The Ever-Growing Role of Trademark Administrators

Whether law firms or companies employ trademark administrators (TMAs), trademark paralegals, trademark managers, trademark specialists, trademark clerks, legal coordinators or assistants, the reality is that paralegal careers (and titles) are diverse and multifaceted. For brevity, we will use “TMA” to refer to our esteemed, non-attorney trademark professionals.

TMAs play a key role in the management and administration of trademark portfolios and perform a broad range of legal support services during clearance, prosecution, management, enforcement, and litigation. The role of TMAs has evolved over the years, becoming more collaborative and hands-on than it has ever been.

Job titles typically align with a specific set of tasks and responsibilities, along with the position in the organizational hierarchy. Normally, they also indicate a person’s level of seniority and the contribution that person makes to a company. Large law firms can have specific TMA/paralegal departments, often overseen by paralegal managers and supervisors, while at small to mid-size firms, TMAs are more likely to perform clerical/administrative tasks in addition to their billable workload.

Corporations typically have dedicated trademark/intellectual property (IP) in-house teams comprised of IP attorneys and TMAs, or a non-IP attorney and TMAs who manage global portfolios. Responsibilities may include the following:

• Searching and clearing trademarks;
• Filing applications;
• Managing prosecution through registration;
• Filing renewals;
• Entering data in the IP management database;
• Working with outside counsel in local and international jurisdictions; and
• Training in-house teams on best practices and emerging IP issues.

Diverse

The roles of TMAs can be as diverse as their job titles, and for many, their duties expand to establishing and implementing procedures by developing guidelines, training programs and best practices, and assisting with global clearance, prosecution, and enforcement strategies. Some TMAs maintain large, billable workloads. Their work and projects could involve the following: copyrights, social media, advertising, domain names, licensing and privacy matters, due diligence, contracts, commercial transactions, and many other cross-functional operations.

TMAs often collaborate with stakeholders from other groups, such as sales and marketing, IT, and engineering, as well as with fellow members of a legal team, to work on a broad range of substantive issues for their clients and businesses. This demonstrates how the role of TMAs has grown and evolved to become more collaborative, hands-on, and vital to the IP profession.

Globally Uncommon

Outside the United States and other English-speaking jurisdictions, “trademark administrator” is not a familiar term or job title. The term “paralegal” is commonly used for individuals in legal support roles who often transition into a paralegal position through exposure to the legal profession. Paralegals often receive on-the-job training while performing various tasks that extend far beyond their everyday administrative or clerical duties. INTA refers to these specialized individuals as TMAs, though globally, there are a multitude of job titles (or no specific title at all) for these non-attorney professionals who assist in the administration of trademarks.

Despite there being such a diverse range of job titles and responsibilities, there is often no established career path for TMAs around the world. In the United States, for example, there are often no opportunities for many TMAs to advance beyond a “senior paralegal” role or title. Some TMAs have been successful in charting their own paths, but for many, their careers are stymied. Networking and professional development opportunities are essential in helping define the career path of many TMAs while adding value to the IP profession.

What INTA Is Doing

In fact, INTA’s Trademark Administrators (TMA) Committee has been hard at work with many initiatives to explore this very issue. During the 2023 Annual Meeting in Singapore, the Committee hosted a panel comprised of speakers from Korea, Mexico, Singapore, and the United States who spoke about the ever-expanding roles of TMAs around the world and the differences in titles, roles, and responsibilities. The discussion centered on how TMAs are taking on expert roles within their companies and firms, and the ways in which technology, professional development, and maintaining positive mental health further elevate their roles.

In addition, the TMA Committee will be relaunching a survey aimed at identifying and documenting the roles and qualifications of TMAs by country, as well as identifying external TMA organizations in each country. The goal of this project is to assist with the Committee’s objective of highlighting the need for more formal role recognition and training globally, both within INTA and outside INTA. The survey will be launched in July 2024. The results of the survey will enable the TMA Committee to effectively target specific benefits, resources, and INTA events for TMAs.

Lastly, and after much anticipation, the TMA Certificate Beginner Program, a key INTA initiative, will be launched at the TMA Brunch during the 2024 INTA Annual Meeting in Atlanta, Georgia, USA. With an expert-led curriculum, TMAs and other trademark professionals will gain insights and knowledge from TMA industry leaders and fellow professionals. Whether you’re new to the field or looking to enhance your existing skills, the TMA Certificate Program is ideal for trademark professionals at all levels. Continuing education and training are at the forefront of trademark-related careers and can enhance both personal and professional growth. We’re thrilled that the TMA Certificate Beginner Program has generated so much excitement.

Meeting Peers

Another opportunity for TMAs and young practitioners is the 2024 Trademark Administrators and Practitioners Meeting (TMAP). This year, the TMAP Meeting will be held from September 22 through 24 in Philadelphia, Pennsylvania, USA. This Meeting is relevant for attorneys and non-attorneys who assist with the management of a global trademark portfolio. Attendees come to the TMAP Meeting from all regions of the world, a testament to the global reach of the role of TMAs. In addition to providing practical tools and resources to help support trademark practices, the 2024 TMAP Meeting will offer opportunities for expanding attendees’ professional networks and enhancing their professional development, leadership development, and more.

No matter your title, INTA has resources for all members of your organization. If your organization is an active member, every person in your office location can have their own login and profile for free, as there is no limit to the number of people who can be added to your organization’s account. Do you already have an INTA account? Take your individual profile to the next level! Make sure you update fields like your job role, industry, area of expertise, and more, so you can stay up to date with INTA events, resources, and news that is tailored just for you. Check out this Inside INTA video to learn how to “sign me up” for access to member benefits and/or to update your job role!