A trademark attorney (alternatively spelled trade mark attorney) is a person who is qualified to act in matters involving trademark law and practice and provide legal advice on trade mark and design matters.
In many countries, most notably the United Kingdom, trade mark attorneys are a separate recognized legal profession, along with solicitors and barristers, and are recognized as lawyers under the Legal Services Act 2007.[1] In other jurisdictions, such as the United States, the profession is less clearly defined, with trademark attorneys being part of the general legal profession. In other words, they are attorneys at law who specialize in trade mark matters. In many countries, trademark attorneys have rights of audience before IP courts.[2] and benefit from client/attorney privilege.[3] Unless they are also members of the general legal profession such as in the United States, their right to appear in Court is usually limited to trademark matters.
A trade mark attorney frequently begins his or her career by joining a firm of trade mark attorneys, or a firm of patent attorneys with a department specializing in trade mark work, however increasingly large multi-discipline law firms are establishing trade mark attorney practices. 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.[4]
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 and Trade Marks Act 1994 in the UK for instance).[5]
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).[6] This might stem from certain policy considerations that view an attorney as capable of practicing law in any field based on its legal education and minimum level of competence shown by passing the State Bar exam.
In the United States, any attorney who is licensed to practice law in any state can represent individuals and companies in the United States Trademark Office. Many Trademark Attorneys have undergraduate degrees in a variety of fields such as business administration, marketing, liberal arts rather than in the science or engineering field which a Patent Attorney must have in order to practice in the United States Patent Office. Furthermore, a Patent Attorney must pass a special exam in order to represent individuals and companies in the Patent office while a Trademark Attorney does not.
In addition, the examiners who review all trademark applications filed with the Trademark Office are also licensed attorneys and their official title is Trademark Examining Attorney. They also do a trademark search of the federal trademark records to determine if the trademark applied for is confusingly similar to a registered or a prior pending application. So when one files a trademark application they will be dealing with an attorney not an office clerk. For that reason alone, it is wise for one to have a Trademark Attorney representing them in the prosecution of a trademark application.[7]
In India a registred trademark agent or attorney can file and appear before the Trademark Examiner.[8]