A Velcro epiphany led to a legal career in cannabis. Federal copyright and trademark protections are not available to cannabis companies because cannabis is federally illegal. When she was 40 years old, Mary L. Shapiro decided to make a career change and became an attorney. She joins Susan Burns to talk about the challenges cannabis companies face trying to protect their brand. Evoke Law Produced By PodConx https://bodacious-women-in-cannabis.simplecast.com/ https://www.linkedin.com/in/sburnslegal/ Mary Shapiro - https://www.linkedin.com/company/mary-l-shapiro-law-pc/about/ Evoke Law - https://evoke.law/ Recorded on Squadcast
A Velcro epiphany led to a legal career in cannabis.
Federal copyright and trademark protections are not available to cannabis companies because cannabis is federally illegal. When she was 40 years old, Mary L. Shapiro decided to make a career change and became an attorney. She joins Susan Burns to talk about the challenges cannabis companies face trying to protect their brand. Evoke Law
Bodacious Women in Cannabis - https://bodacious-women-in-cannabis.simplecast.com/
Susan Burns - https://www.linkedin.com/in/sburnslegal/
Mary Shapiro - https://www.linkedin.com/company/mary-l-shapiro-law-pc/about/
Evoke Law - https://evoke.law/
Susan Burns: [00:00:00] Hi, this is Susan Burns, your podcast host and your on-call business lawyer focused on the business of cannabis. And supporting Bodacious women in cannabis on their journeys to success. Today we are talking with Mary Shapiro. Mary is a cannabis lawyer with Evoke Law in San Francisco, California.
Mary is also a founding board member of the International Cannabis Bar Association. Welcome to you, Mary.
Mary Shapiro: Thank you, Susan. It's a pleasure to be here.
Susan Burns: So excited to have you and to talk to you. So I wa I wanna get a little bit about your background of how you became a quote unquote cannabis lawyer or started working in the cannabis industry. And what a little bit about the boring things you did before cannabis.
Mary Shapiro: Well, they certainly weren't boring. I, I had a 20 year career in book publishing. I worked in retail, I worked in manufacturing, and I worked in distribution, which When I decided to go into law, I thought was a really good [00:01:00] foundation in terms of understanding businesses and, and clients.
There's a long story about my Velcro epiphany, which I'm gonna spare at you right now unless you want it.
Susan Burns: About your what, sorry.
Mary Shapiro: my Velcro epiphany ,I was at a trade show for this, for the comp, the book company I was working with at the time. And basically we ran out of Velcro and I was turning 40 the next day and I was thinking, I'm turning 40 and my biggest challenge in life is finding Velcro.
What's gone wrong? And then I came back home to New Jersey at the time. I was driving the car and I was going doctor, lawyer, Indian Chief, and Indian Chief. Wasn't gonna happen, doctor wasn't gonna happen. Lawyer that would be intellectually challenged, which would be the opposite of trying to find Velcro.
So I basically signed up for the LSAT course and took the LSATs and went on to law school
Susan Burns: okay. So you , took the lsat, went to law school,
Mary Shapiro: . I had a lot of friends in publishing, and one of them introduced me to a gentleman by the [00:02:00] name of,
ed Rosenthal and his wife Jane Klein, and they owned a publishing company, which is how she knew them that was publishing books about cannabis. And she took me to a party there and at their home and they o often had events where they were doing fundraising. I can remember clearly going to one in their backyard where the, the speaker was a woman who had had her child removed from her, her.
Custody because she was using cannabis. And, and there was no, no other indicia. There was no other, no, no other issue. And so I started really getting interested in it. And in 2009 when I formed my own law firm ed. Ed Rosenthal was kind enough to introduce me to Steve D'Angelo from Harborside Eric Pearson from Spark and Robert Jacobs from peace in Medicine.
, I started helping them with. Their brand protection. Steve was a visionary. He totally understood how important branding was gonna be in the cannabis industry because of because of, of the fact that it's, it's a [00:03:00] commodity, so you have to do something. And anyway, it, it, the, going back to that intellectually challenging aspect of, of, you know, kind of the opposite of Velcro, the challenging cannabis.
And is that cannabis is considered unlawful at the federal level being in a Schedule one designation. And so, I had to try and figure out how to get them some brand protection. And I basically looked at what they were doing and at that point in time, a as still today, many cannabis businesses offer education because they understand that, that the consumer doesn't really fully understand what cannabis is, what it can do for wellness, for medicine, for, you know, recreation.
They, they just don't, they don't really truly understand it. , I observed that Each of the cannabis companies I was then working with had, had basically had information and education. So I pioneered the strategy of filing for [00:04:00] information services and providing education about cannabis and was able to get federal registrations because I always considered education and information free speech, and I, I refer to that as they're the free speechy marks.
. That's how I got in and that's how I navigated the challenges of getting federal trademarks for clients at that early stage and, and on to this day.
Susan Burns: Very fascinating and bodacious of you, if I might add Mary. So for background, for the listeners who don't know, because marijuana is illegal at the federal level, you cannot successfully register for a trademark. This is a legal theory that's being challenged, but because based on. the US PTOs information. It's an illegal product, so therefore you can't avail yourself of the legal protection of trademarks. So what Mary was just talking about is she found an ingenious [00:05:00] way to register successfully registered trademarks at the federal level. So kudos to you, Mary.
Mary Shapiro: Thank you. I like, I like to call it threading the needle. Like I,
Susan Burns: threading the needle.
Mary Shapiro: and being a lawyer , you can only advise clients to do what's lawful.
Susan Burns: Yes. So do you have a favorite part of what you're doing today, Mary? , since you overcame the Velcro moment and are now in something that's always intellectually challenging every day?
Mary Shapiro: What do I find challenging now? Well, actually it's the same thing I found challenging 10 years ago, now that you asked the question that way, because it's still not federally lawful. I, I basically thought that cannabis would become lawful. In five years, eight years or whatever, and now it's been 12 years since I've been practicing.
Cannabis trademark law, and it's still not lawful. So I'm, I'm basically still stymied by that challenge, which I realize that there are other, there are bigger fish to fry, whether it's banking or whether it's, [00:06:00] whether it's two 80 d, e. But having brand protection is huge in a, in an industry that is emerging in this manner.
And I suppose the particular challenge right now It being ex exponentially larger because of what's happening in the industry. Is that because it's unlawful federally, to register a, a brand protection at the US PT O you end up with all of these states that are siloed. So you end up with a testing company in California by brand a, b abc, and then you end up with a retailer in Oregon with that same brand and then a hemp company that sells nationally and maybe even internationally.
And then another company that's, you know, doing edibles under that same. . And so, it's, it's a recipe for consumer confusion. And when I say consumers, I mean both medical, cannabis patients as well as as well as adult [00:07:00] users. Because the thing about cannabis that I think most people will will agree, agree with is that it's very personal.
Like it, you know, the dosing is very challenging because it's, it's personal. It's not, it's not based on size, it's not based on anything, you know, any other metric that you can easily identify. So you have to do a lot of experimentation to make sure that you're getting the results that you're looking.
Regardless of whether you're trying to, to address epilepsy or whether you're trying to enjoy the evening the two extremes. Well, I think they're the two extremes. So, you, you end up trying out different products and then you wanna get that same result and you go back to the, the dispensary or you, your delivery service and you're looking for the same product.
And it may not actually be the same product because there are so many confusingly similar. Brands out there that are not able to do the kind of brand enforcement that regular businesses can do.
Susan Burns: [00:08:00] And I mean to that point , you can have a product that has the same quantity of. THC or maybe a combo of C B D and th h c just to keep it simple, but different terpenes will make the experience feel entirely different. And you know, like tuning this to the, the endocannabinoid system of each individual person, which is so unique is a, is a tough thing, as you mentioned.
I did wanna just make sure that, because you had mentioned two 80 d e, those in the. The, the marijuana business understand all too well what two 80 E is. But for those who aren't in the business yet, the two 80 E is a reference to the internal revenue code section that says any expenditures in connection with the illegal sale of drugs, which marijuana is still a Schedule one controlled substance. So it's an illegal drug. You cannot [00:09:00] deduct your ordinary business expenses. There are some exceptions, but that's, that's generally the rule. So business deductions are not available by and large to marijuana businesses. So that's what you were referencing when you were talking about the complexities of this industry. , talk to us about any, like hidden benefits that you found along the way, Mary, like is there something you said, wow, I never would've thought this would, this cool thing would be happening to me in this part of my journey.
Mary Shapiro: I think that that is an easy question for me to answer because I loved being in the book. I love books. I loved reading, I loved marketing books. I loved, you know, I love bookstores, so I, I, I, I love everything about the industry. And then I went from being a bookseller, for lack of a better word, but a bookseller to being a lawyer and.
Well, [00:10:00] Susan is a lawyer and I love Susan, and I either, there are many lawyers that are not very much fun. But going
Susan Burns: That's so true.
Mary Shapiro: going into the cannabis sector I have that same feeling when I go to a conference and I see all my colleagues. And I'm, it's just, it's just a joy. It's, it's just the industry is just a joy.
Susan Burns: I agree. The people. Make it interesting and different and, and I, I didn't know this about you Mary. I didn't know you were a book seller before you became a LO lawyer. I thought you'd always been a lawyer. And that's why I said, what boring thing did you do besides cannabis? So that's really interesting.
Mary Shapiro: that's the most bodacious thing I did, Susan, was I became a lawyer at 40.
Susan Burns: that's a very bodacious move, Mary. Do you think that that gives you an added benefit as a lawyer that you have had a [00:11:00] previously successful career?
Mary Shapiro: I definitely think it does, especially in. In the field of intellectual property, one of the reasons I went into intellectual property was because I had this publishing background and I knew something about cop, you know, vaguely about copyright, not what I learned in law school, but I, I knew something about copyright and publishing.
And then the second. Contributing factor was that in my, once I left publishing, I was in a marketing position and for about nine years before I went, went off to go to law school. And I, you know, that, that gave me some exposure to trademarks and I, I like, I really liked them. And again, because of that whole Velcro epiphany, I basically wanted to do something that was intellectually challenging and.
Copyright and trademarks fit that Bill and I and the experience I'd had. The business experience I'd had really was easy to leverage
Susan Burns: Totally makes sense. Do [00:12:00] you have advice, Mary, for other women in the business of cannabis?
Mary Shapiro: I do, but it's interesting because of my own background and. Age in which I grew up, and I feel like it may be different for different generations, but I think the one common thread that that is, is apparent to me is you just have to follow your passion. You have to do something you really wanna do every day and be excited about it.
And I think for me that, you know, following my passion into trademarks and copyright was really a great idea. And then getting engaged in, in a focusing on an industry, the cannabis industry, that was another way of, of like amping that up and specializing and you know, As we both have said, the people in this industry are wonderful.
So I think that's, that's true. I think probably the cautionary tale though is I was lucky enough to grow up with parents who believed I could do [00:13:00] anything. And I think not all women grow up in that kind of environment. And the cannabis industry is, is very male dominat. , and it's very like, if I can say it's, it's got big bro culture that's changing, I'll acknowledge because of, of, you know, kind of the, the big money that's coming in and the professionalism that's coming in.
But I think that, that that can be, that can be challenging. I mean, and I think you just have to meet it head on. You just have to either like meet it head on or ignore it. And in a, in a successful.
Susan Burns: good advice and good insight, Mary. I think it is true more in the, you know, we talk about the cannabis industry and it's. Cannabis , is a genus, and there's, I don't know if it's, there's species or whatever, I'm not a biologist, but we have marijuana and hemp, which are separated only by a legal definition.
And I think my experience working in the hemp industry is much different than [00:14:00] when I've represented clients working in the marijuana industry. it's two different, totally different industry experiences. So I find that fascinating. But one of the, one of the things, and it's not as doggy dog, I would say but one of the things that, that I also find fascinating and wondering if that's true for you is that, that the, the lot changes so much all the time, but maybe in trademarks and wouldn't be the same.
Mary Shapiro: It, it is. And I think that's really an important also very, quite intellectually challenging to deal with, you know, the cha the laws in the way that they change. , and I think to your point, it may not be that the law is actually changing. But as, as lawyers, we know that the, the law is the law, but it's the interpretation of the law that actually based on the facts that are, are present, that makes.
the situation, turn out one way or another. And so we do see we do see [00:15:00] situations and I, I think I can talk about this one and another one one of 'em is where one of my clients, and I don't do litigation, so I wasn't representing them, but they had a whole. bench trial in front of a judge.
By definition, that's what bench trial is. But they had this whole trial and before that judge could issue his ruling, he passed away. And the ruling that ended up being presented really like didn't acknowledge. Medical cannabis and adult use cannabis are, are related. I mean, , the judge ruled thought of them as, as different channels of, of distribution.
And that's not really true because a, you could use medical cannabis and adult use cannabis, and a lot of people do. Or you may only use one of them, but they're still related. So that was one like weird thing that I. Was challenging because you know, it's, it was the interpretation. Now it's only dicta and dicta.
For the [00:16:00] rest of you, non-lawyers is something in a case that isn't actually the holding and, and that is presidential, but it it, it's hanging out there and it can be used against you or you can use it for you. The second situation was, Situation, litigation situation, again, I wasn't the litigator, but there's a concept in trademark law where by using a mark in commerce, you, you accrue certain limited rights.
They're called common law unregistered rights. And in this particular case, the judge held that , you can't take advantage of common law rights to to challenge an existing federal registration. So there are just different ways. Yeah, there are different for cannabis versus non-cannabis.
It was an edible basically. But I think that the point that I'm trying to make is that basical. judges are now interpreting various nuances [00:17:00] of whether it's trademark law or whether it's bankruptcy law, or whether it's whether it's some employment law. And, and so, it's, it's really important how that court or tribunal or administrative body.
Susan Burns: Mm-hmm. . Yeah. It's a, it's a, it's a great industry if you're a nerd too.
Mary Shapiro: Yes.
Susan Burns: That's cause they're, as you're talking I'm thinking about all the creative, you know, you mentioned dicta and as I think of, you know, court writes an opinion, it's like an aside, like it's not critical to the decision, but it's, it's an aside.
And creative lawyers can do a lot , with that. So that's just I don't know. I, I like the nerdiness of the profession too. Mary, where can people connect with you?
Mary Shapiro: So I am@maryevoke.law. My website is evoke.law no.com, no anything. That was one of the things I [00:18:00] did early on. . I was rebranding my firm from Boring Marielle Shapiro to evoke law and I decided to take advantage of all the new top level domain names that were now available, including.law, dot legal.
Susan Burns: Awesome. So evoke E O K E law. That's where you're gonna find Mary Shapiro, the one, the only, and I reciprocate that. Love. Mary, thank you so much
for joining us today and it's been an absolute pleasure to talk with you.