Party Like a Marketer Podcast
Episode 52: Strategic IP and Securing Trademarks: What Cannabis Marketers Need to Know
Lisa Buffo, Founder and CEO of Cannabis Marketing Association sat down with Mary Shapiro, Founder & Managing Director at Evoke Law to discuss the complex landscape of IP rights, trademark laws, and the unique challenges faced by businesses within the cannabis industry.
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Read the Transcript
Lisa Buffo 00:11
Welcome to today’s episode of Party like a marketer. The podcast focused on cannabis marketing, public relations and authentic storytelling. I’m your host, Lisa buffo. And members, thank you so much for all of your support. This year, we have had an amazing 2023 And are so excited about our 2024 lineup. And I want you to remember that we have our last two state of cannabis marketing webinars on December 5 and December 14, talking about what happened in 2023. And where we see things going in 2024 with a specific focus on legal considerations, as well as the new ROI. And on Tuesday, December 5, we’ve got our Meet the cannabis press webinar with mg magazine, Ben, Zynga, Forbes, cannabis and tech today marijuana venture and Cannabis Business Times. Lastly, if you’re not the CMA member already, and you want to join now is the time we are running a special for through the end of the year for annual business members. So you get access for up to seven people on your team to all of our member benefits, which you can find on our website. And we’re adding value through the end of the year. So that includes two hours of complimentary strategy consulting on your 2024 plans, or whatever projects you may have. It includes a media feature on our blog, newsletter and social media, as well as 10 hours of exclusive content from our future of cannabis marketing, Ted style talks. Now, today’s guest is Mary Shapiro, the founder and managing director of evoke law based in Bay Area California. She’s an intellectual property attorney specializing in trademark consumer protection, copyright and inner internet law, and the firm’s focus is serving the cannabis industry. For 20 years prior to her legal career, Mary served in a variety of marketing positions in the book industry, including roles in retail distribution and publishing. Mary started her legal career in 1999 and her cannabis practice began in earnest in 2009, offering specialized legal services and intellectual property and consumer protection. Mary strives to assist cannabis operators in selecting strong and enforceable brand names with her day to day work encompassing, clearing, filing, prosecuting, enforcing, and licensing trademarks in the US and internationally. Okay, welcome, everybody to today’s episode of Party like a marketer, the podcast dedicated to cannabis marketing, public relations and authentic storytelling. Today’s guest is Mary Shapiro, the founder and managing director of Voc LA. Mary, thank you so much for coming on the show.
Mary Shapiro 02:54
Thank you for having me. Yeah. Nice.
Lisa Buffo 02:57
Well, let’s jump in and get started. Can you tell the audience a little bit about yourself? What is your professional history? And I’d also like to learn more about Voc LA, how did a vote get started? And how did you get into cannabis?
Mary Shapiro 03:12
Okay, there’s a lot of questions. Let’s see if I can tackle them one by one. So, career history, I’ve actually had two careers. The first was in book publishing. And the second was in wall I, I was always a reader. And I really got, I was fortunate enough to get a job in a college bookstore, which led me into book retail, which led me into book publishing and book distribution. So I had a 20 year career in book publishing. Then I have had what I call my velcro epiphany, but I’m not going to go into that right now. But long, the short story long, long story short, I basically realized I didn’t want to do what I was doing for the next 20 years. And I started thinking about what I wanted to do. And I realized that I could leverage my publishing background for copyright law, and my marketing background for trademark law. I said, I’m gonna go to law school and become an intellectual property lawyer. And that’s what I did. And I started my second career at 45. And I’ve really been happy. I was happy with the first career and I’m happy with the second career. Okay, well, what was the other Okay, how did I get into cannabis? Actually, that’s funny, too. Well, you didn’t really hear the the epiphany story. So you can’t i can’t say it’s funny too. But I had a good friend who was in book publishing. And she was kind enough to allow me to stay in her home when I came out here to go to law school for at least the first year.
Lisa Buffo 04:49
And where here, here,
Mary Shapiro 04:53
here is San Francisco. So I went to law school in San Francisco and I had this couple was a friend who was also representing a book publishing company called Quick trading, which some of you may know is founded by Ed Rosenthal, the guru of ganja and his wife, Jane Klein, and I got invited to an event at their house and started with a lot of cannabis people, obviously. And I, you know, started really getting interested in what was happening, you know, legal, you know, Canvas was 1995. So it was before California, regulated medical patent. This, of course, well before anybody regulated adult use. So I, I just started getting interested in seeing what the challenges were. And they were many as everyone here knows, and that was how I got into cannabis. And later on, when I started my own firm, Ed was kind enough to introduce me to some leading founders, founders of leading dispensaries in the Bay Area. And that was I was off to the races, then. There was another question there. Oh, what is the VOC we’ll do? So we focus on what is sometimes referred to as soft intellectual property, soft IP. So we focus on trademarks, copyrights, domain names, a little bit of trade secrets, but we don’t do any patents. But basically, we support our clients in protecting their their intellectual property. And, and that’s what we do. And, yeah.
Lisa Buffo 06:39
Awesome. Thank you for sharing that. So, as a marketer, myself and business owner, I really did not quite understand intellectual property until I started my own business, and frankly, met you when you started defining it to me in more concrete terms versus, you know, abstract terms. So I’m wondering if you can kind of give us the layman’s version of what intellectual property is and what it means for founders, marketers, business owners alike? What’s kind of the first step when you talk with your clients about? Here’s what it is, and here’s why it’s important. Can you give us an overview? Okay.
Mary Shapiro 07:20
So intellectual property is interesting that you use the word concrete, because intellectual property is intangible. It’s an idea. It’s a name. It’s a written or video kind of product product. And it could be a trade secret, which could be a recipe, for example, in our industry, that’s really common. So a patent might be used to protect a extraction methodology. A trademark would be used to protect the brand, trade secret would be used to protect, know how that people don’t know, that isn’t public knowledge that they they use in the, in the making their products. And copyright is, you know, it’s really the written word, and video, and music and so forth. I think what’s really interesting about this is the common thread, though, through all four of those types of intellectual property, is that they all relate to something that is original, something that somebody created, that’s original, and proprietary. And so if you have something that you’ve created, and it’s proprietary, it’s to your advantage to protect it so that other people can’t lose it. Or if they use it, you have an avenue to go and approach them and challenge them for that unauthorized use. So those are the four forms of intellectual property. And as I said, we focus on the softer forms. And I would say our real real core strength is in trademarks. And I think it’s because when I was in book publishing, I was the vice president of marketing. And I had two things happened to me that just didn’t make sense. And I want I’m a practical person. I like to get practical business advice, and I like to receive practical business advice. And so one thing that happened is, we had we were creating a new product, and we came up with a name. And we were very pleased with ourselves. And I gotta tell you, retrospect we shouldn’t have been pleased with ourselves for lack of creativity for one thing, but also because I didn’t even know anything about conducting clearance and I’ll break off in a second because this is this is sort of the nub of one of the things that trademark attorneys can do to help a cannabis operator. A conducting clearance means that we look at marks that have registered applied for that are in use unregistered marks, and we look at domain names and social media handles because we want to make sure that the The operator is not going forward with a name that is going to invite a challenge, meaning that they’re going to get a cease and desist letter, like two minutes after they launch. Okay, I was exaggerated, but you get the point. So that that’s the first thing that happened is I didn’t know anything about clerics then. And our corporate lawyer apparently didn’t either. And so we ended up getting a cease and desist letter, the cease and desist letter, and had to rebrand. The second thing that happened is that we were an international company, and we were in 60 different countries. And so different products, different bad name that we came up with, and I’ll explain why they were bad. And in retrospect, I think what happened was, I was trying to figure out how we go about registering our, this particular brand name, and internationally, and I asked the law firm for advice, and they said, We should just register all of them, well, who can who could afford to do everything? Everything, everything. We were in 60 countries, that was just not a good answer. And I in my head, I was saying, well, there have to be like some, you know, maybe just to the countries that are like your top performing countries. Or maybe there’s like something else that would help you sort out some law thing that would, would help you sort out things. And, but that wasn’t the advice that I got. Shortly thereafter, I went to law school. And then I essentially took trademark law and understood that the way we could have avoided getting a cease and desist letter was by conducting clerics looking at all those sources. The way the way that I could have parsed out where to file could have been based on what my instinct told me, which is like how much money we were revenue we were getting from that country. So that yeah, it was it was a learning experience. And I’m not sure what question I’m answering now. Well,
Lisa Buffo 12:02
you are because I was gonna ask, you’ve defined it and how it applies to cannabis companies. But I think you just spoke to the why we wanted to have you in the show and sort of the inherent gap between marketers knowledge and the law, because we as marketers are used to creating content, distributing content, thinking of things like that’s where we get excited. And that’s what we like, but where that crosses the line of what is unique, what is yours, what needs to be protected? Those are not questions that would come. They wouldn’t come to me unless someone told me I needed to think about that. And I think we’ve seen that several times in cannabis. And I know I’ve had personal conversations with our members and folks in the industry who have gotten cease and desist, not only from with inside cannabis, but outside. Even I recently had a conversation with a brand who was a very small niche brand, got a cease and desist from a major multinational corporation. And when I had that conversation, I was like, how did they even know about you? How, how on earth do they make that connection? But obviously, those companies have a lot of money, they have a strategy to it. And they’re they’re doing what they have to to enforce. So you’re answering the question and speaking to where marketers kind of knowledge limit does exist often. And I think the need and I want to have you speak about this a little bit too, to have a strategy behind intellectual property? And it seems like that’s what IP lawyers and what your firm does is like, advise on what that strategy should be and how, how does that work within a company’s resources, what their, you know, whatever it is, as far as the scope that they need to protect, and to do it before you create something that has, you know, maybe should not have launched without already done this clearance. So the follow up question I have for you is can you explain, I guess a little bit more about the application of intellectual property and cannabis, and as well as your thoughts on how founders and marketers should be thinking about that strategy, given that a lot of brands might be in one state now, one area, one product side now, but they’re likely looking to grow and expand over time, as you know, legalization happens, and we all move down this timeline. So can you speak to that kind of strategic aspect and what they should be thinking about before they launch products or services?
Mary Shapiro 14:36
So I think it goes back to what I was saying earlier about a proprietary intellectual property that someone might have created. So if you have a one of the things I tend to ask my my prospective clients is what makes them different from other other people that make pre rolls or other people that make edibles. So on and so forth. And I think, you know, sometimes that that gives me some insight into what is proprietary and what isn’t. But to the extent that it might be an extraction process, or might be a recipe, you know, we talk about, you know, what they might want to do for patent, patent protection or trade secret protection. From the trademark side, though, which is really, I think, what ties mostly into what we’re talking about. But let me just take a step back. When I think of a trademark and a brand name, they can be one in the same, but not all brand names are trademarks, because they may not reach the level requirements, legal requirements, meaning that they have to be both distinctive and exclusive. And I can get into that later, if you if you wanted to go into the details. But I think what is important is that the brand name is shorthand for a lot of things, a lot of things being, you know, let’s say you have a proprietary recipe, let’s say you have a proprietary technology, that is part of what the customer experiences. So it’s really important to think about everything that the customer experience. And I, on some level, I think about the intellectual property components on one side of the equation, and I think about all of the consumer experience on the other side. So the consumer experience really relates to where did they get the product? Did they get good service to the people who did the budtender? Tell them like good stuff, or weird stuff? What’s the price? Like? Is it relative to the value? Or is it something you know that that’s high priced? That doesn’t reflect the value of the product? What else would fall under their price place promotion? So as far as promotion goes, which is really what the CMA meant membership is really engaged in promotion? Like, is it accurate? Is to did the product live up to the brand, the language that was used by the marketers? Or was it disappointing? Or was my experience better than what what, what I thought it was going to be. But basically, what I’m talking at is the consumer experience. And it’s, it’s a million different details, and, and touch points between the product and the consumer. And I think of all of those as the brand. So I realized that most marketers don’t have control over customer service, pricing and a million other things, but, but the brand name is shorthand for the consumer experience. So the brand name is obviously very important. I mean, we all value our professional relationships, we all value are professional reputations, and so that that is part of this. I mean, it’s like the brand name is the professional reputation of a product. That’s how I kind of kind of see it. So I think as far as like, you know, founders, you know, they they need to consider what they have this proprietary and see whether they can protect it. And then, you know, from the marketing side, I think that when some of your members who are likely brand name consultants, there’s a whole different kettle of fish, so to speak, between what a legal trademark attorney is going to advise a client versus what a branding expert might advise. So for example, one of the things that is a criteria for protection of a brand name as a trademark is that it is distinctive, and with the way that we talk about in legal language is that it’s inherently distinctive. So Mark might be inherently distinctive, because it’s totally made up word like Travelocity and so it’s it’s obviously unique and it’s you know, associated with the brand with the brand. That’s a made up fanciful mark and the next level four, the next type of mark that is important is an arbitrary mark. And I always use the example of volcano because it’s not actually a volcano, but it’s suggestive of, you know, kind of fire brimstone and, and great smoke. Great vapor I should say. Then the next next type of inherently distinctive mark is suggested. And suggestive means just what it says it It doesn’t actually tell you anything about the brand product. But it does tell you something, it does leave you with a feeling. So for example, when I was I one point, I decided that I need to follow my own advice, rather than just telling people what to do. So I actually I was I was Marielle Shapiro law. And I said, I, I gotta just I gotta find something that is inherently distinctive, I can’t be telling my, my, my clients that they need to do this when I’m kind of just not doing that. So I ended up like really going through that exercise of brandy. And I ended up with a vote, which I think is like kind of ironic, because it means suggestive. And that’s one of the types of of marks that types of marks that are registered. The second part of this equation, which I mentioned earlier, besides being distinctive, it has Oh, let me before I move off of distinctive. The other fact the other type of work that is really, maybe not a mark, but can become a more is one it’s merely descriptive. So actually bang, B H, A N G, was merely descriptive because the chocolate can, this goes back to the beginning of bag, but the chocolate was was cannabis included cannabis, which is bang is another name for so it marks that are merely descriptive that describes a feature of benefit function, bunch of other things. Is, is difficult, if not impossible to register. So that’s one thing to keep in mind. And I think this is where branding, people might have a different view than a legal person does. Because a branding person might recommend something that’s descriptive, because it does a lot of the heavy lifting in the marketing, because the brand itself is is actually describing something about brand. So that’s those are those are the kind of the that’s one of the areas where a trademark attorney advice would differ from a branding person’s advice.
Lisa Buffo 22:15
Thank you for clarifying that. And I also want to add some context that we’ve spoken with and, you know, been in touch with members who at some point want to get their business acquired, or they have, and one part of that due diligence process is understanding how protected is this brand? How much intellectual property is there? And, you know, have you worked with an IP lawyer before. So if you’re thinking about kind of the lifespan of your business, if your ultimate goal is to sell, it is worth considering paying attention to this earlier in your business, because it will come up later at that point in time.
Mary Shapiro 22:57
That’s a really good point, Lisa. Because the exclusive factor, really, that leads right into the exclusive factor. And it is a unbelievable challenge for cannabis companies right now. Because you can’t get federal registration for the product itself. But you can get it for a strategy that my firm pioneered back in 2009 is to file for a federal registration for providing information and or education about cannabis. And that is registered because it’s free speech. So and it doesn’t literally touch the plant. So that’s, that’s, that’s one of the things in terms of of that needs to be considered. But where I was going was in terms of multi state operators versus operating in a single state. You know, I’m in California and in California, we’ve had legal cannabis since 1996. for medical purposes, there are so many really established brands in on the west coast in general and Colorado. And the thing is, you could have been, you could have been using your mark for 10 years. And now you’re going into a different state, but someone else could have independently created that mark in that other state, or they could have copied you. So in either case, you’re you’re about to run into a landmine when you when you expand and that is probably one of the most important considerations that I really like to to discuss with clients or prospective clients to understand what their aspirations are. And then if they want to go international that’s adds a whole nother layer on but basically, when we advise the client, the most important thing that I think that we can help them with is clearance. Having a legal trained individual opining on the level of risk. And I say the level of risk because there’s really nothing that’s risk free anymore. But the level of risk and unfortunately, or unfortunately, cannabis operators tend to be not so risk adverse. And so even if we advise them about a significant risk, it’s possible they might proceed, especially if they’ve been using brand for a while, but at least I want them to understand what they’re walking into when they’re expanding into New York or Minnesota or wherever.
Lisa Buffo 25:34
Yeah, an ounce of it, what is it an ounce of prevention is worth a pound of cure. And I mean, we’ve even seen it too, on the the regulation side. So you know, I remember back in 2016, there were some states that specifically wouldn’t allow marketing and advertising with green crops or green leaf on it. But if you had already built that into your brand, and now it couldn’t be used there. From a compliance perspective, this is kind of different side of a similar coin, of the more you can do your homework in advance and understand from the legal perspective, and not just the creative marketing communications perspective, your best path forward, you are going to save yourself from from pain down the road. So thank you for describing that and adding context for sure. Okay, so are you comfortable also speaking to the cost about this, because I think one thing with startups is they can feel as if they don’t want to spend money until they have to, but it can run into that problem that we just discussed, where, you know, they’re trying to save money here, but it ends up costing them later down the road. So for example, you know, I mentioned the member who got this cease and desist from that large corporation, and they spent years fighting that against them. What are the costs of action? What are the costs of inaction? Can you speak about that, you know, tangibly, and also sort of intangibly, you know, time, money and anything else to help business owners understand how to prepare for this, and how to plan for it.
Mary Shapiro 27:18
Okay, well, prices are obviously going to vary amongst trademark attorneys. I know that I know, evoke loss pricing. And I’ll try and I’ll try and interject that I think what’s really kind of important to understand is that there are really kind of two steps. One is conducting clearance to make sure that the mark that you want to use is available with a reasonable risk of of reasonable risk. The second part is applying to register. And so flying to register, it is a longer price process. But let’s start with the clearance which is can be actually done within two weeks. And even less if you try, we always recommend doing preliminary clerics, where we look at the databases, the federal databases, the state databases, and also do internet searches to see if there’s anything out there. And then we also look at domain names and social media handles. And the last thing we look at is the licensure or databases that are public, in various states to make sure that, you know, it’s just not there’s not something obvious on the register for that would conflict. And there’s really kind of a complex examination of whether a mark would create a likelihood of confusion with another mark. And a likelihood of confusion is the standard for trademark infringement. And it involves the considering multiple factors. But initially, what you want to look at is the similarity, the more and the relatedness of the goods and the more similar the mark than the the less related the goods need to be, but they do need to be related. And so that’s one thing. But then you can start to look at some of the other factors and I think maybe what Lisa, what you were alluding to before is the non cannabis company that went after the cannabis company. And it might be because we all think that the cannabis channel of trade is so unique because it’s so highly regulated and you can’t get cannabis products, you know, outside of a dispenser, though now you can get now with Farmville, you can get him outside of I don’t know where he where he would have got him but you can get him products at the gas station for lack of vote, you know? So I think I’m in consider Getting a clearance, you really want to know whether your mark is available. That’s like the first thing so that you can avoid getting a cease and desist letter. We start with that preliminary clearance that I just discussed. And then we go into COPPA, a comprehensive search. And my firm has worked with one of the leading clearance vendors to create the cannabis centric, focused search product. And what that means is that instead of looking at VO, they’re going to look at pi times were. And that’s just an example. And you can imagine other ones, but for purposes of Clarence, the, the searches are, like highly focused on state trademark registration since they’re available. Common Law, and this is one of the black holes of cannabis branding, is that a lot of people think that can’t register a mark. So they don’t attempt to register a mark. And that creates an absence of knowledge, because it’s not on the database that people look at. So that’s like, another factor there. So But going back to what you were saying about like your non cannabis company coming after a cannabis company, that’s really kind of it’s really interesting, because I’m betting betting but I’m not putting any money on it, that it was probably an edible company. Well, you don’t want to close. Yeah, yeah, no problem. But
Lisa Buffo 31:32
Mary Shapiro 31:34
Connection industry is like, is like on top of like, they’re like, they’re on top of the cannabis industry, they are just waiting for some giant screw up. And, you know, you’ve seen all that. But let’s get to the fights that we all know about. Let’s talk about the most recent one, which was Skittles with a Z. You know, I personally think that Well, first of all, even if it wasn’t cannabis, it would have been an infringement. So let’s let’s start there, it Skittles is a famous Mark, I would say. And so payments marks have a broader scope of protection. So you got to really be aware of famous marks. But I, I really resent when people choose names that are attractive to children. I don’t think the industry really needs any more give to give anybody any reasons to pick out us. And that’s one that can be avoided. Like I sit here sometimes and think, like, isn’t the brand cookies attractive to children? Like, you know, and I know it depends on on each state and what they’ve regulated in terms of being attractive to children. But that’s one of my pet peeves is his choosing a mark that’s attractive to children, which is unique to cannabis, because it’s it’s, it’s just something that’s built into the regulations. I don’t know if it’s an alcohol, because I’ve never heard people talking about it. Okay. So that’s another thing.
Lisa Buffo 33:04
Yes, no, I, we always say if it’s, if you have a question about it, it probably is. So err on the side of not like if there’s any ambiguity, it could be perceived that way by anyone and enforcement, as well.
Mary Shapiro 33:19
And here’s another if I could, I’m gonna interject with another kind of problem that can come up. Although I kind of got off the the track of what we’re talking about in terms of how much it costs and what the process is. But let me just say this. So I mentioned that the mark needs to be distinctive, that means it can’t be descriptive. One of the things that happens in our industry is that people will adopt strain name as their brand name. And the problem with that is unless it if it has that strain in products, all the products, it’s merely descriptive. If it doesn’t have the strain in that product, it’s Miss descriptive. So it’s kind of talking about two sides of pot coin, you just really you have to be really careful when you’re selecting a name. But Okay, so back to back to the process. So the first thing I think that’s really important is making sure that the name you’re about to adopt is available. The second thing is applying to register. And this is where, you know, I know it costs money and it takes time. But the problem is if you don’t register your mark, and you’re relying on your what is called Common Law, unregistered rights, you have to prove up where you’ve been using the mark because common law rights only protect you in the geographical area that you are selling product in. So if you’re a Bay Area company and you aren’t even selling it la you don’t even necessarily have the whole state. So it’s that’s that’s why I think that registration is really important. I have a little horror story, someone who just didn’t listen to me and didn’t file for information, providing information services and then got challenged many years later, or by someone who not sure, that’s a tough word, how they discovered were discovered. But they were discovered I could talk a little bit about that not more generally. But had they had they followed the advice that they were given about applying federally for federal registration, they would have had evidence of their priority and priority is a huge deal in trademark law. Because not only do the marks have to simply create a likelihood of confusion, you need to figure out who really has prior rights. And some of and it’s not, it can be from the date that you file a filed, it can be from the date that you first used it, there’s just all sorts of idiosyncrasies that, that get getting that. As far as pricing goes, one thing to keep in mind is that not all attorneys have the same pricing, that our pricing includes the fees to the trademark office search company, and not just our professional fees, we have a number of packages, the smallest package we have is for around $5,000. And it includes a preliminary scan, a comprehensive search, and a single class application for single mark. Single class means that the trademark offices all around the world use the same classification system, and there are 45 different buckets. And so one bucket is going to have providing information about cannabis in it, one bucket is going to have software, and another bucket is going to have beverages in it. And actually that they beverages are broken up in between non alcohol and alcohol, other kinds of things. So, but more to the pricing. We also obviously would want to do anything ala carte, you know, for example, if you’ve been using the mark for where your clients been using mark for 10 years, a search may not be as important right now less, they’re moving into another state, which is different creature entirely, but might be just filing the application. So even though we have these packages, which are intended to help by having a preset fee that you can count on and use for estimation purposes and so forth. We also do things ala carte.
Lisa Buffo 37:37
Okay, so it sounds like you offer options for business owners, entrepreneurs to control their costs. So there are packages, but you also can do ala carte services. So is that like typical legal fees where it’s just an hourly rate, and then it’s billed against the time it takes to go through these steps? Is that correct?
Mary Shapiro 37:59
More or less, I think what’s important to recognize is that well, many lawyers still bill by the hour, there are some things like searches where we’ve done them enough time, we have an average amount, and we find that our clients really like to have the certainty of knowing how much it’s going to cost. And so we do certain things on a flat fee. There are certain other things that we don’t do on a flat fee. Like for example prosecution of an application, which means that we heard it through the United States Patent and Trademark Office. And that really kind of depends on on, you know, whether you listen to our advice and went forward with a mark that has a lot of risk, or whether you chose a mark that is both exclusive and distinctive. So in any case, the process, certain things would be done on an hourly basis. Because we just each situation can be so different. But generally speaking, we’d like to do the basics at a flat fee so that it’s predictable. And the client can feel like they’re in some some modicum of control.
Lisa Buffo 39:07
Okay, thank you for clarifying that. You don’t know what you don’t know. So this is when it’s good to get advice from the people who do know what what you don’t know. And, you know, it occurred to me that I think people can hear legal fees. I mean, I was the same way and just say, oh my gosh, that’s so much money. But if you’re trying to build a million dollar brand or a multi million dollar brand, like to spend a little bit upfront to make sure you’re climbing up a mountain, you can actually sum it is really important to protect that. And it can be quite expensive to fight something once you’re in it, particularly if you’re up against someone you know, back to that example of that member I talked to who is incredibly resourced you know, regardless of maybe how right you are or how much you want to fight you have to be resourced to fight it. So, again, that ounce of prevention can be worth a pound of cure.
Mary Shapiro 39:59
Yeah, I think another example of that is I have a dispute going on right now, where it’s a non cannabis company. It’s a cannabis company. And I’m pretty convinced that it’s the reason why they’re fighting this heart is because it’s cannabis. Because I like the amount of hours that have been spent writing legal briefs and, you know, everything. It just doesn’t make any common sense. And so the only thing I’m left with is that people are the other party is concerned about the fact that my clients brand is used for cannabis.
Lisa Buffo 40:37
That That makes sense. I could see that being similar to some of the stories I’ve heard. Yeah, that’s, that’s how it works in this space. So thank you for telling us about all of that, at that makes a lot of sense. And I have learned some things today. So you might have addressed this a little bit. But can you talk about, you know, we’ve talked about some of the when we were preparing for this call some of the common myths in cannabis intellectual property. And I think the biggest one which you’ve tackled is that, because it is not federally, you know, it’s still federally unlawful at this point that you can’t get any protection. And you did mention, you have a strategy for it. And there is a way to go about that. But are there any other myths you want to speak to that you feel are common kind of common myths within cannabis marketers and cannabis business owners that is important to bring to light as far as this conversation.
Mary Shapiro 41:39
A couple of one of them that I’m thinking about is I’m a cannabis operator has gone to great lengths to secure a state authorized license in order to run their business. And sometimes it would be easy to conflate those two and think that because the state has authorized you to use the brand, which I’m not really saying that the state did authorize you to use the brand, because the state really authorized you to operate a cannabis business. The other part of that is that it’s an easy thing to happen in in conflating those two things. Similarly, let’s say you got your, your corporation, your entity registered at the secretary of state of wherever your whatever state you’re in, that also has no bearing on whether you can use that name as a trademark, those databases are in those systems of issuing things are completely unrelated. And last but not least the same for a domain name. If you get a domain name, it doesn’t necessarily mean that you have trademark rights in it. And so there are various things that you need to consider.
Lisa Buffo 42:52
I’m actually glad you mentioned it, because I have a another horror story from a colleague who is in CBD who was registered with the Secretary of State and another business that was, you know, doing what they did, but they went through several of the listings in the Secretary of State and, and checked if they had actually cleared those names, and then went after applying for those trademarks. So I’ve seen it to where people, this is probably an extreme example, but where that can happen and be vulnerable, whether it’s intentional, or, you know, kind of by accident, so to speak, just that, you know, that can happen and partly why it’s important. And they also spent years litigating and fighting it, and I had to go to trial, and they ended up winning, but it wasn’t, it was didn’t come not at a great cost. But thank you for clarifying about Secretary of State and just because you’ve been had approved for the license and kind of your initial pitch and proposal doesn’t actually mean the brand is protected. Yeah.
Mary Shapiro 44:01
And actually something else that goes along with that is that the it’s one of the main advantages of filing to register your trademark in the United States is that if you want to within the first six months, you can register internationally and take advantage of your priority date from the filing date. That is only if the application tourist registration. And I do find that a lot of Canvas companies don’t have the resources to handle applying internationally because of the costs. But I mentioned that because it’s just one of the factors that goes into the benefits of federal registration. The major benefit is the deterrence. I mean, because it’s on the federal United States Patent and Trademark Office database. That’s where people go to look. And so that’s an important factor as well.
Lisa Buffo 44:55
That makes sense. Okay, well, I am Curious if you have, we’ve covered a lot. But do you have any, like parting advice for cannabis marketers or business art owners? You know, regarding intellectual property, like anything we didn’t cover that you want them to know, or to talk about. Before we wrap up?
Mary Shapiro 45:19
Well, one thing that comes to mind is that there are rules for proper use of a trademark. And they don’t intuitively make sense. Unless you really know why. But for example, you’re not supposed to use a trademark as a noun. It’s supposed to be an adjective that modifies a noun. Now I’m going to I know your eyes are rolling, and I completely understand
Lisa Buffo 45:45
I’m think I have like noun. Yeah. Yeah,
Mary Shapiro 45:49
so it’s like, so the noun would be the thing itself, like the generic term for the thing itself. The like, I’ll use volcano vaporizer. Okay, but if you use volcano as a, as a noun, that’s one it’s like, they’re like, six or seven rules for proper use. One is to distinguish it from surrounding text. One is to use the proper notice symbol, whether that’s an SM, a TM, or an r and a circle. And another one is to use it as an adjective, because it’s basically a trademark is a source identifier, not necessarily an identification of the product. And so I think everyone, this will resonate just about everybody here, when Kleenex kind of lost control of their brand, is because people were using Kleenex interchangeably with tissues. And it’s really Kleenex tissues, not Kleenex, and so that that required them to go jump through a lot of hoops. And that worries me when people come up with potty marks to what I what I call potty marks, you know, slang for pot, because the trademark office is hip to this and they look at the, the Urban Dictionary, that’s one thing, but the other, so it just, it just makes it like more vulnerable, because it’s descriptive. And then I could also comment on crowded field, which is kind of interesting about this, this, where you’re you’re going to work towards. And that is sometimes the term is used so commonly in industry, like green in our industry, that’s a good example, the green component of a mark is not protected. It’s just everybody’s using it. And sometimes you might think, like, the advice it would give clients is that like, no one owner can really successfully enforce, you know, this, this term that’s in a crowded field. And so that, that can lead an operator to thinking oh, okay, I can use it, because nobody can stop me can use it. So and that is one that is one of the objectives, it’s like, you just don’t want somebody to stop you from using it. That’s a lower bar than distinctive and exclusive. So crowded field, but the problem is, the other problems are, besides having difficulty in protecting it, is that you’re gonna have SEO issues, you’re just gonna have a whole series of issues that that pile on for that. I mean, I always use this example. It’s not a canvas one. But I always say I don’t know the difference between Petco pet food Express Petsmart I only know them by location. And I don’t think that’s really good branding, in terms of like, you know, identifying who you want to purchase your services from, unless you’re doing it by location, which I go to the pet food Express, which is closest to me. Anyway, I’m off on another tangent. So
Lisa Buffo 48:52
that makes sense. That adds context. So is it probably the same with Mary or bud or flower? As far as what did you call it crowded field like these have in common terms for an industry or a would be the equivalent in the pet supply space?
Mary Shapiro 49:11
That’s what I think. Okay, that’s just about any potty term. You know, it just and that’s, I always joke about this, and I’m not making fun of anybody really, maybe, I don’t know. But you know, if you sit around and you’re trying to come up with a name for your company, and it’s two o’clock in the morning, and you just landed on something, you’re really excited, but you just may not understand that it’s neither distinctive or exclusive. And, and, and I just, you know, that’s where I come in.
Lisa Buffo 49:40
That’s helpful. And I think I mean, you’re in San Francisco. So you’re, you’re right. I think the tech industry does this so well. Like every app and you know, new service or software out there is completely made up names that are now I’m able to understand and articulate that must be distinctive and You know, they went through the process of going through what you’ve described today as far as checking what they need to do for their intellectual property at front so they can build a brand and thinking about Kleenex. Uber as an example. That’s, that’s kind of a marketer’s dream, right? Like I’m calling a rideshare service and I say I’m calling an Uber, whether or not I’m actually using Lyft as an app. Because that just marketers have made it now and that’s like, that is the marketer’s dream is to, to kind of infiltrate the the lexicon and the communication so much, but that doesn’t mean it’s not without, there’s a legal side to that, too. So
Mary Shapiro 50:38
you got it. That’s precisely it. That’s where some of the legal considerations are different from a branding persons. Rep. point of reference.
Lisa Buffo 50:49
Yes. And well funded industries clearly spend a lot of money to make sure they get it right, because they’re building big businesses and big brands. So they’re, they’re protecting themselves. Okay, Mary, anything else you want to mention? And or we haven’t covered today?
Mary Shapiro 51:05
Well, I think what I’d like to mention is how you can get in touch with voc law of oak law is at evoke dot law. not.com. I, that was another thing. I was really into the new top level domain domains. And I really want a and I think what’s interesting about it is like, if you look for evoke.com, I don’t remember because it’s a long, I don’t know what’s there. But I went with a vote dot law, because I just thought it, it brought the law into it, but it’s made it shorter to remember. But anyhow, about dot law, where you can reach us by email at IP, intellectual property, IP law, at evoke dot law. There’s a place on our website with website, there’s a place on our website, for signing up for information, newsletters, and so forth. And I’d be happy to chat with you, any of you marketers, or operators, and, you know, just share stories and parse out some nuances.
Lisa Buffo 52:13
And you also do complimentary 30 minute consultations correct or appointments, where you’ll meet with business owners, and, you know, kind of talk about what we just talked about
Mary Shapiro 52:23
today. That’s why I we do offer a 30 minute, free consult. It’s not really a console, because we can’t advise people on the law until your we have attorney client relationship. But what we do is we have this session, and I think it’s it’s important for you to get to know us and figure out whether you want to work with us. And it’s important for us to know whether we want to work with you. Um, speaking of operators in particular. But yeah, we do offer a and you can sign up on the website, you can.
Lisa Buffo 52:55
Awesome. Well, thank you, Mary, I so appreciate you taking the time to have this conversation with us. And marketers, we will leave links to Mary’s website and her email address in the show notes. So you can find that where you listen, and I appreciate it.
Mary Shapiro 53:10
Thank you so much for having me. I as a former marketer, I really love the intersection between legal and creative, so I’m totally on board with everything that CMA does. Thank
Lisa Buffo 53:25
you. Thank you so much for listening to today’s episode. And we encourage you to check out our membership. If you’re not already a part of the community. We’ve got an end of your special running for our annual business members. If you have any questions, you can reach out to us at membership at marketing cannabis.org and we’ll tell you about all of our benefits as well as the promotions we’ve got going on and how you can get plugged into the cannabis community and or get interviewed on the show. Thank you all and see you next episode.
Meet Your Host
LISA BUFFO, Founder and CEO of Cannabis Marketing Association
Lisa Buffo is an award-winning entrepreneur and marketer with a passion for launching companies with experience in both the cannabis and technology industries. Lisa is the Founder & CEO of the Cannabis Marketing Association, a membership based organization focused on education and best practices for industry marketers with the vision of rebranding cannabis at the national level. She was named one of 2019’s 40 Under 40 Rising Stars in Cannabis by Marijuana Venture Magazine in 2019 and named “The Marketing Guru” by Women & Weed magazine and is a featured speaker and media source in publications like Forbes, The Guardian, and VICE. You can find her on Instagram @libuff and Twitter @libuff21.
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