Trade mark attorney

Trade mark attorneys are specialist legal professionals who advise clients about protecting and enforcing their trade mark rights

As a trade mark attorney, you'll ensure that companies successfully protect the identity and integrity of their brands by providing legal support on the registration, use and exploitation of new and existing trade marks.

You will often manage a large portfolio of trade marks and may also advise clients about related intellectual property issues, such as:

• copyright
• domain names
• geographical indications
• licencing
• registered designs
• trade secrets.

Trade marks are used to identify a person's or company's products or services and may take many forms, including logos, shapes, company names, sounds and even smells. They are used by a range of companies, from multinational corporations to small local businesses.

Responsibilities

As a trade mark attorney, you'll need to:

• manage, protect and enforce portfolios of intellectual property (IP) rights, including trade marks, copyright and designs
• advise on the legal aspects of marketing new goods or services and their introduction into the market place, as well as developing brand enlargement
• research new trade marks and advise on availability by carrying out national and international searches to see if the proposed trade mark is already in use
• oversee all procedural details of trade mark and design registrations in the UK and internationally
• monitor deadlines and make sure they are met in good time
• manage any opposition to trade mark registration and advise on conflicting applications
• negotiate in trade mark disputes and take action on trade mark infringement and passing off
• draw up appropriate contractual papers
• monitor existing and proposed trade marks
• advise clients about countries in which to seek registration and the most cost-effective way of achieving this
• develop working relationships with relevant brand managers and customers of departments
• handle renewals of trade mark and design registrations
• handle other trade mark related work such as transfer of ownership, licensing agreements and increasing the scope of protection
• manage marketing activities - this may be part of your responsibilities if you work at partnership level
• (with experience and further qualifications) exercise IP litigation and IP advocacy rights in court
• supervise the work of junior team members.

Salary

• As a trainee trade mark attorney, you can expect to earn between £27,500 and £35,000. This rises to between £34,000 and £51,000 for part-qualified trade mark attorneys.
• Newly qualified trade mark attorneys can earn in the region of £54,000 to £68,500, rising to between £63,000 and £87,500 as you gain experience.
• After five years, the average salary is £84,000+, with the potential to rise beyond £96,500 at partner, director or head of trade mark levels.

Salary levels vary greatly depending on a range of factors such as your location, the type and size of your employer, and whether you are in private practice. Other factors affecting salary include your experience, skills and level of responsibility.

Additional benefits may include performance related bonuses, company car scheme, pension scheme, and life and health insurance.

Income data from Dawn Ellmore Employment Salary Survey. Figures are intended as a guide only.

Working hours

The work is generally office-based and you'll usually work normal office hours, which may include regular extra hours but not weekends or shifts.

Self-employment and freelance work are sometimes possible. There are opportunities for self-employment in private practice after qualification.

What to expect

• It is a small profession - there are around 1,000 trade mark attorneys in the UK (Careers in Ideas) - so competition for jobs can be strong.
• You will have a lot of contact with colleagues, clients, trade marks registry officials and with European and international authorities.
• Jobs for qualified trade mark attorneys are available in cities across the UK.
• Meeting deadlines can sometimes be challenging, if you're given short notice, and you'll need to be organised and able to prioritise your workload.
• Trade mark attorneys working in the corporate sector are based at one office or location but may need to travel periodically to other locations in the UK or overseas. Overnight absence from home is generally uncommon, but there are opportunities for overseas work and travel.

Qualifications

In order to qualify as a trade mark attorney, you'll need to complete a minimum of two years' on-the-job training in trade mark legal practice, study part time for two postgraduate qualifications and also register with the Chartered Institute of Trade Mark Attorneys (CITMA).

You'll usually need a degree (at least a 2:1) to be accepted on to the qualification process. Employers look favourably on a law degree, and this can exempt you from a small number of the trade mark attorney qualification exams. However, it's not compulsory - degrees in English, modern languages, business and humanities are also welcomed.

Many firms of chartered trade mark attorneys, law firms with intellectual property (IP) departments and large companies with an in-house legal/IP department take on graduates as trainees and will usually pay for your studies.

It may also be possible to train as a trade mark attorney if you have substantial relevant work experience as, for example, a paralegal or trade mark administrator or secretary.

In your first year of training, you'll need to pass one of the following part-time qualifications while working:

• Postgraduate Certificate Intellectual Property - Bournemouth University
• Intellectual Property Law Postgraduate Certificate - Brunel University London
• Intellectual Property Law (PGCert) - Queen Mary University of London
• Trade Mark Law and Practice (PGCert) - Queen Mary University of London.

In your second year, you will study part time for the Trade Mark Practice Professional Certificate, run by Nottingham Law School.

Check with individual course providers for details of entry requirements.

As a trainee you'll generally work under the direct supervision of one or more qualified trade mark attorneys, who will act as your mentors, in order to gain the necessary experience to qualify. You will typically start by shadowing them and then take on more responsibility as your skills and knowledge develop.

If you're a qualified solicitor or barrister you may be exempt from some of the modules of the law and practice stages, depending on how much intellectual property experience you have.

On successful completion of the training, you're eligible for entry on to the Register of Trade Mark Attorneys. Once you're on the Register, you can apply for ordinary membership of CITMA and become chartered.

For more information, see Careers in Ideas.

Skills

You'll need to have:

• written and oral communication skills to work with your clients and their advisers, e.g. solicitors, barristers or advertising agents
• problem-solving and analytical skills
• organisation skills, attention to detail and a methodical approach to work
• excellent judgement
• the ability to work effectively both independently and as part of a team
• an entrepreneurial and commercial approach to work
• self-motivation, as training examinations are demanding and balancing work, life and study can be challenging
• the ability to work well under pressure
• excellent time-management skills to keep to strict deadlines
• an interest in branding and marketing issues
• a positive and proactive attitude and a willingness to take on board feedback.

Work experience

As this is a relatively small profession, and even large firms often recruit no more than two graduates each year, competition for jobs is keen. Try to get some work experience in a law firm and get involved in law or marketing-related societies at your university. This will help show employers your interest in the sector and in branding issues.

Working as a trade mark administrator or paralegal can also be a good route into becoming a trade mark attorney and provides valuable relevant experience.

Find out more about the different kinds of work experience and internships that are available.

Employers

You'll typically work for a law firm that specialises in intellectual property (IP) in their trade mark department. Your clients could be brand owners (either individuals or companies) or other solicitors who are acting on behalf of them.

As well as general trade mark work for a range of companies, some firms specialise in supporting clients in particular sectors. These include:

• fashion
• food and drink
• retail
• pharmaceuticals
• technology.

Some large companies with specialist in-house IP departments employ trade mark attorneys deal with their trade mark affairs. Companies that employ trade mark attorneys in-house include:

• major manufacturing companies of products such as cars and food
• national or multinational companies with a high-profile portfolio of product brands.

Look for job vacancies at:

• CITMA Jobs board
• IP Careers
• ALM Law.com
• Totally Legal

Specialist legal recruitment agencies also handle vacancies. These include:

• Dawn Ellmore Employment
• Fellows and Associates
• G2 Legal
• The Law Support Group
• SaccoMann

Professional development

Once qualified as a trade mark attorney, you'll need to contact the Intellectual Property Regulation Board (IPReg) to join the Register of Trade Mark Attorneys. Once you're on the register you can apply for ordinary membership of CITMA, which makes you eligible for chartership and also gives you access to a network of support, news and events.

You'll need to complete at least 16 hours of qualifying continuing professional development (CPD) a year in order to remain on the register. This can include attending, or speaking at, training, events and conferences run by organisations such as CITMA. You should also read the specialist press to keep up to date with changes in trade mark law. For more information, see CITMA Events.

Post-qualification, professional development courses are available at Nottingham Law School. The IP Litigation and IP Advocacy Certificates, for example, are aimed at trade mark attorneys with at least two years' post-qualification experience in intellectual property practice. On successful completion of these two certificates, you can obtain The Higher Courts Litigation Certificate, issued by IPReg, which allows you to litigate IP matters in the civil courts of England and Wales.

Career prospects

The job titles in an organisation's hierarchy vary between firms, but there are essentially only three grades in the profession: trainee, part-qualified and qualified. However, with experience and training there is a lot of scope for career progression.

Movement between private practice and industry is common, and experience of both is welcomed. Private practices tend to be firms that sell their experience to clients. In corporate practice or industry, you'll be employed by an organisation that generates a substantial amount of trade mark work. With the right combination of skills and experience you could become head or director of trade marks.

The ultimate achievement is probably to become a partner in a firm, if not the owner. For this route, you need to be interested and skilled in running a business and related activities, such as managing staff and marketing.

The increasingly complex nature of UK and international marketplaces, and growing competition in many commercial sectors, means that career prospects are good for trade mark attorneys with the right combination of skills and experience.