Training Paralegal – Trademark Law in Your Training Paralegal
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.
Training Paralegal - 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 training paralegal 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 training paralegal and give you an advantage when you’re looking for a job as a trademark paralegal.
Your training paralegal 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.
Training Paralegal - 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 training paralegal 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.
Training Paralegal -Protecting Your Company’s Trademarks
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.
Training Paralegal - 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.
Training Paralegal - Other Legal Remedies
- Training Paralegal - 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.
- Training Paralegal - 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.
If you’re thinking of becoming a paralegal, you may want to consider trademark law as your paralegal specialty. It’s a great idea to investigate these specialty career choices before or during your training paralegal, 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 will give you the 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.
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