Paralegals In the Trademark Industry

By Matthew Schneller

In my experience, trademark paralegals take up a larger proportion of the head count, draft a greater percentage of substantive work product, and tend to have more direct contact with clients than they do in any other practice group.

Where many practices have large projects that take up most of an employee’s time over a day or weeks, like the rush of active litigation or a pending transaction, most trademark practitioners’ work lives are extremely broken up. Lots of little projects fill the day of the average trademark attorney or paralegal, and most of them have long life spans that require follow-up and additional steps, many of them years in the future. In busy practices, trademark paralegals are deeply involved not only in carrying individual projects through to completion, but also help shepherd along the many longer-term projects that are easy to lose sight of in the day-to-day bustle.

Duty of Diligence

One of the most important responsibilities of a law firm – Rule 1.3 of the North Carolina Rules of Professional Responsibility – is to act with “reasonable diligence and promptness in representing a client.” For trademark practices with clients with large and busy portfolios, staying on top of a set of prosecution deadlines can require a large and engaged team of lawyers and paralegals. Diligence requires not only quickly getting reports out to clients on actionable deadlines (even if those are far away) but also and continuing to following up with the client for marching orders.

Just by way of example, Winston-Salem based trademark practitioner Randy Springer is listed as counsel of record for more than 1,600 active US applications and registrations, and is doubtlessly responsible for overseeing many transactional projects, dispute deadlines, other matters, and foreign deadlines for clients too. Every one of those matters has at least some ongoing, impending eventual deadline to address. It’s all but impossible for a single individual to stay on top of  it all without help, so assembling a strong team of trademark attorneys and paralegals to keep an eye on matters with short fuses and longer-term deadlines is a precondition to running a large-scale trademark practice.


Trademark paralegals are often on the front lines of doing brand clearance research and drafting search analysis. Clearance is hands-on, valuable work that requires technical skill, experience, discretion, and deep knowledge of clients’ risk preferences and plans. In-house, paralegals are often responsible for coordinating branding plans with marketing and product development teams, and helping guide those teams to use the new mark in a way that will maximize its protectability.

Prosecution Preparation

Trademark paralegals assist with draft filing advice and prepare the vast majority of key prosecution documents, from new applications to post-filing interactions with the United States Patent and Trademark Office (USPTO), to Statements of Use and Amendments to Allege Use. Each of these, especially goods and services suggestions and selecting appropriate use claims, require experience and discretion to do well. A paralegal’s judgment and advice can save clients a ton of time and effort.

Office Action Responses

Substantive Office Action Responses are among the most demanding and time-consuming projects that full-time trademark prosecutors face, and paralegals play a key role in these responses. Many practices have trademark paralegals set up draft response documents, identify comparable prior responses for successful arguments on similar facts, and prepare the USPTO response forms that amend goods, update class data, and much more.

Managing Foreign Counsel

Keeping track of foreign counsel is a huge part of trademark practices that serve a multinational clientele, and much of the front-line responsibility falls in the hands of trademark paralegals. Before filing, paralegals pull together cost estimates and timelines from local counsel that help clients make informed filing decisions. Once the client gives the go-ahead, paralegals often prepare Madrid Protocol applications and subsequent designations, draft instruction letters to local counsel, coordinate getting priority documentation to counsel in countries that still (annoyingly) require certified copies, and get periodic status updates, especially in countries with less-than-efficient IP Offices where applications can sometimes fall into a black hole.

Trademark Disputes

In domestic trademark disputes, trademark paralegals play a huge role securing evidence, preparing pleadings and discovery documents – especially discovery responses, and helping accommodate a busy short-term but very busy matter without sacrificing more long-term projects.

This is only the core stuff that trademark paralegals deal with on a weekly basis – there are many more common recurring projects, like copyright work or ad review, supporting corporate practices in IP diligence projects and transactions, helping with domain name and social media disputes, and much more.

As you can see, paralegals are an essential part of every large, active trademark practice. Trademark law is an area that offers paralegals a lot of opportunity to grow their skills and responsibilities, work closely with clients, and be a key part of a team that will truly depend on their expertise and diligence.

Matt Schneller is a trademark lawyer and co-owner of TM TKO, a trademark research platform.