When I began attending International Trademark Association (INTA) annual meetings so many years ago, paralegals (also called legal assistants) rarely attended the annual meetings. I was one of a handful, as INTA meetings were often reserved for attorneys. For those attorneys, the INTA annual meeting was a trip to a typically lovely location to attend seminars. They would gather the required continuing legal education (CLE) hours and personally meet with associates, lawyers, and barristers from outside the U.S. with whom they often worked on a daily basis.
There were very few paralegals who attended the international meeting, so those outside the U.S. sometimes confused about the differences between an attorney and paralegal. Even today, I get questions about the role of paralegals and how they differ from attorneys. I think it stems from the fact that the paralegal/legal assistant profession began as a uniquely U.S. position. To boil it down quickly, I often give the analogy that an attorney/paralegal relationship is somewhat like a doctor/nurse relationship. There are many things a nurse can do for a patient, but there are clear lines on what they cannot do. The same is true for paralegals. While the title paralegal or legal assistant is not policed in the U.S., it usually defines a person who handles complexities of various legal tasks while not practicing law or providing legal advice.
An example? Trademark paralegals working in law offices often conduct trademark searches, review the search results, investigate hits of interest, and draft search reports for attorney review. However, paralegals in law firms do not personally provide the client with a legal opinion on whether the trademark is available for use or registration. That is the line that would be considered practicing law.
In a corporate setting, however, paralegals often act as business managers in addition to paralegals. So, they may conduct searches and provide their internal clients with opinions on potential business risks that may come with adopting a particular mark. They often have corporate titles and routinely file documents before the Trademark Office under their own names, including preparing and filing new applications and drafting and filing responses to office actions. Again, this is done under their corporate position and not their paralegal position. Of course, this is not true of every corporation, but certainly many, particularly when they have a small legal staff.
For those not in the legal field who ask what I do, I’ve shortened my attempt at an explanation to this: “I help clients protect and enforce trademarks around the world.” When I get a deer-in-the-headlights look from that, I simply say…”I’m a trademark paralegal.”