A Personal Statement from Mary
As my biographical information said, I had a prior career in book publishing. I love books, reading and buying them, and still find it difficult to walk by a bookstore without stopping. I enjoyed my career as a retailer, publisher, and distributor, meeting many interesting authors and learning a little bit about so many topics.
While in my first corporate position, which was well before desktop computers were customary, I observed that notices posted on bulletin boards indicated that such and such had left “to pursue other interests.” I quickly realized that this language was a euphemism that someone had been fired. Not wanting to get fired, I contemplated what these individuals had in common and concluded that they had become complacent and hadn’t changed with the time. Vowing not to let that happen to me, I decided to reinvent myself midlife.
Flash forward nearly 20 years: I was turning forty and was at a library conference in Los Angeles, shortly after the Loma Prieta earthquake. I was a vice president of marketing at an international book distributor that had just downsized/rightsized, so it was necessary for me to help set up the booth at this national trade show. Not a problem — until we ran out of Velcro® fasteners, which we used to hang posters onto the booth. Even then, I was in LA, in a convention center, so not a [real] problem. Nevertheless, I got to thinking about how I was turning forty and that my biggest challenge was finding Velcro. I now refer to this as my “Velcro epiphany.”
Thinking about my future after arriving home in New Jersey, I was driving and reciting the nursery rhyme that went “Doctor, Lawyer, Indian Chief.” (see http://en.wikipedia.org/wiki/Tinker,_Tailor) Becoming a doctor would take too long, Indian chief? Not gonna happen. But lawyer?—I could leverage my background in marketing relative to trademark law and my publishing background as to copyright law. So I became energized about pursuing a new and intellectually challenging career. Soon I had registered for the Kaplan® test prep course and the LSAT exam. A year later, I was sending off my applications to law schools.
Unfortunately, the day after transmitting my applications, I was diagnosed with breast cancer. I was very lucky because it was caught in an early stage. Notwithstanding my diagnosis, I was determined not to let cancer stop me from moving on to my exciting new career. Following treatment, I was able to start law school only a semester later than I had planned.
I thoroughly enjoyed Golden Gate University Law School (and the break from the daily emails, teleconferences, meetings, etc.), remaining focused on a career in intellectual property law. After graduating in ’98 and passing the bar in ’99, I secured an exceptional position as an associate attorney with Townsend and Townsend and Crew LLP, the largest specialized intellectual property law firm in the west which was recognized as one of the nation’s leading IP firms. I learned the practice of trademark and copyright law from some of the best IP lawyers in the business, My practice focused on serving a diverse group of clients, many nationally known for their innovation and commercial success. (In 2010, the Townsend firm merged with Kilpatrick Stockton and is now known as Kilpatrick Townsend Stockton.)
After ten years at Townsend, having learned the ropes from some of the best, I struck out on my own to launch Mary L. Shapiro Law, doing the work I love. In 2016, Mary L. Shapiro Law rebranded to Evoke Law, PC.
I visited this semiconductor client weekly at corporate headquarters, where I had my own office and worked with legal people and the business staff. I learned the corporate culture, familiarized myself with the technology and the products, and appreciated the company’s risk tolerance/adversity. I celebrated birthdays and holidays with the legal team, even participating in the holiday gift exchange.
As part-time in-house/outside counsel, I was not an employee, but a contractor who functioned as an employee. I conferred with in-house lawyers, confabed with the business folks, presented project cost estimates, proceed as directed, and monitored the budget on a quarterly basis.
Administratively, the “embedded” nature of my work with this client was efficient. The director of IP was relieved of most day-to-day responsibility for administering trademarks, yet participated in all strategic decisions about to trademarks.
For me, it wasn’t merely a paycheck or technical management of a portfolio. I was invested in the success of the company and its legal department.
My standard for a conflict of interest rose above the ethics rules, and I got the level of animosity any dedicated employee reserved for competitors.
Strategically, being embedded in the company enabled me to recognize the opportunities and threats by validly creating, exploiting, enhancing, and leveraging value in the company’s marks. The challenge was creating and managing the portfolio to leverage trademarks to complement patents, copyrights, and trade secrets. With a perpetual lifecycle, trademarks have the potential to perpetually maintain exclusivity in a proprietary aspect compared to other forms of intellectual property that expire.
Being an embedded trademark attorney, I’ve found it’s not enough to be merely amiable and gregarious, though walking the hallways and developing relationships is key to being effective in an embedded relationship. They should have the kind of passion for this area of law that a skillful attorney practicing trademark law 100% of time would have, or be willing to take risks by inserting themselves, reaching out as a creative problem solver, and know how to apply this body of law to achieve company’s objectives.
As an attorney that had corporate experience (I was a former vice president of marketing, both strategic marketing and marketing communications), I had the know-how to understand and appreciate the challenges associated with this business group’s activities. Setting me up as an internal team member eased the interactions between legal and marketing on trademark (and copyright) matters.
My experience allows me to:
Form a preliminary opinion as to the strength of a mark and the enforceability of a proposed mark.
Forewarn about wasting time on a descriptive mark or one with dilute and ubiquitous techy components, e.g., insight.
When presented with a weak mark, I can discuss with the marketing folks whether such a mark may be acceptable, e.g., for a minor product.
Know that sometimes availability is the goal, rather than enforceability.