Working in IP goes further than simply being a patent attorney. We spoke to a selection of Trade Mark Attorneys and asked them to explain what their role typically involves, as well as the skills, background and qualifications required for this niche area of work.

Do you have a keen analytical mind, excellent communication skills and a way of looking at language from different angles to others? Then a role as a trade mark attorney could be suited to you. Working in IP goes beyond patents, so we asked a variety of experienced Trade Mark Attorneys to offer an insight into what their role typically involves, the necessary skills and qualifications and any advice they may have for anyone considering this IP career sector.

What is a trade mark?

A key part of working as a Trade Mark Attorney is an understanding of what you will be working with and why the work they carry out is important. Your first question should be, “what is a trade mark”? The answer? A form of intellectual property used by businesses to help consumers identify their brand and to distinguish themselves from others. Harry Rowe, Associate and UK and Chartered Trade Mark Attorney at Mathys and Squire, explains: “a trade mark can take a number of forms, including words, logos or more unconventional indicators…such as smells, sounds or even multimedia marks”. Essentially, anything a brand can use to identify and differentiate itself can be used as a trade mark, so your future role will be incredibly varied.

What does a Trade Mark Attorney do?

The primary focus of a Trade Mark Attorney’s role is to protect brands for individuals and businesses. Katie Goulding, an attorney with HGF, says: “patents protect the invention, we protect the label and aesthetics”. This means providing strategic advice about what a business or individual should protect, why, where and how they should do this and ensuring their rights are protected against others, as well as ensuring that any risks of being sued by any previous brand owners are minimised and avoided.

A ‘typical’ day working with trade marks may see you:

  • Researching whether clients can use proposed new brand names or not.
  • Drafting and managing applications to register trade marks both in the UK, and EU, and further afield.
  • Preparing and working on court cases against third parties to secure and protect clients’ trade mark rights.
  • Seeking advice from attorneys overseas on local laws and practices.
  • Liaising with the UK Intellectual Property Office on relevant issues.
  • Offering advice on how brands can, should or should not be used on social media and in advertising.

Working as a Trade Mark Attorney will see you advising companies of all sizes, from startups to established brands, and across a wide range of sectors, so it is varied and lively. There are also plenty of opportunities to move the role beyond the ‘typical’, such as assisting in training in-house creative and legal teams on new practice and developments.

Key skills and qualifications:

Unlike working as a patent attorney, it is not necessary to have an undergraduate or postgraduate degree in a STEM subject to become a trade mark attorney. Similarly, you do not need to have a law degree. Melanie Stevenson, a Chartered and European Trade Mark Attorney with Carpmaels & Ransford, studied French and Spanish and feels the role appealed to her transferable skills as a linguist such the ability to be analytical and look at language differently to others. In fact, many trade mark attorneys have a background in modern languages or history, as well as a variety of other arts subjects, for this reason.

Alongside these key transferable academic skills, a trade mark attorney is also:

  • An excellent written & verbal communicator – you will need to draft complex legal and technical submissions, offer clients concise commercial advice based on complicated areas of the law and argue persuasively.
  • Highly organised – you will be driven by deadlines and working under pressure when receiving clients’ instructions.
  • Commercially & globally minded – an understanding of varied business practices and wider commercial and global influences is essential.
  • A keen reader – you will need to stay up to date on IP law and practice, as well as marketing trends, as both are constantly changing.

In terms of formal training and qualifications, it is necessary to complete two courses before qualifying as a trade mark attorney, as well as at least two years’ relevant work experience. The first requirement is a part-time law course (offered by Queen Mary University London or Bournemouth University), providing a general grounding in English law plus a more detailed training in the specific areas of UK and EU trade mark, copyright and design law. The second is a practice course with Nottingham Law School, concentrating on the skills necessary for day to day practice, including advocacy, basic litigation and client meetings. Read more about post-graduate IP courses here.

CITMA, the Chartered Institute of Trade Mark Attorneys, offer full details of the routes into qualifications on their website, together with a prospective time-frame for training.

So…why work as a trade mark attorney?

Rachel Conroy, a Partner and Trade Mark Attorney with Boult Wade Tennant, offers the perfect summary: “if you are looking for an interesting, commercially-focused career, then the role of a Trade Mark Attorney could be for you”. For those hoping to test and challenge their analytical, linguistic and persuasive skills whilst working with a wide variety of clients from all areas of business and commerce, working as a Trade Mark Attorney could be the ideal IP career decision and solution.

A collaborative article, thanks to contributions from Claire Birro & Dr Alicia Inastone (Cleveland Scott York), Rachel Conroy (Boult Wade Tennant), Louise Foster (AA Thornton), Katie Goulding (HGF), Jennifer Heath (D Young & Co.), Harry Rowe (Mathys & Squire) and Melanie Stevenson (Carpmaels & Ransford).

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