Trade mark attorneys are legal specialists, qualified to advise clients regarding their trade mark rights. This includes providing legal advice about the use, registration and exploitation of trade marks, the integrity of brands and other aspects of IP (intellectual property).

If you decide to become a trade mark attorney, you’ll be providing legal support surrounding the registration, use and exploitation of trade marks (both new and existing). You will be expected to ensure that companies and individuals are successful in protecting the integrity of their brand(s), and you may also advise clients about other IP (intellectual property) issues, such as registered designs, licensing and copyright.

What are the responsibilities of a trade mark attorney?

Responsibilities are wide-reaching and varied, but will include:

  • Searching and clearance matters for proposed trade marks
  • Advising clients on trade mark and branding related issues, as well as other IP rights such as designs and copyright
  • Overseeing trade mark filings
  • Communicating with trade mark registration authorities in the UK, Europe and overseas to ensure that clients’ rights are adequately protected
  • Liaising with third parties regarding the infringement of clients’ rights, and taking action where necessary
  • Dispute negotiation and settlement
  • Contract matters including transfers of ownership.

What to expect as a trainee trade mark attorney

You will have extensive contact with clients, the trade mark registry officials, European and international authorities and colleagues via email and on the phone. As the work is deadline based, it can be challenging to juggle all of the demands and fulfil client obligations.

What qualifications do you need?

Most firms require graduates for trainee roles, and incorporate time off to study for qualification. Trainees tend to work under the supervision of at least one qualified trade mark attorney to learn on the job.

To become accepted onto a traineeship, you’ll preferably need a degree with a classification of 2:1 or above. Employers often like to see a law degree when looking for graduates, and if you have one you can be exempt from some of the qualification exams. However, it’s not compulsory to have a law degree and employers look favourably on those who have studied the arts, business and languages.

How to qualify as a registered trade mark attorney

You will need to complete at least two years’ work as a trainee, while supervised by a qualified trade mark attorney. You will have to register with CITMA (Chartered Institute of Trade Mark Attorneys) and pass these professional exams while working:

  • Either the Postgraduate Certificate Trade Marks Law and Practice at Queen Mary University of London, or the Postgraduate Certificate Intellectual Property at Bournemouth University.
  • After passing one of these courses, you will need the Professional Certificate in Trade Mark Practice, administered by Nottingham Law School.

When you’ve completed both courses, you can be entered on the Register of Trade Mark Attorneys.

Skills needed to be a trade mark attorney

You must have:

  • Excellent written and verbal communication skills.
  • The ability to work as part of a team.
  • Impeccable attention to detail.
  • Cultural and commercial understanding.
  • Self-motivation to manage working and training at the same time.
  • Impressive time management skills.
  • An interest in marketing and branding issues.

It’s a competitive area of law, and the demand for trainee jobs is high.

If you feel that a career as a trade mark attorney is for you, Dawn Ellmore Employment work on trainee trade mark attorney roles and can help you find your place in IP. Please contact Luke Rehbein to discuss further: