A trade mark attorney is a lawyer trained specifically to advise and work on trade mark law. They act as agents for clients in the process of applying for and being granted a trade mark registration.
Acting on behalf of their clients when applying to the UK Intellectual Property Office (IPO), trade mark attorneys also advise on a wide range of issues relating to trade marks.
Obtaining trade mark protection
Often working with associates across the world in order to obtain trade marks in other jurisdictions, trade mark attorneys work on their clients’ behalf to achieve their specific goals. Assisting clients in selecting new trade marks, they also ensure that the trade mark chosen is available and capable of being registered.
Once the client has decided on a trade mark, the trade mark attorney is responsible for representing that client as they go through the process of registration.
Sometimes trade mark attorneys are in charge of large portfolios for multi-national clients, which can include thousands of pending registrations and applications. They will also audit the trade marks and advise on protection, handle licenses and assignment agreements.
Managing conflicts
This is a large part of a trade mark attorney’s role. They often represent their clients in proceedings to prevent others from infringing on their trade mark rights, or may be representing someone who has been accused of infringing a trade mark.
Litigation is viewed as a last resort, so trade mark attorneys work hard on finding commercial resolutions to any disputes. Representing clients in negotiations to settle is often the goal, and a trade mark attorney must look for practical resolutions to conflicts.
How do you become a trade mark attorney?
Regulated by the Intellectual Property Regulation Board (IPReg), trade mark attorneys are also listed on the public Register of Trade Mark Attorneys.
To become qualified and be entered onto the Register, a trainee must pass qualifying exams and demonstrate relevant work experience in the sector. Usually, a trade mark attorney will have a legal background, but this is not necessary as any undergraduate degree can be accepted.
Qualifying examinations
There are two courses to complete in order to qualify as a trade mark attorney:
- The first course, which can either be taken at Queen Mary University of London or at Bournemouth University, gives a good understanding of UK, European and International trade mark law.
- The second course, offered by Nottingham Law School, is a skills based course focusing on the development of the knowledge base and professional skills needed to successfully practice as a trade mark attorney.
A minimum of two years’ experience in full-time trade mark attorney practice is required before one can qualify. This must be under the supervision of a registered solicitor or trade mark attorney the process takes approximately three to four years.
What kind of work is it?
A typical day will be extremely varied, and is dictated by approaching deadlines. Clients might be individual entrepreneurs or multi-national businesses with in-house legal departments, or anything in between.
Liaising with clients to create a bespoke strategy for trade mark protection is common, and trade mark attorneys must fully understand the objectives of their client, as well as the nature of their business.
Part of the role can include working with clients to select new brand names and carrying out searches to ensure it hasn’t already been registered by someone else. There are also legalities to explain to clients, for example, a trade mark can’t be descriptive or generic.
Career prospects
There are around 700 registered trade mark attorneys in the UK, and approximately one third of these are also registered as patent attorneys. Most are working in private practice, either in general solicitor firms or specialist trade mark and patent attorney firms.
After gaining experience, a trade mark attorney can expect to move up into senior management positions and eventually reach partnership.
Lots of multi-national companies have their own in-house legal departments that employ trade mark attorneys – known as ‘working in industry’. It’s possible to move between industry and private practice as your career develops.
Trade mark attorney trainees can expect to find varied and challenging work in a sector of law that is constantly changing.
About Dawn Ellmore Employment
Dawn Ellmore Employment was incorporated in 1995 and is a market leader in intellectual property and legal recruitment.
