How the legal profession underutilises paralegals: exclusive interview with Deborah Hampton of Chemours
- Hampton, a trained paralegal, is trademark team leader at The Chemours Company
- Believes non-attorneys should play a more meaningful role in trademark management
- Argues that paralegals can serve as bridge between legal and practical points of view
In the latest of our series of exclusive interviews with leading, WTR 300-ranked in-house professionals, The Chemours Company’s Deborah Hampton reflects on the underutilisation of paralegals in trademark management and about her approach to stewarding the company’s global brand rights. Crucially, she contends that companies often underestimate the substantive work that paralegals can undertake, and are missing out on unique insights into brand management.
If you want to know how to do something, ask a paralegal
A trained paralegal, Hampton has over thirty years’ experience of IP work, including stints as an in-house trademark manager at Limited Brands and Agere Systems, and as senior IP specialist at law firm Katten Muchin Rosenman. In 2015, she was recruited as trademark team lead for industrial chemistry outfit Chemours, which was then in the process of being spun off from DuPont. There she plays a pivotal role in managing roughly 3,000 active records worldwide, including for the company’s household name brands, such as Teflon and Freon.
With no in-house trademark lawyer at the company, she works closely with brand managers and senior marketers to shape the company’s prosecution, litigation and anti-counterfeiting strategies; and then takes the lead in executing these strategies in cooperation with Chemours’ in-house corporate lawyers and outside counsel around the world. Reflecting on the breadth of her duties, Hampton is keen to talk about the role of paralegals, who she believes could play a more substantive and meaningful role in brand rights management than is typically the case.
“Historically, the type of work paralegals have been given has really depended on the attorney they work with”, she explains. “Many attorneys have a very restricted idea of what paralegals can do and limit their work to routine administrative tasks. But if you follow the American Bar Association definition, there is actually quite a lot of substantive work that can be done by paralegals…This has been underappreciated by the legal profession.”
“I think there is a lot we bring to the table in terms of practical skills”, Hampton adds: “My training taught me not only about certain areas of the law, but also about particular legal processes and key research skills. Attorneys do not always have this knowledge: they are taught the law, the statutes, and how to interpret them, but not always about how to apply the law, and not about all the relevant processes. I think good paralegals can often serve as a bridge between purely legal and more practical points of view. There are also many little things that paralegals know about trademark work that often lawyers, especially young attorneys, do not know. These are things to do with IP offices around the world, the relevant forms and processes etc. Some attorneys will say that if you want to know something or how to do something, ask a paralegal.”
Overseeing Chemours’ spin-off
Many of the skills Hampton has developed during her time as a paralegal therefore made her ideally suited to the challenges she faced managing Chemours’ brand rights during and following its spin-off from DuPont. “I was officially hired before the split”, she explains, “but I was recruited for the role that I have now in the anticipation of the Chemours spin-off. They brought me in early to learn all of the systems, and the relevant brands while the DuPont staff were still there to bring me up to speed.”
Hampton continues: “One of my main tasks was to ‘lift and shift’ our trademarks from the DuPont database to a new system. I also reached out to foreign counsel to let them know which trademarks would be under the control of the new company, and I helped to Chemours to join INTA as a standalone entity.
She notes that one of the biggest challenges when the split was completed was to transfer the ownership of trademarks (“I had to decide which marks we were going to keep and which were no longer worth investing in”). She was also charged with establishing a new set of trademark management systems and developing a portfolio strategy for the fledgling company: “I always say that first year was really about ensuring that we had the appropriate systems in place, and that we understood those systems. I looked at the procedures they had at DuPont, which was a larger company with several dedicated trademark professionals. I had to decide what changes were needed, whether the processes could be made simpler and more suitable for the new company.”
It was Hampton’s practical skills as a paralegal that allowed her to excel while taking on these challenges. “As far as databases and docketing systems are concerned, it is we non-attorneys who typically work on those systems, so I knew what was needed for those systems when we spun-off from DuPont. Paralegals are the ones who work day-to-day with those systems, looking at the portfolios, looking at what marks we have, what is due, what our coverage is. A lot of times, attorneys will look to paralegals to ask about the portfolio. Non-attorneys are also often responsible for transferring ownership of marks from one company to another, which proved useful in my current role.”
Managing a global portfolio
With Chemours’ split from DuPont now complete, Hampton manages and enforces the company’s sprawling brand rights portfolio. “Much of my work at the moment is strategic and advisory”, she remarks. “Many of our brands – like Teflon – are very well-established, so the strategic prosecution questions we face have to do with whether trademark protections need to be strengthened in particular jurisdictions around the world, or whether there needs to be an IP refresh following the release of new products under an established brand.”
“From a prosecution point of view, what I have learned over the years”, she emphasises, “is that search and clearance is the foundation of everything you do. Knowing what is out there gives you a huge advantage – when you are clearing, you are going to see what your issues are. I believe your applications should be crafted in such a way that you should either be confident that there will be no office actions, or you shouldn’t be surprised if there is an office action.”
Policing the market is also a challenge for the company. While China, and Asia Pacific more generally, poses an enforcement challenge, she has also started to encounter issues in Pakistan and Eastern Europe. Given the inability to be on the ground globally, she explains: “We use service providers to help us police the market; we work closely with them to ensure that we avoid false hits that are either not a problem or turn out to be approved vendors or something like that. Employee education is also important for anti-counterfeiting. Customers, distributors, and our employees are good sources of information. Tell your employees: ‘if you see it, say it’.”
Above all else, Hampton stresses, a knowledge of your business is key to successful trademark management: “I am a firm believer that as an attorney or as a paralegal, you have to know the market, the business and its competitors. If you don’t, it’s hard to strategise, to clear marks or enforce them. Here at Chemours, I set about getting to know the company, so I was able to go beyond giving standardized responses; there will always be different variables that need to be taken into account, and if you don’t know those, the job becomes much harder.
Rising to the top as a non-attorney
When asked what is needed for a paralegal to reach the level of responsibility in trademark management that she has attained (beyond a company that recognises the value of the role), Hampton emphasises the importance both of developing an enthusiasm for intellectual property and of a desire to learn as much as possible about brand rights – especially those aspects which might be thought to lie beyond a paralegal’s purview.
After finding the IP world by accident when leaving paralegal school in the early 1980s, Hampton quickly became hooked on trademark work: “I always wanted to know more and to be as involved as possible. I asked the first trademark attorney I worked with if I could come to court with her. I think she was a bit surprised, but she allowed me to go with her. So that has been my attitude from the very beginning…I always tried – and still try – to follow legal developments as closely as possible. I always wanted to know more, so I worked hard to learn and to understand”.
This, Hampton believes, has made the crucial difference in preparing her to handle substantive and meaningful IP work as a non-attorney. “Some paralegals are satisfied mastering the administrative or procedural aspects of trademark work – and that is fine for them – but to do the work I do, a paralegal must master the strategic, the analytical and the logistical side of things.”
She is also keen to give credit to a number of mentors who gave her encouragement in her early career. “I was blessed to work with two attorneys early on – Jerry Murphy and Pat Ryan – who mentored me and encouraged me. Pat made me feel like there wasn’t anything I couldn’t learn or understand; she was far ahead of the times in terms of what she expected from her paralegals, and encouraged what was naturally in me – the desire to learn. They both went through particular skills with me, teaching me what to look for and why.”
And Hampton herself now seeks to be a role model to others entering the IP world - and not just as a paralegal. “I am an African American woman, and for many years I didn’t often see people that look like me”, she reflects at the end of our interview: “I didn’t have any role models from that standpoint. Many things have changed since then, but many have not. Hopefully I have been who I am proudly and confidently. I have been able to serve on the board at INTA, to serve two terms on the PTO’s public advisory committee, and I have co-chaired the Trademark Administrators Programme. And I want to open as many doors as I can for others.”
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