Trademark Law as an Alternative in Your Paralegal Training
As paralegals find alternatives to litigation in their paralegal training, trademark law takes off.
As paralegals increasingly seek out specialty practice areas to suit their interests and skills, niche fields such as trademark law have become more prevalent in the paralegal profession. Attending an accredited paralegal training program gives you the opportunity to learn about the concepts, practice and nuances of trademark law.
Owning intellectual property (IP) is similar to owning other types of property: you have the right to keep others from using that property without your permission, or you can license or sell it.
In fact, as a trademark paralegal, part of your job description is to help clients protect and maintain ownership of their intellectual property.
Learn About Trademarks
Companies use trademarks to set them apart from their competitors and create "branding," helping to generate consumer identification, goodwill and loyalty toward that company and its products or services. Because trademarks are such a critical aspect of any company's marketing strategy—and thus of their bottom line—they are valuable assets that must be protected.
Your paralegal training will teach you the three key roles that paralegals play in the trademark process:
- Registering and renewing trademarks
- Protecting company trademarks
- Seeking injunctions or damages if someone illegally uses a company trademark
Registering Trademarks with the PTO
Only certain terms or symbols can become trademarks. If the U.S. Patent and Trademark Office (USPTO) determines that a mark is just an adornment, it will refuse to grant trademark status.
Your paralegal training will teach you that a generic term may never function as a trademark. "Television" and "laptop" describe classes of goods, so no individual producer of TVs or computers can acquire a trademark solely for one of those terms. Before applying for a trademark, a lawyer will ask a paralegal to research other marks that are similar to the one the company wants to use. The lawyer will evaluate whether the company has a good chance of getting trademark protection for that mark. If a proposed mark is sufficiently different from all others in a similar industry, a paralegal can register it with the USPTO.
- After submitting the application, the company must use the TM symbol with the mark. This signifies that it has applied for a trademark, but that the application has not yet been accepted
- The company must use the ® symbol to indicate that the mark has been registered once the USPTO accepts a trademark application
Protecting Your Trademark
Trademark law grants protection to the person or company that first uses a mark in commerce, so it is important as a trademark paralegal to verify that your client is truly the first. If not, you'll want to make sure that employees do not use another company's mark and infringe on its IP rights.
Paralegals often help educate company employees and clients on the proper use of trademark symbols, and they check to make sure they are using the symbols consistently.
It is also a paralegal's responsibility to inventory the trademarks of client companies and regularly renew those trademarks with the USPTO. If you don't file a "Declaration of Continued Use" on time, the client forfeits the trademark and loses valuable intellectual property.
Policing Trademarks in Your Paralegal Training
Trademark paralegals may do periodic searches to see if anyone is using a mark similar to one of theirs. If paralegals find a potential trademark infringement, they discuss strategy with their managing attorney, and will often send a cease-and-desist letter to the offender.
Other Legal Remedies
- Alternate dispute resolution: if you are unable to negotiate a settlement over a trademark infringement, alternate dispute resolution such as arbitration and mediation is a cost-effective way for parties to come to a mutually beneficial resolution to trademark disputes.
- Litigation: If all else fails, your company can sue the infringing party. Filing a summons and complaint may enter the realm of the litigation paralegal, but normally trademark lawyers and paralegals handle trademark litigation.
Sources: uspto.gov, Intellectual Property: Patents, Trademarks, and Copyrights by Richard Stim
Paralegal Training Topics
- Civil Litigation For Paralegals
- Paralegals and Contract Law
- Paralegals and Trademark Law
- Quiz: Legal Latin Terms
- Court Cases For Paralegals
- Paralegals and Legal Ethics
- Paralegal Training in a Tough Economy