About 700 Chartered Trade Mark Attorneys operate in the UK; one third are dual registered as Patent Attorneys.
Most are employed at trade mark and patent attorney firms or solicitor firms (known as "working in private practice").
Experienced Chartered Trade Mark Attorney can advance into senior management and eventually partner roles within firms.
Many multi-national corporations now employ in-house legal departments with legal teams consisting of Chartered Trade Mark Attorneys - this practice is known as working in industry - though individuals frequently make the transition between industry and private practice (and vice versa).
Many Chartered Trade Mark Attorneys practice as sole practitioners as well, giving them greater independence when conducting litigation before the Intellectual Property Enterprise Court, High Court, Court of Appeal or Supreme Court.
Trade mark attorney work is an intriguing, challenging profession within an ever-evolving area of law; CITMA (The Chartered Institute of Trade Mark Attorneys) hosts regular events for trade mark attorneys to network and develop their careers further.
No two days are alike and our work can often depend on impending deadlines for clients ranging from individual entrepreneurs to multi-national corporations with in-house legal departments.
At meetings with new clients to develop custom strategies for trade mark protection, Chartered Trade Mark Attorneys often must gain an in-depth knowledge of their businesses and commercial objectives before formulating any strategy to safeguard those marks. When creating specifications of goods or services to include, it's also vitally important that we consider future growth scenarios for that client's company.
Part of a Chartered Trade Mark Attorney's duties includes helping their client select new brand names and conducting clearance searches to make sure none have already been registered by third parties. Attorneys also advise clients on the registrability requirements imposed upon trade marks; for instance, generic terms cannot be trademarked as trade marks.
On a typical day, our attorneys might help clients overcome objections raised against their trade mark applications before official registries, while providing evidence and making submissions regarding contentious matters.
With global connectivity brought by the internet, global protection for clients has never been simpler - often through working with foreign associates to accomplish that aim.
CTMA graduates may find employment as graduate trainees with firms of Chartered Trade Mark Attorneys or law firms offering IP protection services or large businesses with their own IP protection or legal departments.
Consider attending careers fairs, graduate job websites and our jobs board as sources for opportunities in IP law firms with active practices. Firms also tend to promote from within: trade mark paralegals or support staff are frequently promoted into full trade mark attorney roles by companies.
Before calling yourself a trade mark attorney, certain qualifications must first be acquired. Like lawyers and solicitors, trade mark attorney is protected by law as an occupation title.
Firms will often cover trainee costs for them to take the formal qualifications needed to become CTMA. You need two postgraduate qualifications as well as at least two years' worth of on the job training experience to qualify as CTMA.
As a trade mark attorney, your primary role will be assisting companies in protecting the identity and integrity of their brands by offering legal support on registration, use and exploitation of new and existing trade marks.
Your work typically entails overseeing an expansive trade mark portfolio and providing advice regarding various intellectual property-related matters for clients - copyrighting domain names; licensing geographical indications or registered designs
Trade marks are used to distinguish an individual or organization's products or services and can take many forms - logos, shapes, company names, sounds or smells are often employed - used by various types of organizations from global conglomerates down to small local firms. A trade mark attorney must be capable of:
Maintain, enforce and expand intellectual property (IP) portfolios including trade marks, copyright and designs by providing legal advice regarding marketing new goods or services into the marketplace, brand enlargement strategies as well as brand expansion opportunities.
Research new trade marks and advise on availability by conducting national and international searches to see if your proposed mark is already being used, whilst overseeing all procedural details for trade mark registration in both the UK and internationally.
Monitor deadlines to ensure they are met on time
handle any oppositions to trade mark registration, advise on conflicting applications and negotiate trade mark disputes such as trade mark infringement/passing off issues before taking appropriate steps; draft contractual papers accordingly and monitor existing and proposed trademarks
Advice given regarding which countries and methods for registration would be cost-effective as well as developing working relationships between brand managers, departments, customers of departments as well as handling renewal of trade mark and design registrations
Handle other trade mark related work including transfer of ownership, licensing agreements and expanding protection scope; manage marketing activities (part of partnership level responsibilities);
Experienced IP litigators and advocates (with additional qualifications) should exercise IP litigation rights and IP advocacy before the courts while overseeing junior team members in court proceedings.
