A Seat at the Table

by | Jun 9, 2022 | Articles, Diversity, Intellectual Property, Trademarks

The management and maintenance of trademark portfolios has always been important, but as technology develops, the focus on portfolios has heightened. Trademark administrators are leading the charge in ensuring legal teams can keep up, as Sarah Morgan reports.

Trademark administrators—or paralegals, as they are known in some parts of the world—play a vital, yet often underappreciated, role in their firms and organizations. However, while the benefits of a great trademark administrator are plentiful, common misconceptions and a lack of progression diminish the rewards that can be reaped. The good news is that change is afoot.

Kara Fielder Zioba, Global Intellectual Property manager at The Hershey Company (US) and vice-chair of INTA’s Trademark Administrators Committee, believes that there is a bias and stigma attached to the role, and overcoming this will be critical for the advancement of administrators everywhere

“I know that paralegals hit a glass ceiling and, especially for career trademark administrators, many times there is no place left to go beyond senior paralegal,” she said. “I think there is also a stigma attached to titles.”

Ms. Zioba, who recently was promoted from senior intellectual property (IP) paralegal, added: “I was fortunate enough to create a new role for myself that limited the paralegal title and that has made me more confident in my role.”

In the experience of Deborah Hampton, senior trademark & copyright program manager at The Chemours Company (US), trademark administrators have a lot of legal responsibility, but often have other responsibilities, including budgeting and working with other cross-function colleagues.“There’s a struggle of getting past certain titles. Often in corporations, the directors are lawyers; it’s very rare that a trademark administrator is a director, even though the work they’re doing and who they’re interacting with is at the director level,” she said.

Likewise, from an attorney’s viewpoint, Azhar Sadique, partner at Keltie (UK) and chair of the Trademark Administrators Committee, added: “The progression of an administrator or those in non-attorney roles is still marred by a lack of foresight and vision by those managing such functions into roles beyond a senior paralegal.

“This lack of executive progression by way of title is disproportionate to the advancements made in the ability of administrators. There is some catching up to do to recognize this development.”

Mr. Sadique explained that, in contrast to the attorney role, there are few opportunities or initiatives for administrators to develop a working practice, a specialization, or their own careers through focused business/professional development.

He said that while some administrators are given the opportunity to prosper, supported by an encouraging management system, there are still “pigeon-holed routes lacking structure and progression” that exist in offices and in-house environments, with roles focused solely on data entry, formalities, and billing.

Ms. Hampton added: “As far as we have advanced in this profession, we still are challenged with education, in terms of formal training. Even paralegal schools and colleges don’t always have IP as part of curriculum.

“Often a person will need to be trained on the job. If you have a great trainer or supervisor who is going to invest in you and train you well, that’s wonderful. But if you don’t have that, sometimes you don’t know what you’re missing out on.”

In addition, in some countries it can be difficult to find a trademark administrator in the first place.

Susanne Ferstl, paralegal at Maiwald Patentanwalts- und Rechtsanwalts mbH (Germany), said one of the big challenges for firms is trying to find skilled trademark administrators in Germany.

She noted that in Germany there is three years of training to become a patent paralegal, and while this includes trademark knowledge, the focus is on patents. So, most trainees work as patent paralegals instead of trademark paralegals afterward.

Additionally, Ms. Fersti said, “It’s not that easy to find training for trademark administrators in Germany. Most trademark training is directed at attorneys.”

Despite these challenges, both Ms. Zioba and Mr. Sadique believe that, with investments by firms in non-attorney talent, administrators can thrive and build on their careers, while also greatly benefiting the legal team.

“Investing in non-attorney talent through development, training, and creation of expanded roles is key to a successful practice for attorneys. It is the trademark administrators who are in the weeds doing the day-to-day management of the portfolios,” said Ms.

Zioba who benefited from the mentorship and sponsorship of a former manager who understood the importance of investing in talent (not just for attorneys).

However, while some administrators have been given wider responsibilities, for many, there is a still an “us versus them mindset,” cautioned Ms. Zioba.

The misconceived way some law firms view trademark administrators also seems to be holding back progression and recognition.

Michael Bradley, paralegal and trademark specialist at Bean, Kinney & Korman, P.C. (US), said: “There are many old-school practitioners who micro-manage their staff. When you look at law firm websites, many exclude non-attorneys from their ‘team.’

That’s inexcusable in my mind. Few outwardly promote the importance and ability of their trademark administrators, many of whom serve as the backbone of the trademark practice.”

Despite these instances, Mr. Bradley is encouraged by recent stories from trademark administrators about the respect they are afforded today.

“Many companies and firms have gone out of their way to separate themselves from the mentality of the caste system … to ensure all trademark attorneys and other non-attorneys are treated as the professionals they are,” he said.

A Changing Role

In recent years, the role of the trademark administrator has undergone substantial change.

“The trademark administrator has developed his/her role much more than the traditional attorney. This is due to globalization and internationalization, and the administrator has wider functions when managing a portfolio,” said Cristina Casas Feu, managing partner at Casas Asin (France).

“Suddenly automated systems burst onto the scene. Many vendors offered downloadable software which required frequent, manual updates. These days, most systems are cloud-based and updates are automatic and included in the price of subscriptions.”

In the view of Kathleen Jose, paralegal at Block, Inc. (US), “As firms and companies may turn to such technologies, I believe there is now more opportunity for trademark administrators to focus on higher-level work; the technology can ease some of the more administrative burdens of the role, but it cannot replace the more nuanced work we do.”

As trademark administrators begin to take on a wider role thanks to advances in technology, time-intensive activities, such as portfolio reconciliation for a client’s marks, still remain on their plates,

And they are “often still left with very little time to actually strategize over their portfolios,” said Robert Daniel Shores, partner at Daniel Law (Brazil).

Given the proliferation of innovative technologies such as artificial intelligence (AI), is there a risk that trademark administrators could become obsolete? Ms. Ferstl is adamant that will not happen.

“I think the IP world will continue to evolve and adapt to new technologies. But from my point of view, AI will never be able to replace trademark administrators,” she opined.

Indeed, said Jesús Enrique Vargas, senior trademark paralegal at Albagli Zaliasnik (Chile), the implementation of AI in “many processes facilitates and lightens the workload, and the use of advanced docketing and managing systems allows an automated and fluid workflow to be maintained.”

He added: “Our challenge is to complement technology with our soft skills and analytical capabilities in order to provide a good service. It is up to us to continue training and innovating to keep up with market expectations.”

There is also an abundance of confidence that further advances in technology will create opportunities for administrators to become even more central to a practice.

Mr. Shores agreed that as “companies and firms increasingly look to bring technology into the process, the opportunity for trademark administrators to assume a position of leadership in their departments is expanding.

“But with an expanded role comes more challenges and greater responsibility. By focusing on process consistency and technology adoption, you can become the linchpin both for your team and for the company,” he said.

Speaking of being central to the team, Ms. Feu advised trademark administrators “to strengthen their abilities in order to play a key role in the legal framework, working hand in hand with trademark attorneys. Indeed, they are the future and an essential part of the legal team.”

The Future Is Now

Given the impact of rapid technological advances and the increasing importance of managing and maintaining portfolios, Mr. Sadique said: “I believe the role of the administrator of the future is already here. They are adaptive, they are ever-growing, they keep up with changes in all areas of law across the timeline of IP rights. They do this to allow other functions to flourish and that is going to continue.”

Indeed, Ms. Hampton hopes to see trademark administrators become directors, vice presidents, and part of the C-suite.

“We have so much to give. and we do so much. Often, we’re the ones in the room who understand the legal issues and the practical issues. We don’t want to replace attorneys—we’re here to partner, to be a piece of the puzzle that makes it whole. I want to see us soar,” she said.

For trademark administrators, one outstanding question mark is the fate of certification.

As Mr. Bradley pointed out, “The U.S. is behind in certification for non-attorney trademark practitioners, but we are working on it. Just exactly what such certification will provide remains to be seen.”

In other jurisdictions, such as Canada, the EU, and the UK, firms employ trademark agents as non-attorneys licensed to practice before their respective IP offices.

While a proposal by the California state bar to allow paraprofessionals to offer legal advice in limited settings was rejected earlier this month, a handful of U.S. states already have or are considering similar programs.

In late 2021, the Arizona Supreme Court approved the first group of applicants as legal paraprofessionals, and, earlier, in August 2020, Utah introduced a regulatory sandbox, providing experimentation with new regulatory reforms that allow for new business structures, including non-lawyer ownership and investment and joint ventures between lawyers and non-lawyers.

In Ms. Zioba’s view, “This would be a game changer. For those trademark administrators acting in a quasi-attorney capacity like myself who ‘could’ give legal advice (know what to do, say but are limited, forbidden from doing so without a legal qualification), this could open the door for so much opportunity. I would love to see it happen.”

Mr. Sadique added that the gap between “attorney work” and “administrator work” is already thinning and that the introduction of “more globally recognized certification programs and courses for administrators and non-attorneys will provide the versatility our profession needs in creating a truly collaborative and well-armed profession.”

He concluded: “The days of boundaries by title should be drawing to a close. The days of prosperity by mutual value recognition are what we should all be striving for.”


Interview published on INTA Daily News.

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