• TMAP brings paralegals from around the globe for talks and networking
  • Co-chairs note some organisations don’t see paralegals as the invaluable asset they are
  • Paralegals spreading to more diverse areas of the trademark work as filings go online

INTA’s annual Trademark Administrators and Practitioners (TMAP) meeting has just kicked off at the Maritim Hotel Conference hall in Berlin. It’s the first time the meeting has taken place in Europe and offers an opportunity for brands, lawyers and, crucially, paralegals to network and learn global best practices. WTR sat down with the co-chairs, Susanne Ferstl and Tracy Cooke, to explore how the legal community can better support, and benefit from, their paralegal colleagues.

Many paralegals and administrators in the trademark space start out with almost no formal legal experience. However, they are often expected to get up to speed quickly. Susanne Ferstl, a paralegal at Maiwald, recalls how she was thrown into the deep end with her first filing, which was for a now-household name brand: “I was given this tin which had the company name on it and had to file the trademark. It was difficult because I didn’t really know how then. I never thought I would be able to file it and I especially didn’t think the brand would be successful.”

The consumer-facing brand she cites (but can’t name on the record) has cannily built up its image, supported by the legal right that filing led to. However, the example highlights how, too often, paralegals are expected to sink or swim from the outset: “Most people start without any knowledge of trademarks. Often you come from the marketing department as there is no real trademark specialist study.”

Tracy Cooke, a senior trademark specialist at Electronic Arts (EA), equally had to flourish without the benefit of law school. Having worked her way through Tempur-Pedic’s marketing department, she found herself in the role of paralegal under the company’s first general counsel: “When I did my first application, I sent it off to my boss seven times before she would agree to sign off on it.” Since then she has worked in Alltech and Amazon’s legal departments.

After their initial dalliances with trademark filing, the two have exemplified the value of the administrator role. “We’re seen as the experts of the business that we support as we’re involved in the details every day. We know what’s happening with the particular marks that are for that business. A lot of the time, the attorneys need to speak to you before giving advice,” Cooke explains of her position in EA.

Ferstl concurs, noting that - although she cannot give any official advice to clients at Maiwald – she  regularly discusses her thoughts on matters: “I give my advice to the lawyers and 95% of the time, we’re of the same opinion… Paralegals can do a lot, now that the filings are all done online, everything is faster, so we’re responsible for more things.”

Cooke has also widened the remit of her role, explaining: “I’ve taken on a broader role over the years including project management, working with the business teams, helping to manage the budget for trademarks, to doing all types of relationship building work with managing outside counsel.”  The amount of time working alongside outside counsel has also given Cooke deep insight into the relative benefits of which firms EA should choose to work with – a decision paralegals often have a role to play in.

Despite paralegals often developing a keen sense of both the law and the business, the two note that paralegals are – sometimes – a criminally overlooked resource to a firm or in-house team. “Some lawyers unfortunately don’t recognise the importance of paralegals,” Ferstl laments. “They might give them really hard work, but they won’t let them say anything.”

Bolstering the network of paralegals is imperative, Cooke believe, with events like TMAP being an ideal venue: "Being in-house I have relationships with potential firms for us, having that network is key.”

As such, it often falls to the individual professional to grasp their opportunities and push to ensure that their know-how and expertise does not go to waste. That is often easier said than done, but TMAP will allow administrators to share best practice and experience.

The event covers a wide range of topics, from filing strategies to Brexit. Crucially, some of the speakers at the conference will cover the topic of how a paralegal can influence their company/firm to grant them with broader and more fulfilling tasks. Cooke believes that it ultimately requires dedication and open-mindedness: “If I’m able to do it, I can take it to my boss and tell them, I can do this. Maybe there’s a project helping out the legal team I could take on. You have to help your career out yourself.” Ferstl adds that sometimes it just comes down to hard graft: “It takes time. If you provide good work, lawyers will give you more difficult work and your responsibilities will grow.”

This year, almost 400 people have registered for TMAP. Ferstl hopes that not only paralegals will be attracted to the event, but that lawyers will come and learn to re-evaluate the talent in their teams. After all, paralegals can only push so far – ultimately the extent of their development and success is reliant on the willingness of their legal colleagues to recognise and utilise their expertise. Ferstl concludes: “It’s important that paralegals are recognised as an important part of the trademark department. If you have no experienced paralegals, you cannot do good work. It’s important that paralegals and the law industry give people the chance to educate and motivate them. Coming to this event motivates me.”