A Day in the Life of a Trademark Paralegal

What describes the duties of a trademark paralegal better than sitting right at his or her desk. Every day is different. Deadlines and "To Do" list in hand but, an urgent matter comes up and there is a need to re-prioritize. Deadlines are known well in advance of due dates, but new or urgent matters come up at the last minute. This is a representative day for me.


8:00am I arrive with coffee in hand and review the docket list. Turn on the computer checking messages and whether there are any new developments in law or procedure at the PTO's database. If anything is found, then I advise the attorney via email. Make "to do today list".


8:30am Weekly meeting with the attorney to discuss priorities for the week, including any new or time-sensitive matters and I communicate any relevant matters that came up over the week. I get some new work to be done - 3 trademark searches from Client A, full search report to review for Client B needed asap, Thomson Reuters watch lists to review for potential opposition purposes. A new application for Client Z. A reporting letter on 3 recent filings for Client F.


9:00 am. Reviewing the full search report is urgent and time-consuming so that is my first task of the day. A search for GOLD BOOK in Class 25 covering quotes from the Bible by Client B who is a publisher of spiritual nonfiction. I hyper-focus on reviewing the search report with post it notes and a highlighter to highlight any pertinent data. The report is 500 pages. I realize it will take all morning. I uncover a few potential conflicts and research their registrants trademark portfolio and in the case of cancelled registrations, check on the corporate status of the entity in the state in which it was formed to discount inactive businesses. The report has federal, state, and common law marks and excerpts from trademark or general publications, advertising materials, dba's name and contact information. I sift through the pages highlighting the potential conflicts and prepare a memo to the attorney. This is a very detailed memo providing the results and rationale behind the risks, along with the status of questionable corporate entities or registrants and any suspicious businesses and websites.


12:00pm - 1:00pm lunch

1:00 Perform the preliminary trademark searches and review for potential conflicts, and prepare memos to the attorney with results, similar to above.

2:30 Prepare the new trademark application for review, attorney approves and I file it. Docket the new application and draft reporting letter.


3:00 Read two Office Actions - one with substantive objection and the other with an amendment to the goods and services. Docket the deadlines. Get client's input and draft response to the office action for amendment of goods because that can be filed right away.


Pull the file on the substantive Office Action and prepare a memo to the attorney setting forth what needs to be done to overcome the Examiner's rejection. Draft a letter to the client advising that there has been a substantive office action issued on the application and how the rejection can be overcome. Request any needed information.

4:00pm Check out for the day...

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