Keely Herrick, Managing Partner with KHerrick, LLC, focuses her practice on intellectual property law, including domestic and global trademark prosecution, clearance, opposition and cancellation actions, enforcement, and licensing as well as domain name disputes and copyright matters.
Prior to her current position, she worked in the intellectual property department of Katten Muchin Rosenman in New York City and Parks Wood LLC in Atlanta. While at Katten, she received the firm’s annual pro bono award in 2008 for her work in connection with obtaining music licenses for the ballet company Dances Patrelle.
Keely has extensive experience in the food and beverage and fashion industries, and some of her favorite past work experiences include legal internships at the BMG and EMI music labels and an internship in the writers’ office of the daytime drama “One Life to Live.” Please see her intellectual property blog on LinkedIn.
Connect with Keely on LinkedIn.
Transcript
Intro: [00:00:04] Broadcasting live from the Business RadioX studios in Atlanta, Georgia, it’s time for GWBC Radio’s Open for Business. Now, here’s your host.
Lee Kantor: [00:00:19] Lee Kantor here. Another episode of GWBC Open for Business. And this is gonna be a good one. Today, I have with me Keely Herrick, and she’s with KHerrick LLC. Welcome, Keely.
Keely Herrick : [00:00:30] Hi. Thank you for having me.
Lee Kantor: [00:00:32] Well, before we get too foreign to things, tell us a little bit about KHerrick. How are you serving folks?
Keely Herrick : [00:00:37] So, I am an intellectual property attorney, and I specialize in trademarks on the transactional side. So, I’d like to say I help people select and protect their brand. I help them choose a brand that, hopefully, not going to get them into trouble with anyone else. And if somebody steps into their line, we try and clear up those conflicts quickly and easily.
Lee Kantor: [00:01:06] Now, you mentioned the words “intellectual property.” Can you share with the listener what that means exactly? Because people throw around that phrase or the initials, IP, but a lot of people don’t really understand what that means.
Keely Herrick : [00:01:19] Right, yeah. So, intellectual property is kind of an umbrella term that covers patents, and trademarks and copyright. So, patents protect an idea, typically for invention. And trademarks really protect your brand. It can be a word mark or it can be a slogan like “Just do it” for Nike, or it can be a logo without words if you think of like the Nike swoosh, things like that. So, it can be anything that is your brand signifier. And then, copyright protects expression. So, if you think of like “gone with the wind,” it protects the actual language of the book, or paintings, or photographs, or images, things like that. Once it’s actually expressed somehow, then you can register a copyright and protect it that way.
Lee Kantor: [00:02:14] And that’s for the content of the book. But like a title of a book specifically, is it true that those are not protectable?
Keely Herrick : [00:02:22] Generally. Certainly a title of a magazine can be protectable as a trademark if you’re using that in commerce. And then, many things can be protected in one or more ways. So, yeah. So, typically, the title of a book, we don’t protect. But if you have a series of them, like a series of children’s books or something like that, then you might also have characters come out of that that could be protected in one or more ways. You could merchandise it. We try to look at a business from a lot of different angles and see what there is that we could be protecting.
Lee Kantor: [00:03:04] But the basics for most businesses is to start with the trademark of something, right, to get some protection of some part of your brand under wraps that you control?
Keely Herrick : [00:03:14] Right. Everybody has a brand. Everybody’s got a business name. Everybody has a product name. So, ideally, before you’re going to launch that product into the world, you should do some trademark searching, talk with a lawyer to make sure that you’re not going to invest your time, and money, and energy in a brand that might already be owned by somebody else because the worst thing is if you’re very excited, emotionally invested in this great brand, and then you put stuff on shelves, and then all of a sudden, you get a cease and desist letter in the mail, and you might have to start all over, and scrap everything. And that can really disrupt the flow of your business.
Lee Kantor: [00:03:56] Now, hypothetically, say, I have a business, say, it’s a yogurt shop, and it’s like, whatever, Abracadabra Yogurt. And then, I’m in business, say, 10 years or 20 years. And I’d say, “You know what? I’m going to franchise. I want to lock down that name.” And then, I look that last year, somebody else opened a yogurt shop. Do they win because they trademarked it, even though I’ve been using it actively for 20 years? Like, how does that come into play?
Keely Herrick : [00:04:26] Yeah. So, we would typically look and do sort of a comprehensive trademark search and see if there are any other Abracadabra Yogurt shops around the country. It might be that each of you have rights that are narrowly confined to your specific geographic area, whether that means the state that you’re in or whether it could even be the county. If there’s another one a couple counties over, and you’ve coexisted for a long time, and people know, the consumers know that these are two different businesses, then it would be hard to force either of you at that point to change your name.
Keely Herrick : [00:05:05] With regard to expanding, if somebody else has rights already established in a particular area, then you might not be able to expand into that area. And if they have a federal trademark registration, which covers the whole country, then it would be difficult for you to expand beyond what you’ve been doing. So, that’s why it’s better to do searches and know what’s out there before you start using your mark. But if there are a lot of you out there, then that sort of affects the calculation. It might be that we can work something out where people use different logos, and different colors, and things like that to sort of stay out of each other’s way.
Keely Herrick : [00:05:47] The big concept with trademark infringement is we want to avoid consumer confusion. So, we don’t want a consumer to see these two different restaurants and think that they are both co-owned by the same company if they’re not. And because we want people to be able to make their purchasing decisions relying on knowledge of the source behind a product. So, that’s the main concept that we keep in our minds when we’re evaluating how to handle a situation like that. Our consumer is used to seeing these two restaurants out there coexisting, so they know that they’re different. Are there so many out there that use one or more terms that are in common that people know that they’re not owned by the same? Or is really something that’s a unique term and allowing them to coexist would confuse people? Those are the big concepts we keep in our head.
Lee Kantor: [00:06:44] So, that’s why there could be a Delta Airlines and a Delta Faucet, the same name, that there is not confusion that one is the other?
Keely Herrick : [00:06:52] Exactly, exactly. That’s the typical example we get. You don’t think your airline is trying to sell you a faucet. But if it was Delta clothing, and then somebody came out making Delta handbags, that would be much more likely to be confusing because companies that make clothing also typically make handbags.
Lee Kantor: [00:07:13] Now, what about I’ve seen like the letters TM next to some words. I’ve seen an R next to some words. Like are those the same thing? Are they different? Or an SM? Like what is kind of the meaning of those? It seems like those symbols are trying to tell me something.
Keely Herrick : [00:07:31] Yes, they are, they are. It’s a code. They’re all related. The big one is the R and the circle is used to indicate that that is a federally registered trademark. So, you’re not supposed to use the R in a circle next to a term unless you have a current registration for that mark, for the goods that it’s being used on. To use it when you don’t have that, even if it’s just an application and it hasn’t been registered it yet, it hasn’t gone through the process, that could be considered fraud. So, that’s the one we want to avoid making a mistake on.
Keely Herrick : [00:08:08] But the TM and the SM are really things that you can use at any point just to indicate that you consider this your brand. The TM means trademark and the SM means service mark. People use them somewhat interchangeably. The real difference between a trademark and a service mark is that trademarks are used in connection with goods and a service mark is used in connection with services. So, typical example I give for that is McDonald’s can be both because when it’s used on hamburgers or French fries, then it’s a trademark. Those are goods, tangible physical goods. But when it’s used in connection with providing restaurant services, then it’s a service mark. So, it’s a distinction that a lot of people mess up and might not understand. And that’s upsetting if you don’t get that technically right. But you use that just to let other people know, “I might not have a registration yet but I consider this to be my brand. So, back off and don’t use a similar mark,” basically.
Lee Kantor: [00:09:13] Now, what happens, like, say like my company is Business RadioX, and we have that registered with a circle R. Now, what if we decide to change the colors or kind of dramatically shift the look of it, but it’s keeping the same Business RadioX, does that require a whole new trademark application? Or is that an addendum to the existing one? How does that work?
Keely Herrick : [00:09:39] It depends on how you registered it. If you registered it just as a word mark, so just for the words without any stylization, then it doesn’t matter, you can use it in whatever stylization you want in order to maintain the registration. But if you registered it in a specific style, then if you change that, you update your logo, the consideration that the Trademark Office would look at is whether or not what you’ve done is a material alteration to the mark as it was originally registered. So, that’s sort of in their hands to decide, but we would look at it and see whether or not … like if you add or remove a word, unless it’s something like “Co.” or “Inc.,” something really insignificant like that, but if it’s adding a real word or really changing the logo, then it might be considered a material alteration, and then you might need to refile if you filed in a stylized form. But like I said, if you filed, the broadest protection is to register it just as a word mark.
Lee Kantor: [00:10:48] Now, what’s the sweet spot for your business in terms of a client? Do you work primarily with brand-new companies that are just starting out, so they can get everything right to begin with? Or do you work with existing companies and maybe have a new product line? Or who’s your client?
Keely Herrick : [00:11:05] So, yes, all of that. Yeah. Now that I have my my own practice, I really enjoy having a mixture of working with the really large corporations, and being a part of their team, and providing them with sort of an efficient service that a small firm can provide. But also, it’s great to work with startups who are so excited and to help them. Really, they really can’t afford a lot of times to invest in a brand that they have to end up scrapping and reworking. So, it’s exciting to work with them as they are initially launching a business.
Keely Herrick : [00:11:49] But the larger companies as well, they always have new products coming out, and new slogans, and new ad campaigns, and all of that. They’re in a different position because they have so much exposure. Everybody sees something that a really large company does and people think they have deep pockets. And so, you have to take that into consideration when advising them versus a smaller company may have much less exposure but they may have much less risk tolerance. So, we try and and keep everybody out of trouble, and try and keep everything running smoothly, so that the businesses can do what they do.
Lee Kantor: [00:12:32] Now, how does a business kind of protect their trademark once they have it? Like, how do you even know? Like, if I’m based in Atlanta, Georgia, how would I even know if somebody in like Wichita is using my marks?
Keely Herrick : [00:12:44] Yeah. These days, the world is smaller and smaller, right? With social media and all of that, people may tell you, first of all. They may get in touch with you and say, “Hey, I didn’t know you had a business here,” or something like that. But there are also watch services that we can set up that will sort of let us know and monitor things like that. Also, that can monitor the Trademark Office filings to let us know if somebody’s filed an application that’s similar to a mark that we have registered or a mark that we’re just watching. So, there are services in place that we can use to help us with that. But often, your own clients are going to provide you that service as well.
Lee Kantor: [00:13:35] So, now, registering a mark, is that something that’s $100,000? Is it $10,000? Like how much does it cost to kind of register, at least, your own brand name?
Keely Herrick : [00:13:47] Yeah, generally no. Generally, it’s not that expensive. I do as much as I can on a flat-fee basis. So, we work with our clients to do things in a way that’s affordable to them. And it’s more the timing issue, I think that people may be surprised by if you’re trying to register a mark federally. So, get protection throughout the US. The fastest that that may happen from the date of application would be about 9 or 10 months. And it typically can take significantly longer than that. So, that’s something people may think that you can file an application, and then the next week, you get a registration, but that’s not going to happen.
Keely Herrick : [00:14:39] But in terms of cost, no. It can be easily just a couple of thousand dollars. The only way that it gets expensive is if somebody files what’s called an opposition against your application. And at that point, then you could get into what’s like a mini litigation back and forth if you fight over who has superior rights to the mark. That said, you don’t have to go forward with something like that. If you get an opposition and you decide you’d rather not pursue it, you can just stop. You can abandon the application and stop spending money. And then, choose a different mark at that point and start over. So, it can get expensive, but only if you’re really engaging in a battle that you’re choosing to continue to engage in.
Lee Kantor: [00:15:33] Now, tell me about your relationship with GWBC. How long have you been involved with them? And how have you benefited from the relationship?
Keely Herrick : [00:15:43] Yeah. We got registered very quickly after we formed the firm in 2015. Yeah. So, a few years now. And I’ve enjoyed. I like doing their Tables of Eight, their networking events over lunch. Those are pretty fun. It’s nice to meet the other business owners. And I’ve found that a few of the larger corporate clients like to see the certification because they like to know for the record that they’re using a certain number of women, minority and women-owned businesses as part of their team. So, it helps that way.
Lee Kantor: [00:16:23] Now, if somebody wanted to learn more about your firm or have more substantive conversation, do you have a website?
Keely Herrick : [00:16:30] I do. It is www.kherricklaw.com. And my contact information is on there. So, you can send me an email and set up a time to talk.
Lee Kantor: [00:16:41] Well, Keely, thank you so much for sharing your story today.
Keely Herrick : [00:16:44] Yeah, no problem. Thank you for having me.
Lee Kantor: [00:16:47] All right. Once again, if you want to get a hold of Keely, her website is kherricklaw.com. Once again, Keely, thank you so much for being part of the show.
Keely Herrick : [00:16:58] Thank you.
Lee Kantor: [00:16:59] All right. This is Lee Kantor. We’ll see you all next time on GWBC Open for Business.
About Your Host
Roz Lewis is President & CEO – Greater Women’s Business Council (GWBC®), a regional partner organization of the Women’s Business Enterprise National Council (WBENC) and a member of the WBENC Board of Directors.
Previous career roles at Delta Air Lines included Flight Attendant, In-Flight Supervisor and Program Manager, Corporate Supplier Diversity.
During her career she has received numerous awards and accolades. Most notable: Atlanta Business Chronicle’s 2018 Diversity & Inclusion award; 2017 inducted into the WBE Hall of Fame by the American Institute of Diversity and Commerce and 2010 – Women Out Front Award from Georgia Tech University.
She has written and been featured in articles on GWBC® and supplier diversity for Forbes Magazine SE, Minority Business Enterprise, The Atlanta Tribune, WE- USA, Minorities and Women in Business magazines. Her quotes are published in The Girls Guide to Building a Million Dollar Business book by Susan Wilson Solovic and Guide Coaching by Ellen M. Dotts, Monique A. Honaman and Stacy L. Sollenberger. Recently, she appeared on Atlanta Business Chronicle’s BIZ on 11Alive, WXIA to talk about the importance of mentoring for women.
In 2010, Lewis was invited to the White House for Council on Women and Girls Entrepreneur Conference for the announcement of the Small Business Administration (SBA) new Women Owned Small Business Rule approved by Congress. In 2014, she was invited to the White House to participate in sessions on small business priorities and the Affordable Care Act.
Roz Lewis received her BS degree from Florida International University, Miami, FL and has the following training/certifications: Certified Purchasing Managers (CPM); Certified Professional in Supplier Diversity (CPSD), Institute for Supply Management (ISM)of Supplier Diversity and Procurement: Diversity Leadership Academy of Atlanta (DLAA), Negotiations, Supply Management Strategies and Analytical Purchasing.
Connect with Roz on LinkedIn.
About GWBC
The Greater Women’s Business Council (GWBC®) is at the forefront of redefining women business enterprises (WBEs). An increasing focus on supplier diversity means major corporations are viewing our WBEs as innovative, flexible and competitive solutions. The number of women-owned businesses is rising to reflect an increasingly diverse consumer base of women making a majority of buying decision for herself, her family and her business. 
GWBC® has partnered with dozens of major companies who are committed to providing a sustainable foundation through our guiding principles to bring education, training and the standardization of national certification to women businesses in Georgia, North Carolina and South Carolina
