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The Trademark Administrator

The potential opportunities for support professionals in the trademark field are varied and depend on both the support professional’s experience and the county in which the individual resides. While many may start as legal secretaries, docketing coordinators, trademark agents, licensing agents or paralegals, today “trademark administrators” hold positions such as a senior manager in a Fortune 500 company, a general manager in a legal department or a trademark administrator for a company with an international portfolio of marks. The trademark practice is diverse and particularly interesting because one is often involved with developing and protecting recognizable brand names and logos, representing organizations around the world. Paraprofessionals occupy important roles in this field, and these positions offer wonderful hands-on experience and result in exciting and challenging careers.

The Trademark Secretary

The starting point for many who ultimately become trademark paralegals, administrators and coordinators is often the position of legal secretary. This is especially true in the United States. The secretary who works in a law firm and is assigned for the first time to a trademark department is generally amazed to find that the trademark field is very correspondence and document intensive, and requires one to address significant volumes of mail (fax, email and paper mail) with multiple parties, often from many different countries and in many different time zones with strict time constraints. Working with attorneys and paralegals who must constantly shift their attention from one client to another, legal secretaries must quickly learn to assist in maintaining organization within their departments. They often help to prepare necessary trademark forms for filing with the relevant trademark office and form letters to clients or foreign counsel for the attorney or paralegal’s review, and play a fundamental role in keeping track of upcoming deadlines. There is daily interaction with clients in this role, and therefore, good communication skills are important, but many find that the defining characteristic of a good trademark secretary is the ability to organize and prioritize.

While most trademark secretaries still work in law firms, an increasing number of corporations with internal trademark departments employ one or more secretaries to assist with trademark matters. If you have good secretarial and organizational skills, an interest in learning about trademarks and are seeking a challenging role, becoming a trademark secretary can prove an interesting and rewarding career move.

The Trademark Docket Clerk and Docket Coordinator

The role of the docketing coordinator has also become more important in the trademark field in recent years, and in the United States it can provide a good starting point for those who later may wish to become paralegals, agents or attorneys. Docketing coordinators are responsible for assisting attorneys, administrators and paralegals in maintaining computerized records of their trademark portfolio information. Unlike paralegals, docketing professionals require less knowledge of the trademark application process, and are typically not required to assist in many tasks specific to the trademark registration process.

Docketing coordinators are also responsible for tracking responses to statutory actions and are responsible for accurately maintaining the associated deadlines. This process includes the timely entering and removing of items from the computerized docket and generating reports that itemize the actions due and their corresponding due dates. Docketing coordinators are also responsible for removing items from the docket upon their completion and managing any necessary follow up. Because it is essential that actions are completed in a timely manner, docket clerks are vital to the success of a legal department.

Docketing coordinators may also be required to generate periodic status reports for their clients, and may be asked to prepare correspondence with their clients throughout the registration process. They may also be responsible for working with their foreign associates and / or software vendor to ensure that international law requirements are kept up to date in their trademark management systems.

The trademark field is deadline intensive. It is critical that the docketing coordinator be incredibly detail-oriented, and accurately enters these deadlines into a computer database. The docketing coordinator must manage these records, which enables their respective trademark departments to run smoothly and efficiently by ensuring that deadlines are timely met. A large volume of the correspondence is often from foreign associates and language barriers may exist. The docketing coordinator will need to decipher the specific action(s) required to properly enter the deadlines. Good computer and communication skills are definite prerequisites for docketing coordinators. It is also not uncommon for docketing coordinators to move into other positions within the trademark field, or to be given added responsibilities similar to those of the trademark paralegal, so it often provides a good starting point to begin learning the basics of a trademark practice.

The Trademark Paralegal

Paralegals (also known as legal assistants) are valued by trademark attorneys both in private practice and corporations. They have become invaluable “partners” in the practice. The trademark practice involves so many responsibilities that do not require a law degree, such as research, investigation, preparing and supervising international filings, and constant policing and monitoring, that it is easy to see why the utilization of paralegals is absolutely essential to the efficiency and economic effectiveness of any trademark law operation.

As trademark law practice has expanded, so too has the role of the paralegal. Take the instance of international trademarks, where it is feasible that a company or law firm could be dealing with as many as 150 countries and an equal number of different trademark laws. Since no single lawyer is authorized to practice in so many jurisdictions, and it becomes necessary to seek foreign counsel, the role of the paralegal often is to supervise and coordinate the assistance of that foreign counsel.

An equally attractive aspect of a career as a paralegal in trademarks is that it is no longer a backroom position with little or no visibility and few opportunities. Today, most paralegals have interaction with clients on a daily basis and perform tasks that are less burdensome thanks to automation. Technological advancements have also expanded the role of the paralegal because of the increased amount of trademark infringement that occurs with use of the Internet.

Paralegals cannot practice law, including trying a case in court, or providing any legal opinions, but little else is denied them in the field of trademarks. A paralegal can, with the direction of a lawyer, research the availability of marks by accessing available databases or utilizing outside search firms; prepare appropriate applications and other registration documents; collect the necessary deposit materials and fees; research infringements; create and implement proper trademark use programs; and be a vital team member in litigation, discovery and trial preparation.

Many of the duties of a trademark paralegal parallel those of the trademark attorney. The paralegal must be organized, able to prioritize, pay attention to detail and know how to meet deadlines. He or she must keep abreast of developments, of changes in the laws both domestically and internationally, use judgment based on this knowledge, and exercise common sense, ethics and integrity. Many countries require at least some level of specialized training or certification to become a paralegal, and one common path is for a legal secretary who has worked with trademark attorneys to advance to the role of trademark paralegal. Those paralegals with skills and an interest may also find themselves assuming greater responsibilities over time, becoming trademark coordinators or administrators managing entire portfolios, or pursuing more legal education to become trademark agents or lawyers as well. The trademark paralegal is an invaluable asset to a trademark team and the position provides a great opportunity for hands-on experience.

The Trademark Agent

In some countries, such as Argentina, Uruguay and Brazil, trademark paralegals are able to grow on their professional careers by taking a trademark “agent” (or patent and trademark agent) exam. These exams are similar to the United Kingdom’s “Trademark Attorney” position. Many countries that offer the agent exam do require a university degree, including Spain and Portugal. Other countries, such as France, Italy and Germany, require 2 or 3 years of practice, in addition to the university degree and the exam. In many countries, with an agent degree, the paraprofessional can represent clients directly before his or her country’s Trademark Office. The agent can sign trademark applications, official actions, petitions, assignments, denials, file oppositions and administrative actions before the trademark office. Unlike the paralegal, the agent can sign documents of this type and does not need the participation of a lawyer. However, in court a lawyer must be in charge. The trademark agent exists in many countries, including Canada, China, France, Germany, India, Italy, Japan, Malaysia, Portugal, Spain, Thailand and the UK.