Trademark Law: Another Alternative in Your Paralegal Training

As paralegals find alternatives to litigation in their paralegal training, trademark law takes off.

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Trademark Law in Your Paralegal Training

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 During Your Paralegal Training

A trademark is a word, symbol, logo or slogan that identifies a company, product or service.

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.

If you are interested in specializing in trademark law, take an elective class on IP during your paralegal training program, do some independent research, and join groups interested in this form of IP, whether on campus or online. This will supplement what you learn in your paralegal training and give you an advantage when you're looking for a job as a trademark paralegal.

Your paralegal training will teach you the three key roles that paralegals play in the trademark process: registering and renewing trademarks, protecting company trademarks, and seeking injunctions or damages if someone illegally uses a company trademark. Each of these paralegal tasks is discussed below.

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. Experienced paralegals know that trademarks which are unusual and fanciful, easily recognizable, and which will resonate with potential customers are the most valuable.

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 registered 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.

Once the USPTO accepts a trademark application, the company must use the ^® symbol to indicate that the mark has been registered.

Protecting Your Company's Trademarks

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.

Learn About Policing Trademarks in Your Paralegal Training

Once you have registered a trademark for a client, it is your responsibility to ensure that no one else uses it.

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.

Paralegal Training Offers Career Options

If you're thinking of becoming a paralegal, you may want to consider the interesting and dynamic world of trademark law as your paralegal specialty. It's a great idea to investigate these specialty career choices before or during your paralegal training, so you can take advantage of course offerings before you graduate.

If you decide on trademark law, get all of the additional education you can before you enter the job market. This gives you extra credentials to market yourself for the right job, as well as the knowledge and experience to land the job once you get that well-deserved interview.

Sources: uspto.gov, Intellectual Property: Patents, Trademarks, and Copyrights by Richard Stim