Working in intellectual property is not just restricted to being a patent attorney. Here, Katie Goulding, Senior Trade Mark Attorney with IP specialist firm HGF Limited, details what her work with trade marks typically involves and the route into the sector, to help anyone interested in this alternative area of IP decide if this right for them…

You will never look at a KitKat the same again. No one will want to join you on the supermarket shop. If you want to become a trade mark attorney, you must be prepared for the increased number of eye rolls you are likely to face from friends and family. Why? Because the centre of your universe as a trade mark attorney is brands. And there is no escaping them.

So, what do we do?

As a trade mark attorney, you will be working with businesses and individuals to protect their brands; be it a brand name such as Apple®, a colour such as Cadbury’s purple, the look of packaging, the shape of a four-fingered chocolate biscuit, or something else that identifies a product or service with a company. Patents protect the invention, we protect the label and aesthetics. We:

  • give strategic advice about what businesses should protect, why and where and how they should protect it
  • advise on the risks and potential consequences of being sued by an earlier brand owner and devise ways of mitigating risk
  • enforce client rights against others in oppositions to trade mark applications, in cease and desist letters, in court, through trading standards and customs, and via domain name complaints
  • manage trade mark and design portfolios and help brand owners maximise the value in their IP

Trade mark attorneys are specialists in intellectual property law which provides the framework and foundations for the job but in many ways, we are also commercial experts, creatives, teachers and marketers. The career of an attorney is lively and varied.

 What will your day look like?

A typical day might look like this:

  • analysing a wad of trade mark registration details and preparing an opinion for a client on whether they are clear to use their new brand name in the market or whether it could land them in court
  • drafting a trade mark application
  • preparing written arguments in proceedings with third parties, for example when another business is trying to stop your client securing rights in its new brand
  • liaising with attorneys overseas for advice on local law and practice
  • making oral submissions to the UK Intellectual Property Office to persuade them that they should accept a client’s trade mark application that they have refused
  • looking at a new boot design and advising how best to protect it
  • negotiating settlements and co-existence agreements to allow your client to continue to use its brand
  • advising on how a brand can and should/shouldn’t be used on social media and in advertising

Beyond the typical, the role is what you make it. Many attorneys, myself included, also provide training to in-house legal and creative teams on new legal developments and practice, write articles for IP and industry-specific publications, present at events.

What type of person are you likely to be?

  • Organised. This is a job driven by deadlines. At times, it can be highly pressured. The rewards and job satisfaction make it worthwhile but if you fall apart under pressure, you might not enjoy the job as much as you should
  • Excellent communicator – written and aural. Clients want commercial advice and recommendation based on the law, they do not want a complex legal treatise. Attorneys need the skill to persuade and argue with conviction
  • A global mindset. We correspond with attorneys overseas every day. If you want the prospect of travel and speaking with others from around the world, the attorney career is a great one
  • You don’t mind reading – IP law and practice is in constant flux, as are marketing methods and trends. You should expect to read a lot – cases, IP articles, industry-focused news

Becoming a trade mark attorney

Many attorneys have a law background; some firms have a preference for law graduates. Don’t be put off if you’re not one. The backgrounds of my colleagues are varied – some have language degrees, others business degrees, some in literature or science. You will however be required to develop a strong understanding of law and practice and relatively quickly.

The route will typically look like this:

  • Apply to a firm of attorneys for a trainee trade mark attorney position. Many IP firms advertise positions on the job board of the Chartered Institute of Trade Mark Attorneys, as well as IP Careers’ for the latest graduate roles. Otherwise, there are specialist IP recruiters that can be found online. In the vast majority of cases, the firm will cover course fees for qualification and allow paid leave for days out of the office for the same. Training is ‘on the job’.
  • Part time post-graduate course at Queen Mary University of London – includes law foundation modules for non-law graduates. Some do the PGCert alternative at Bournemouth University. Written exams.
  • Part time practice course at Nottingham Law School. Aural and written exams.

Be prepared to sacrifice some weekends over a 2 year stretch.

This is a career with excellent progression prospects if you want it whether you have ambitions to be a Director or Partner. Again, it is what you make it. Those wanting to become a Director or Partner should however take enjoyment from business development activities and networking and be prepared for responsibilities above the usual day to day workload. Market rate for starting salaries varies by firm but is around the £25k mark with significant increases at each stage of qualification and often exceeding £70k from senior attorney level onwards. Salary surveys reveal little difference between London and Regional market rates.

For more detail including a nifty qualification flow chart, see: https://www.citma.org.uk/careers/how

About the Author

  • Organisation: HGF
  • About Katie Goulding: Katie Goulding is a Senior Trade Mark Attorney, who joined the profession in 2012 after completing a degree in Law with German Law Honours degree at the University of Birmingham and the BPTC at Nottingham Law School. Her practice encompasses all aspects of trade mark law and designs from advising on domestic and international filing strategies, clearing, filing and prosecuting UK, European and International trade marks and advising on infringement and passing off, and she has written a range of articles for industry publications.

Katie Goulding

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