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. Read on to learn more about this niche career.
Working in intellectual property goes beyond patents and the work of a patent attorney. We asked a selection of experienced trade mark attorneys to offer an insight into what their role typically involves, the necessary skills and qualifications required to succeed, plus advice they have for aspiring trade mark attorneys.
What is a trade mark?
An essential part of working as a trade mark attorney is an understanding of what you will be working with and why this work is valuable to brands, business and individuals. Therefore, your first question should be, “what is a trade mark”? The answer is a form of intellectual property used by businesses to help make their brand easily identifiable to consumers as well as distinguishing themselves from third parties. Harry Rowe, an Associate and Chartered Trade Mark Attorney with 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”. In short, anything a brand can use to identify and differentiate their goods or services can be used as a trade mark. Most businesses will use some sort of trade mark, so anyone entering the sector can expect a varied role and workload.
What does a trade mark attorney do?
The primary focus of a trade mark attorney’s role is to protect brands. Katie Goulding, Trade Mark Attorney with HGF Limited, told us: “patents protect the invention, we protect the label and aesthetics”. This sees them providing strategic advice about what a business or individual should protect, as well as detailing why, where and how they should do this. Goulding also goes on to explain that trade mark attorneys are responsible for ensuring that a business’ rights are protected against others in the face of potential trade mark applications or disputes, as well as advising on how best to minimise and avoid any potential risk of being sued by a previous brand owner.
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.
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.
What is important is that you possess a keenly analytical approach to your work and the ability to look at and work with language in an innovative way that others may not. In fact, many trade mark attorneys have an academic background in modern languages or history for this very reason.
Alongside having strong language and analytical skills, a typical 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.
Training and qualifications:
With regards to formal training and qualifications, as well as possessing a minimum of a 2:1 degree, it is also necessary to complete two courses before qualifying, 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.
The Chartered Institute of Trade Mark Attorneys (CITMA), offer full details of the routes into qualifications on their website, alongside the prospective time-frame potential trade mark attorneys might be able to expect for this.
So…why work as a trade mark attorney?
Rachel Conroy, a Partner and Trade Mark Attorney with Boult Wade Tennant LLP, told us: “if you are looking for an interesting, commercially-focused career, then the role of a trade mark attorney could be for you”. For anyone hoping to test and challenge their analytical, linguistic and persuasive skills whilst also working with a wide variety of clients from all areas of business and commerce, working as a trade mark attorney could be the ideal career option.
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