Trademark attorney

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A trademark attorney or in the alternative spelling trade mark attorney, also known as a trademark lawyer if qualified as a lawyer, is a person who is qualified to act in matters involving trademark law and practice.

A trade mark attorney frequently begins his or her 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 attorney just to deal with their own matters.

The responsibilities of a trademark attorney include advising on the adoption and selection of new trademarks; filing and prosecuting applications to register trademarks; advising on the use and registration of trademarks; handling trademark oppositions, revocations, invalidations and assignments; carry out searches; and advising on trademark infringement matters.

Trademark attorneys are often regulated as a profession, in which case they must pass a series of examinations, comply with other requirements, and observe professional ethics and standards in order to maintain formal registration as such (under the Copyright, Designs and Patents Act 1988 in the UK for instance).

This is typically the position in Commonwealth jurisdictions such as Australia, New Zealand and the United Kingdom, where only qualified individuals may hold themselves out as being trademark attorneys. In such cases the qualification is known as an exclusive or protected title. The minimum educational requirements to enter the profession in such cases are GCSE A, B or C grade in five approved subjects, and GCE 'A' level in two approved subjects, or their equivalents. Candidates with certain degrees, such as law, may be eligible for exemption in some Foundation Papers of the qualifying examination (and it must be said, will usually find it easier to find a job as a trainee).

There is no exclusive title in other jurisdictions such as the United States, where no specialized examinations are required in order to qualify and practice as a trademark attorney. Instead, any lawyer who is licensed to practice in at least one state may prosecute trademark applications before the United States Patent and Trademark Office (USPTO). Trademark attorneys in the U.S. generally earn between $50,000 AND $60,000 USD, with some earning as much as $120,000 USD annually. ^[1]

The USPTO provides various trademark application forms on its website that are designed to be completed and submitted electronically. Although many of the forms appear to be relatively straightforward, it is important to be aware that many errors and omissions can not be rectified once the application is submitted, and the filing fee will not be refunded by the USPTO under any circumstances. Furthermore, most individuals will require an attorney’s assistance in responding to subsequent communications issued by the USPTO, and many will simply find it preferable to have an attorney monitor the progress of the application rather than worry about it themselves.