these different, like, so, within print I’m gonna pull up, I applied for like an art print on canvas, a blank card, blank journal, book, mockup booklet, bookmark brochure, bumper sticker, business card, calendars like all these different things and they’re like, I don’t know how many of them there are, 35.
Kara: So, there are 35 of these and the USPTO, the reviewing attorney could come back even though we’ve provided 2 specimens, they could come back and say, hey, uhm, we’d like to see a calendar that has your mark on it. And if I don’t have that, they could be like, oh, you don’t have that.
Kara: Ah, well, you said you did, so did I? And I didn’t want that to happen, so I went through and legitimized everything that we were applying for. And the way that I did that, and I feel like this is kind of like a hacking way to do it, but I just used a company called Zazzle, which is like a print on demand service.
Kara: And this allows me to have like these products up on a marketplace where anybody can buy them. But I don’t necessarily have to like advertise them or anything. But they have my mark on it, so I feel like that’s a good way to get around it. You just upload the design. I didn’t have to buy my own products and spend a whole bunch of money doing that.
Kara: I could just design them, upload them, and then send the link to the USPTO and say this is where you can buy it. This is where it’s available for commerce.
Kara: So, let’s see. We applied officially on December 31st of 2020, and I was the very last day before the prices jumped up. As of 2021, the prices got bumped up, so I was like I want to try and save money by doing it in 2020.
Kara: So, we did meet that deadline applied on New Year’s Eve. And then we waited and we waited for, I think it was like 7 months now. That’s a long time. But that was, we’re thinking due to the pandemic, so this is where the this the big stress started to start for me because when they came back, we have a different reviewing attorney now and this reviewing attorney didn’t have any issue with the Book Collective Studio.
Kara: It didn’t come up, they didn’t care. But what they did care about was worse because they said no, this mark is descriptive, so it’s not trademarkable at all.
Kara: And what descriptive means is that the mark describes itself, so they’re saying that what you’re doing is collecting memories.
Kara: Therefore, The Memory Collective is descriptive, and the reviewing attorney was, in my opinion, pretty snarky about it, because he even said like if I go onto your site, it’s very clear and would be clear to anyone, but the only thing that you’re doing is collecting memories, which I’m just like well, you clearly didn’t look hard enough then because that’s not everything that I’m doing, so I had to come up with arguments that broke down why The Memory Collective as a mark, is, it brings more to mind than just collecting memories and that’s why, like what I started with, is like the whole vision of what that is.
Kara: It’s not just collecting memories, it’s also the collective of people working together to build the world memories. And so, like those are some of the arguments that we are preparing to make and uh, so that was pretty stressful.
Kara: There were a couple other like minor things that are easily fixable just in the language, but I was still pretty stressed out about that particular issue because it could kill the entire thing and make it so that I cannot trademark The Memory Collective at all.
Kara: But this is where the twist happens and what makes this application process so nonstandard.
Kara: So, in, it was let’s see September, I got something very curious in the mail. And it was this, let me flip to it so I can show you. It looked like something very official, I recognized, like where the address was from, because it’s my original attorney and so I was like I’m not sure whether to think that this is legitimate or not, but I open it up and I see this, and I mean this looks legit, but I’m thinking it’s got to be a scam.
Kara: Because it’s like, we haven’t submitted our rebuttal, and they wouldn’t have approved it and Darren would have, Darren would have told me if we had landed a trademark, I think.
Kara: So, I was just very confused and I, like I’ve received, like kind of scamming stuff, anytime you form an LLC there are scammers out there that try to, you know, send you something like, oh, you have to renew it and you have to send like 200 something dollars to this this address which has nothing to do with anything except our scams. So, I thought that it was like that.
Kara: But it has, it has a registration number and everything. So, I contacted Darren and was like what is going on? What is this? Is this real?
Kara: And so after he did some digging, he said, yeah, this is real, it’s a real mark, is really actually registered and then we were left trying to figure out what in the world happened and it’s registered under my former attorneys, like she is the attorney that got it registered and so our running theory is that, when she failed to communicate with me in those initial six months, and we missed our deadline.
Kara: I thought that was my fault for failing to communicate with her, but Darren informed me no, that’s her fault and that’s malpractice.
Kara: So, we think that she on my behalf/her behalf so that I couldn’t sue her, which I didn’t even know I should consider doing, she revived the application, appealed the application, won the appeal, got everything set into motion and got it approved without telling me that she was doing any of this.
Kara: So, that’s how I ended up with a trademark. It is not a standard thing. I hope that that’s not how any of you would come by a trademark, but that is how it happened for me.
Kara: Now, what’s beautiful about this, is that because she got it approved and now, I have a piece of paper that says The Memory Collected is not descriptive. You guys said that it wasn’t descriptive.
Kara: Now this is kind of like our Excalibur to fight the other defenses that this particular reviewing attorney like this, they will conflict with one another if he doesn’t agree with this attorney.
Kara: So, we had a good laugh at that and so, I’m hoping that the rest of this story has a happy ending, but we still are forming our arguments for the other, technically all five classes, because this particular one, for Class 41 is just publishing books in the field of memories and tribute books. For others, other than for advertising and publicity, whereas the other one includes all, like the courses and the educational pre-filled language as well.
Kara: So that’s my story, I would say biggest takeaways, get an attorney who is actually going to take the time to understand truly what you’re trying to accomplish, and will research properly.
Kara: Also, another thing was that a basic wordmark, this is something that I learned from Darren, I can’t remember whether it was Pepsi or Coca Cola, but he was saying that they actually just have a basic wordmark. Now they may have other trademarks that do cover certain logos or something.
Kara: But for, if it is Coca Cola, it’s just a basic word mark which allows them to rebrand around that however they need to without having to worry about it. So I thought just a wordmark was a weaker trademark, but I think if it’s good enough for Coca Cola, it should be good enough for me too.
Kara: And so, just also make sure that your mark isn’t descriptive, and Darren did warn me going in that they could come back saying that it was descriptive. But he also said, I think we can form a powerful argument against that, so I wouldn’t worry too much about it.
Kara: And another thing is that, reviewing attorneys opinions are entirely subjective, which I didn’t, I didn’t realize was going to be a thing and the last thing was just, if you apply for multiple marks at once, or multiple classes within that mark, just be aware that if one thing falls through, it could kill your entire application.
Kara: So, I think those were the big takeaways that I found and yeah, I can open it up if anybody has questions about the process or anything.
Ryan: All right, well let’s give Kara a hand for her presentation.
Kara: Thank you.
