Trade Mark Attorneys advise clients on a wide range of trade mark related issues and therefore need to have a thorough grounding in trade mark law and practice. A working knowledge of related issues such as copyright, industrial designs, passing off, common law and unfair competition is also important.
An attorney’s job is by no means completed once trade mark registration is obtained. It is part of the job to advise on the correct way to use trade marks in advertising and product literature, as well as to maintain registrations in force by dealing with renewal procedures.
Trade Mark Attorneys also advise on portfolio management in the light of the client’s current needs, including expansion of protection, transfers of ownership, licenses, and other developments affecting the client’s trade marks.
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 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.
Potential conflicts are frequently resolved by means of letters of consent, co-existence agreements, undertakings as to future activities, and other compromise solutions. Trade Mark Attorneys are expected to provide constructive and commercially sensible advice and help in this area – litigation is a last resort.
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.
Many attorneys have a law background; some firms have a preference for law graduates. Don’t be put off if you’re not one. The backgrounds of my colleagues are varied – some have language degrees, others business degrees, some in literature or science. You will however be required to develop a strong understanding of law and practice and relatively quickly.
The route will typically look like this:
- Apply to a firm of attorneys for a trainee trade mark attorney position. Many IP firms advertise positions on the job board of the Chartered Institute of Trade Mark Attorneys, as well as IP Careers’ for the latest graduate roles. Otherwise, there are specialist IP recruiters that can be found online. In the vast majority of cases, the firm will cover course fees for qualification and allow paid leave for days out of the office for the same. Training is ‘on the job’.
- Part time post-graduate course at Queen Mary University of London – includes law foundation modules for non-law graduates. Some do the PGCert alternative at Bournemouth University. Written exams.
- Part time practice course at Nottingham Law School. Oral and written exams.
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.
For more detail including a nifty qualification flow chart, visit CITMA’s website.
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.
There are a number of alternative roles within the sector and often time spent in these roles can assist in your journey to become a Trade Mark Attorney or they can be a career in their own right.
Other roles include:
- Trade mark administrator
- Trade mark paralegal
- Trade mark assistant
- Trade mark investigator
- Trade mark searcher/watcher.
Find the latest graduate trade mark attorney roles with here.