Trade mark attorney : Job description

Trade mark attorneys are specialist legal professionals qualified to advise clients about protecting and enforcing their trade mark rights. Trade marks are used to identify a person's or company's products or services and may take many forms, including logos, shapes and company names.

Trade marks are used by a huge range of companies, from multinational corporations to small local businesses. By providing legal support on the registration, use and exploitation of new and existing trade marks, trade mark attorneys ensure that companies successfully protect the identity and integrity of their brands.

Trade mark attorneys also advise clients about other intellectual property issues, such as copyright and licensing.

Typical work activities

Tasks typically involve:

• researching new trade marks;
• carrying out searches to see if the proposed trade mark is already in use;
• advising on trade mark availability for use or registration;
• advising on design and copyright issues;
• overseeing all procedural details of trade mark registration;
• managing, protecting and enforcing intellectual property rights, including trade marks, patents, copyrights, designs, and the 'get-up' of a product i.e. its look or image;
• negotiating in disputes regarding trade marks;
• taking action on trade mark infringement and passing off;
• drawing up appropriate contractual papers;
• providing back-up to the solicitors and barristers conducting a case if it comes to litigation;
• advising clients on the use and protection of trade marks and the classes of goods or services they need to cover with their registration;
• assisting clients with identifying the nature of their intellectual property;
• advising on the legal aspects of marketing new goods or services and their introduction into the market place;
• composing complex letters to clients, the trade mark registry and other parties;
• monitoring existing and proposed trade marks;
• attending meetings and undertaking conference calls with clients and other contacts in the UK and overseas;
• dealing with general enquiries on trade mark protection;
• managing a portfolio of brands in the UK and overseas;
• advising clients about countries in which to seek registration;
• filing applications on an international basis as well as in the UK;
• developing working relationships with the relevant brand managers and customers of departments;
• handling renewals (in the UK this is every ten years, but it varies in different jurisdictions).

At firm partnership level, the work may also involve management and marketing activities.