Becoming a trade mark attorney
Trade mark attorneys advise clients on a wide range of trade mark-related issues, it is vital therefore 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.
Trade mark attorneys play a central role in the selection of new trade marks and are responsible for advising on and achieving appropriate registrations for their clients.
The task of the attorney is by no means completed once 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.
Advising on infringement is another important role, whether it is the client who is accused of infringing another's rights, or the client's rights which are being infringed. 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 always a last resort.
As a trade mark attorney you must be able to communicate effectively, both on paper and in person, with your clients and their other advisors, such as solicitors, barristers and advertising agents, as well as others acting for third parties, registry officials and foreign associates.
Where to begin
Most people begin their career by joining a firm of trade mark attorneys, or a firm of patent agents with a department specialising in trade mark work. Trade mark attorneys are also employed by large companies which have enough trade mark interests to need an in-house department to deal with their own matters. Whichever is chosen, positions of responsibility as well as intellectual satisfaction, with remuneration at least equal to that of other leading professions, are open to the qualified attorney.
Under the current education system, the education and training of students to become qualified trade mark attorneys will be carried out via two training courses, plus a practice period. Information on the education system can be found here.
The Register of Trade Mark Attorneys and the Institute of Trade Mark Attorneys
Qualified trade mark attorneys are regulated and are listed on the Register of Trade Mark Attorneys. Entry on the register grants certain rights of privilege to the attorney. Under the Legal Services Act 2007 ITMA became an Approved Regulator and has set up the Intellectual Property Regulation Board (IPReg) to undertake its regulatory responsibilities. Further information about IPReg can be found here.
The Institute has many classes of membership applicable to individual circumstances: ordinary membership of ITMA is open to anyone on the Register of Trade Mark Attorneys or, if they have advanced the interests of the Institute they can be elected to become a fellow member. There are also membership categories for those with a working interest in the field, but who do not practice as trade mark attorneys (associate members); those who practice outside of the united kingdom (overseas members); those seeking to qualify (student members); those who are a UK barrister or solicitor engaged in practice as a trade mark attorney (allied members); and those who have passed the ITMA trade mark administrators course (administrator members). Information on joining ITMA is available here.
The Institute attempts to assist both employers and prospective entrants to the profession on the question of job vacancies where it can, but there is no central placement agency.
The Institute is always ready to provide information relating to careers in trade marks. For further enquiries, please email Gillian Rogers.