Inside track: trade mark paralegals


Inside track: trade mark paralegals

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In a recent LinkedIn post, Legal Tech Evangelist Colin Levy said:

“Paralegals and legal professionals who aren’t lawyers are often the glue that keeps things together and running smoothly. They also often are the most tech-savvy. I want to say to all of them – thank you.”

At WebTMS we strongly agree that trade mark paralegals are vital to keeping the wheels of intellectual property protection turning. Over recent years the role has evolved considerably, from a mainly administrative support function to offering considerable professional value-add to a company’s competitive position.

To find out more about the current environment in which trade mark paralegals are working and some of the challenges and opportunities in this fascinating career, we talked to a select group of trade mark paralegals from across in-house and private practice in a range of jurisdictions. They generously shared their views on the industry and tips for getting the most out of the role.

Routes into trade mark paralegal careers vary

It is clear that there is no such thing as a ‘standard’ route into becoming a trade mark paralegal, and no limit to what you can achieve when you do.

Kane Ridley, Head of Trade Mark Services at Keltie LLP, “fell into the world of IP” after joining a global IP service provider as a junior administrator. After enjoying roles with various firms, and fitting in some international travel, he joined Keltie in 2014 and was empowered to really develop his role. He now heads the trade mark services department, leading a team of renewals specialists, administrators, and paralegals to ensure Keltie’s filing and renewal practices run smoothly and the firm is kept up to date on changes in trade mark prosecution. Kane is also a member of the Chartered Institute of Trade Mark Attorneys (CITMA) Paralegal committee and exam working group and is the current Paralegal representative on the CITMA council.  He is also a member of the International Trade Mark Associations (INTA) Trade Mark Administrators committee.

The BomhardIP paralegal team is based in Alicante, the home of the EUIPO, and its proximity certainly influenced the career paths of Laura Devesa and Monica Musa. Both are skilled in languages, and Monica started her career at the EUIPO (then known as OHIM), working there for seven years before embarking on a posting overseas and returning four years later to join BomhardIP. Laura started as a docketing assistant at a multinational IP law firm, developing skills she finds valuable today in her paralegal role. Michaela Diezel says her career has been very much “learning by doing” as she has built her current expertise in trade mark management.

Franziska Kulke, of Bauer Media, made the transition to trade marks after starting in rental and family law and then taking a role in a commercial law firm. Seeing the importance of trade mark paralegal work growing, she jumped at the chance to work in-house for Bauer Media in April 2020 and has since qualified as a trade mark paralegal through IP for IP.     

In the WebTMS team, our two Chartered Trade Mark Paralegals, Samantha and Viviene, were both inspired to pursue roles in the sector due to its fascinating subject matter. Samantha worked with a multi-brand sporting goods company and says: “the trade mark team was so inspiring, they made trade marks fun!”

What attributes make a great trade mark paralegal?

Accuracy, time management, and communication are key skills for TM Paralegals, and these must be honed to a high level. Kane explains: “Being a trade mark paralegal is tough. You need to not only be able to work at a fast pace, but you also need to maintain a very high degree of accuracy. Two core skills that do not always go hand in hand.”

Viviene agrees, adding that it is essential to prioritise from a position of knowledge: “You are constantly working with a lot of date and deadlines, some more important than others, so it’s crucial that you understand their significance. You need to be able to prioritise tasks and manage expectations – even when clients or attorneys are insisting that everything is urgent.”  

The BomhardIP team adds that self-confidence is important, alongside good communication skills.

Both Samantha and Viviene advise that a genuine interest in the world of IP – alongside that attention to detail – is a major advantage, with Samantha noting: “To enjoy the role, you’re usually in one of two camps. You love data entry and love spending your day plugging away or, like me, you genuinely love trade marks and find them fascinating, so getting an interesting office action in or dispute is where you find your enjoyment.”

How has the role evolved over the past few years?

The profile of intellectual property protection has risen rapidly over the past decade, and this is having an impact on what is expected of trade mark paralegals. At the same time, technology has evolved, with increased automation and digitisation eliminating some of its more routine aspects. As a result, Michaela, Laura and Monica of BomhardIP say IT competence has become key: “The role requires better IT technical skills to deal with online submissions and changing technical requirements from IPOs. Better use of online tools to produce evidence and good knowledge of IP databases,” are also essential.

Kane has seen the role evolve: “from a back-of-house administration-focussed job to a client-facing role working in partnership with trade mark attorneys.” As a result, he says: “a professional and motivated paralegal team is now widely recognised as the engine room that can grow a trade mark practice.”  The level of work assigned to paralegals has risen, too, he notes: “Paralegals […] are taking on tasks that ten years ago would have been work only a qualified trademark attorney would complete.” The result is an increase in professionalism, and the opportunity for attorneys to invest more time in business development.

What challenges do today’s Trade Mark Paralegals face?

The number of trade mark applications is soaring worldwide and this means one thing for certain: more work for trade mark paralegals. As a result, says Viviene, there is pressure on the sector and  lack of support from training: “Firms want to hire more trade mark paralegals but they want someone who has plenty of experience and can hit the ground running.  While this is ideal, in reality there are not enough trade mark paralegals and they are being pushed to take on more work than possible.  If firms are willing to take on paralegals who may have little or no experience but are eager to learn and train them and sponsor them for the CITMA paralegal course then it would open up so many more opportunities for paralegals who have the acumen and interest to work in IP.”

Both Franziska at Bauer Media and the team from BomhardIP point to the pressure paralegals face to stay up to date with the constantly changing IP and technical aspects of their role. Ensuring these are reflected in the day-to-day practices of the business can be a significant undertaking.

Samantha believes that there should be more focus on wellbeing in the sector, as teams are often understaffed and under considerable pressure: “There will always be times when everyone needs to work a little later to get a deadline met (all the Brexit deadlines!), but there is a real culture in the legal world for working ‘til 10pm or later, as if it is a badge of honour. It should not be the norm.”

Kane echoes this, advising that: “it is OK to say ‘no’ when being passed work. If you are genuinely running at max capacity, sometimes it is more efficient to explain why you might not be able to meet that deadline, rather than taking on the task and letting people down.”

How can trade mark paralegals add value in their roles?

Adding value is something every trade mark paralegal should strive to do. As Kane points out, “with the added time that automation and smarter systems can deliver, it is of utmost importance that paralegals can diversify their roles to continue to offer efficient and cost-effective service.” He recommends becoming the “resident expert” in a field that interests you, and also working closely with attorneys to learn to anticipate next steps in a process, which allows you to demonstrate your skill.

Taking charge of your own learning and career development is another common theme raised by all the paralegals we spoke to. Bauer Media’s Franziska says: “It is strongly recommended to attend seminars and keep [your]self up to date,” and Viviene adds: “The rules and procedures on trade marks change more often than you think so it’s important to stay on top of them.” She also endorses the cultivation of networks and relationships with people throughout the industry, which can be an invaluable source of support when you come across niche topics that you have not experienced before.

The team at BomhardIP emphasises the value of collaboration. They hold monthly meetings to discuss issues arising, share experiences and brainstorm to solve problems in order to improve workflows in the business.

What are the best resources and support for trade mark paralegals?

When building your career, there are a number of key resources available, and many of them also help to create valuable career networks.

Some of the easiest to access are the many social media groups on Facebook and LinkedIn, which can cross over into real-life meet-ups, as Franziska explains: “Through facebook I met a patent paralegal who […] organises monthly after work meetings between IP paralegals from Germany, the UK and Switzerland. This is a good chance to get in touch with people from other countries, law firms and industries to exchange experiences.”

The BomhardIP team recommends taking advantage of training from IP database providers, IPO officers, IT and legal experts and other IP entities, focusing not only on professional aspects, but also interpersonal and communication skills.

Kane encourages trade mark paralegals to become members of the organisations that provide industry-specific content and education, saying “this is vital to keep your working knowledge up to date but also provides a network of like-minded people you can connect with.”

Samantha echoes this, adding: “Becoming a member of CITMA has been very helpful for learning and making connections. The IP world is very small, you usually know someone who knows someone else, or who worked where you did. So do chat to the person you’re sitting next to at a conference or seminar.”

It is clear from the wise words of our contributors that the role of trade mark paralegal continues to grow and evolve, offering a fulfilling career. On top of the opportunities it offers, it is a very positive, friendly industry. As WebTMS’  Viviene’s words sum up: “I’m very happy I found IP; there’s always something new to learn and the people are always kind and eager to share their experience.”

We’d like to thank all our contributors for generously sharing their experience and advice.