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Paralegal Stories: Trademark Law

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Intellectual property law (IP) is one of the hottest practice areas in the legal industry today. Trademark law, which involves the filing, registration and enforcement of trademark rights, is a growing sub-specialty of intellectual property law. The profile below highlights the paralegals' role in trademark law.

Name/Title: Patricia J. Giuliano, Trademark Paralegal

Employer: Cox Smith Matthews Incorporated, San Antonio, Texas

Area of Specialty: U.S. and Foreign Trademark Prosecution

Years as a Paralegal: 13

Educational Background:

  • Sinclair Community College, Dayton, Ohio: Associate of Applied Science Degree; Legal Assisting Major/ABA-Approved Program; Member of Phi Theta Kappa (Honor Society)
  • Indiana University, Bloomington, Indiana Criminal Justice Major

What is your specialty?

Trademarks prosecution, both U.S. and foreign.

What are your primary responsibilities as a paralegal working in trademark law?

  • Coordinate and manage trademark filings worldwide;
  • Prepare trademark and copyright applications and monitor their status;
  • Perform searches regarding trademark availability and related issues;
  • Prepare drafts of correspondence and documents responding to trademark agencies and offices relating to trademark application and registration filings;
  • Maintain a client database with over 12,000 trademarks;
  • Monitor trade dress and trademark infringement matters including drafting cease and desist letters and preparing complaints as necessary;
  • Monitor domain name registrations for clients, preparing cease and desist letters regarding cybersquatting and following up with the filing of ICANN proceedings as necessary;
  • Assist in the settlement of disputes; and
  • Perform legal research via LEXIS, Westlaw, Saegis, and other on-line services.

What do you enjoy most about your job as a trademark paralegal?

Trademark law is not new, but there are aspects of trademark law and protection that are constantly changing. You learn something new almost every day.

What challenges do you face in the trademark field?

The biggest challenge is keeping up with the latest trends and changes in the trademark laws.

Are employment opportunities for paralegals in trademark law growing?

There appear to be more opportunities as the field of trademark law is growing. We have added two trademark paralegals to our practice in the last five years.

What skills are needed to work as a paralegal in trademark law?

As with all paralegal positions, the job requires organizational skills, the ability to multi-task, and strong communication skills. Not many people have a background in trademark law so we must typically train our incoming paralegals.

What technology or software do trademark paralegals use?

We use several different trademark clearance software packages, including SAEGIS (a Thomson CompuMark product). We also use PATTSY, an intellectual property-specific docketing software.

Do you have any advice for paralegals who wish to work in the area of trademark law?

Attorneys appreciate the value you bring to their practice, but sometimes you need to assert yourself to show them what you can do. Learn the relevant law and try to be as helpful as you can in every situation.

What professional organizations do you belong to as a trademark paralegal?

  • Paralegal Division, State Bar of Texas
  • Alamo Area Paralegal Association
  • South Texas Organization of Paralegals
  • International Trademark Association
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