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Intellectual Property Paralegal |
| I was born Deborah Ann Carmichael on November 11, 1959 in Jersey City, New
Jersey to Barbara Ann and Duncan Carmichael, the youngest of two children. The
first time I saw an episode of “Perry Mason” at approximately age 4, I was
hooked! I knew that I wanted to work in the legal field. My original goal was
to be a lawyer jut like Perry but God had other plans for me. When I was 12, my
family moved to Staten Island, New York where I attended Port Richmond high
school, graduating in 1977. From there I attended the University of Cincinnati
and graduated in 1981 with a BA in Political Science. |
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| I came home to New York ready to start my career. I began work as a
receptionist at a law firm to save money to apply to law school. The Paralegal
Supervisor I worked for thought it would be a good idea for me to become a
paralegal and she encouraged me to apply to a paralegal school. I took her
advice and began Adelphi University’s Lawyer Assistant program in 1982. I also
thought this would be a good way to see if I really did enjoy working in the
legal field. I thought if I hated it, I would continue my dream of becoming a
lawyer. I received my Paralegal Certificate in 1983. |
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| As luck would have it, the first interview I received was with a partner at a
small Intellectual Property law firm. The position was for a trademark
paralegal reporting directly to the partner. I had one interview with her and
she hired me at the conclusion of the interview. At the time, I didn’t know
anything about intellectual property or trademarks. However, I found that I
loved this area of law and I have been working in this field since 1983. I like
to think it was divine intervention because I did not receive any other
interviews other than this one and to this day, I can’t imagine me working in
any other field of law. |
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My responsibilities include globally searching, clearing, and prosecuting,
enforcing and maintaining corporate trademarks, trade dress, and trade names. A
trademark is a corporation’s greatest asset. If maintained properly it can last
forever. Some of the most well known trademarks are over 100 years old. A
trademark is the only form of intellectual property that can be held by an
owner in perpetuity. |
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I have been married since 1986 to William, a wonderful man. I have a beautiful
15-year-old son, Tristan. They are the light of my life and without their
support and encouragement; I would not be successful at all. |
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CAREER HIGHLIGHTS |
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I have been fortunate in that I have been able to fulfill many of the goals
that I set for myself. Here are several of what I consider career highlights. |
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• The only non-lawyer on a three-person team responsible for naming most recent
employer, Agere Systems Inc.
• Served as the Co-Chair for the International Trademark Association’s 2004
Trademark Administrators conference. This was particularly an honor for me as I
attended my first conference in 1986 and was absolutely in awe of the
paralegals in charge at the time. I attended many of these conferences and
learned so much over the years so to be charged with the honor of organizing
this event that is attended by so many well-known experts in the field and new
paralegals was definitely a highlight of my career.
• In 2003, I led a team that put together a three-day Intellectual Property
Track for the NALA 2003 convention and participated as a speaker. The speakers
authored an article on Electronic Filing for the November 2003 issue of Facts
& Findings.
• I was one of the first Paralegals to serve on INTA’s Trademark
Administrator’s Committee created in the early 90’s to address the needs of
non-lawyers.
• In July 2001, I participated in NFPA’s item writing workshop to revise the
PACE exam. I was chosen because of my intellectual property background to
include questions related to IP.
• My most recent honor came in being chosen to lead the Trademark
Administration group for the International Trademark Association 2006 Annual
Meeting Planning Committee that will be held in Toronto.
• In 2002, I was a project team member on the International Trademark
Association Trademark Administrators Conference planning committee.
• I also recently assisted with the revision of the trademark module for NALA’s
online campus.
• During the last year or so, I have written several articles for Facts &
Findings, Legal Assistant Today and the International Trademark Association
Trademark Bulletin. |
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PUBLISHED ARTICLES |
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International Trademark Association Bulletin Volume 58, issue No. 15 -
Trademark Administrators Gather at 2003 NALA Convention – Author |
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National Association of Legal Assistants, Inc. Facts & Findings November
2003 Intellectual Property Issue - Electronic Filing at the USPTO – Co-Authored
with fellow speakers of Intellectual Property Institute, 2003 National
Association of Legal Assistants, Inc. annual convention |
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May/June 2004 issue of Legal Assistant Today –My Specialty column on Trademark
Administrators and Paralegals – Author |
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National Association of Legal Assistants, Inc. Facts & Findings May 2004
issue – You Need a Program: Domain Name Issues – Editor |
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In LESSONS FROM THE TOP PARALEGAL
EXPERTS, a job description for each paralegal expert will be included. Here's a
sample of Deborah's impressive work as an Intellectual Property Manager at
Victoria's Secret Brands |
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JOB RESPONSIBILITIES |
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DEBORAH A. HAMPTON |
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I. Selection
. What is the Trademark?- Determine mark configuration
. Word
. Design
. Word and Design
. Product packaging/configuration
. Slogans
. Color
. Sound
. Scent
. Mark with movement (animation)
. Considerations for selecting a mark (strong vs. weak )
. Fanciful
. Arbitrar
. Suggestive
. Descriptive
. International Selection of Trademarks – Must consider:
. Translations
. Linguistic screening
. Pronunciation
. Negative meaning in country of interest |
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II. Searching
. Preliminarily screen proposed trademarks for availability
. Conduct full comprehensive search of federal, state, common law and
registered domain names to determine availability
. Evaluate search results and draft search opinion
. International Searching
. Order full search reports from international agents
. Interpret search results from Agents |
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III. Clearance
. Adoption
. Determine if mark will be used as common law only
. Begin application process
. Begin policing and enforcement of mark
. Investigate third party use and registration |
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IV. Prosecution of Applications for new trademark
. Prepare applications in US and file electronically
. Determine filing bases:
. Use in commerce (Section 1(a))
. Intent-to-use (Section 1(b))
. Convention/treaty priority (Section 44(d))
. Home country registration (Section 44(e))
. Office Actions – Prepare responses to rejection of applications from USPTO
. Substantive grounds for refusal
. Likelihood of Confusion
. Descriptiveness
. Functionality
. Genericness
. Administrative Rejections
. Identification of goods/services indefinite
. Ownership of application not clear
. Specimens are not acceptable
. International Application and Prosecution
. Assist clients with choosing in which to file
. Must know basics of country law- first to file vs. first to register
. Treaties, Conventions
. Paris Convention – Filing based on priority?
. European Community Trademark
. Madrid Protocol
. Madrid Arrangement – International Registration – WIPO
. OAPI
. Assist clients with determining whether to file foreign equivalent of mark,
for example:
. Katakana, Chinese
. Characters, Thai, Arabic?
. Translations
. Transliterations
. Prepare application letters to International Agents to file international
applications
. Determine Identification of Goods/Services – All goods/services in class or
specific ID
. Prepare Power of Attorney and other required documentation
. Prepare international documents for legalization
. International Office Actions – Rejections
. Need local counsel familiar with country specific trademark law
. Assist Agent with preparing responses |
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