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The Trademark Attorney





Trademark law, or the protection of brand names, logos, designs and trade dress of goods and services in every industry, is one of the most popular and growing practice areas in the field of intellectual property law. Trademark Attorneys regularly see the brands they work with – often marks they personally have helped to evaluate and protect – in stores, catalogs, billboards, TV commercials, magazines and, of course, on the Internet.

There are a variety of opportunities for Trademark Attorneys at private law firms, in-house corporate law departments, government offices, and educational institutions. The work is fast-paced, detail-oriented, interesting, challenging and ultimately quite rewarding.


The Trademark Attorney in a Corporation

Over the years, the practice of trademark law has changed as many corporations have discovered that much of a company’s value may be associated primarily with its name and core marks. Some companies have hired one or more in-house trademark attorneys or have created their own in-house trademark departments to help preserve or enhance this value and to address domestic and international trademark development, use, registration and protection issues. Although some companies entrust their portfolios to a paralegal or trademark administrator who is not an attorney, an increasing number of mid-sized and large companies with significant trademark portfolios are hiring trademark attorneys, often from law firms, to assist them directly as employees of the company. The company trademark attorney usually handles many of the same day-to-day activities as an IP attorney in a law firm, but usually stops short of conducting litigation, which generally can be handled more cost-effectively by hiring outside counsel.

Unless the corporation is large, the in-house attorney may be the only attorney in the company with trademark, or any intellectual property, expertise. The trademark attorney often reports to the general counsel and manages the domestic and international trademark portfolios of the corporation and its business units, divisions and subsidiaries, as well as handling IP licensing, IP budgeting, IP due-diligence reviews for business transactions and management of outside IP counsel. The in-house trademark attorney also may handle IP enforcement, including reviewing potentially infringing uses of the company’s marks and sending cease and desist letters, conducting pre-litigation settlement negotiations, and helping to prepare pleadings or conduct discovery for litigation in federal court or in the trademark office, but will seldom appear as litigation counsel in the courts.

Trademark practice in a corporation requires close cooperation between the corporate legal team and the marketing, advertising, communications and product line management departments of the company. The in-house trademark attorney generally is responsible not only for filing and prosecuting trademarks, but also for reviewing advertising and promotional materials, manuals or instructional sheets, internal and external communications (such as newsletters, press releases and annual reports), sales and packaging materials, company and product websites, and technical specifications for the proper use of trademarks. He or she often is asked to participate in the process of creating, identifying and selecting new marks, to conduct training sessions for company employees on the proper use of the company’s and third parties’ trademarks, and to create and maintain a brand identity manual for the company. He or she often oversees any licensing programs involving the company’s marks and any watching programs involving infringing or diluting use of the company’s marks by the company’s competitors and other third parties. The in-house trademark attorney is a vital part of the business team responsible for protecting the valuable trademarks of the company and for developing and implementing strategies to enhance and leverage the brand identity of the corporation.

Because the trademark attorney works closely with company employees in clearing marks, developing brands and advertising, marketing and sales of products and services, he or she has the advantage of knowing (or being able to identify quickly) the personnel who can provide information and evidence pertinent to the creation, development and history of use of a mark when disputes arise. He or she often is the primary liaison with outside trademark counsel, if applicable, for day-to-day portfolio management issues and outside litigation counsel when a brand is threatened, when a competitor steps over the line or when counterfeit products begin flooding the market

The Trademark Attorney in a Law Firm

Any trademark attorney who works at a law firm will tell you that his or her practice is a professional juggling act. The law firm trademark attorney typically spends his or her day communicating with dozens of clients and counsel, many of them halfway around the world, on matters as diverse as clearing a client’s premiere trademark for a new product or in a new jurisdiction, to drafting a litigation brief in support of another client’s premiere trademark under attack by an unscrupulous infringer. The law firm trademark attorney’s day is guaranteed to be fast-paced and busy with matters large and small.

A typical day for a trademark lawyer in private practice may look something like this: The lawyer may receive a call first thing in the morning from a product manager at Client A asking for a blessing to use a prospective new mark on a food product that Client A wants to launch in five countries that day, not next week as originally planned. The lawyer already may have reviewed four of the five trademark searches that local counsel conducted, but still may be waiting for one last search. While waiting for the search to arrive, the attorney may be reviewing correspondence from a score of other local counsel who are assisting the attorney with trademark applications around the world for Clients B through Z, or for whom the attorney may be assisting with trademark applications in his or her home country for other counsel’s clients. As he or she responds to the correspondence (or delegates the assignments to associates and paralegals), the attorney may get a call from an in-house lawyer at Client B, asking for assistance with a just-reported trademark opposition proceeding, followed by a call from the general counsel at Client C, asking for assistance with a response to a cease-and-desist letter that demands that Client C cease using its newest, just-cleared mark. Meanwhile, the associate standing outside the lawyer’s door is waiting for review of his or her draft discovery responses in the infringement suit that the trademark attorney is handling for Client D. By the end of the same day, the lawyer may have:

  • helped secure an Internet domain name that involves Client E’s primary service mark,
  • prepared a package of materials to assist local customs authorities in stopping counterfeits of Client F’s products from entering the country,
  • reviewed materials for a new promotional program for Client G’s popular new product,
  • reviewed and responded to an Office Action against one of Client H’s marks,
  • provided strategic advice to Client I on registering a new mark in 30 foreign countries,
  • reviewed Client J’s portfolio of marks and sent reminders regarding renewals,
  • prepared a license agreement between Client K and a company that will make products under one of its marks,
  • recorded assignment documents transferring rights in purchased marks to Client L,
  • called an investigator for a report on the investigation of Client M’s competitor, who has adopted a highly similar mark,
  • talked with a software vendor about upgrading the docketing software,
  • prepared a budget for a worldwide trademark application filing program for Client N, who is soliciting budgets from competing law firms,
  • entered all of the time spent on the activities described above to generate an accurate bill for each client; and
  • written an article on a late-breaking development in trademark law for the INTA Bulletin.
  • Although it may be unlikely for an attorney to encounter all of these activities in a single day, it is quite common for an attorney to encounter many or most of them in the course of a typical week. Some law firm trademark attorneys may choose to focus on counseling and prosecution matters, and others may choose to focus on litigation, but many can and do provide counseling, prosecution, enforcement and litigation services to a wide range of clients offering a wide variety of products and services to the public.

The Trademark Attorney in Government

There are a variety of government career opportunities for trademark attorneys. Some positions are similar to their private sector counterparts; however, the primary opportunity is generally as a Trademark Examining Attorney at the national trademark office. The national governments of most countries maintain offices to examine and register trademarks and maintain the national trademark database, often in conjunction with other intellectual property, such as patents or copyrights. There are also a handful of multinational organizations, such as the World Intellectual Property Organization and the European Union’s Office for Harmonization in the Internal Market, that administer transnational trademark registration systems and offer similar opportunities.

The national trademark office is often an excellent entry point into a career as a trademark attorney, if an applicant can get one of these often highly competitive jobs. Each government sets its own requirements for attorneys wishing to become employees of these offices. The United States government requires, among other things, a license to practice law in at least one U.S. state and an interest (but not substantial experience) in trademark law. The national trademark offices almost all provide some degree of training, mentoring and continuing education in trademark law and registration practice. In the larger national offices, trademark attorneys hone their research, analysis and decision-making skills on dozens of procedural and substantive issues in hundreds of applications every month. There, a Trademark Examining Attorney will regularly:

  • conduct the first examination for any procedural and substantive issues on several new applications,
  • electronically search the national trademark database for potentially confusingly similar words or design marks,
  • conduct Internet-based research to evaluate the descriptiveness of a mark or certain terms within it,
  • research classification and identification of goods and services issues,
  • discuss procedural issues in telephone conversations with applicants or their attorneys,
  • draft Office Actions raising any substantive refusals or procedural requirements discovered in examination,
  • review Responses to Office Actions to determine whether the issues raised by the Examining Attorney have been resolved through amendment or argument, and
  • occasionally, research and draft an appeal brief defending a final refusal of a trademark application.

The government provides an excellent training ground in trademark law concepts and offers more autonomy earlier than most law firm attorneys have. In addition, an examining position, while demanding, generally offers a regular but flexible schedule, no weekend or holiday client emergencies and, consequently, more time for family and other interests. Still, many trademark attorneys leave government service after a few years and enter law firms to broaden their experience in trademark law beyond the application process and to increase their financial compensation.

Those who choose to remain in government service at the national trademark office may move up to supervisory and “senior examiner” positions, or may move to positions in the offices of the directors of the national trademark offices. Responsibilities in the director’s office may include formulating registration and examination policies, conducting training programs and evaluating petitions to the trademark office director. In addition, many national trademark offices have adjudicatory and appellate trademark boards that hear disputes related to trademark applications and registrations and appeals of examination decisions. There also may be litigation and appellate trademark attorney positions to represent the national trademark office before other courts. Further, a national trademark office may employ trademark attorneys to draft, negotiate and revise government legislation and multinational trademark laws and treaties.

Outside of the national trademark offices, there are often other government agencies that may employ trademark attorneys. For example, most countries have one or more regulatory agencies devoted to protecting consumers with regard to their purchase and use of branded products. Attorneys at regulatory agencies may handle criminal trademark infringement and counterfeiting cases. In addition, most countries maintain a customs or border patrol operation of some sort to ban prohibited goods from entering or leaving jurisdictional borders, and one or more police or investigative and enforcement agencies that work with the country’s judicial system to combat counterfeiting and criminal infringements. Other national agencies also may need trademark attorneys to function like in-house attorneys or to help execute trademark-related mandates.


The Trademark Attorney in Education

Another increasingly popular career path for trademark attorneys to explore is the field of education, teaching various trademark law subjects in colleges and universities. With increasing student demand for basic, as well as specialized and advanced, trademark law courses, more colleges and universities around the world are offering all types of courses and programs in intellectual property law. Not only are more educational institutions offering trademark courses, but also the size of the trademark faculties within those schools are becoming increasingly larger. And, as the number and size of trademark programs and faculties increase, there are more opportunities available for both full-time and adjunct trademark law professors. While many trademark professors have prior experience at intellectual property law firms, others enter the field through involvement in graduate programs and graduate fellowships, which can provide a transition into an academic career. In addition, with the growing importance of trademark law, more professors who previously taught patent or copyright law are moving into the trademark field.

A typical day in the life of a trademark law professor could involve the following activities:

  • researching and writing an article on a cutting edge area of dilution law for a law journal,
  • teaching a class on non-traditional trademarks,
  • consulting with students on independent writing projects,
  • participating in the preparation for an international conference for trademark law professors, or
  • advising a team of law students as they prepare for the INTA Saul Lefkowitz Moot Court Competition.

The danger of becoming cloistered, which may occur in other legal fields, is much less prevalent among trademark law professors because of their previous law firm experience and contact with other trademark law practitioners, and their own experience as consumers of branded products and services. Trademark law professors also enjoy a long tradition of interaction with trademark attorneys and their academic counterparts in other jurisdictions around the world at trademark law conferences and through academic exchange programs.

While courses are in session, a trademark professor typically spends five to six hours per week teaching in the classroom, which requires approximately 20 or more hours of preparation. The trademark professor also spends many hours a week engaged in counseling students on career paths and educational course choices in the field of intellectual property, another important reason why trademark attorneys in education must remain keenly aware of the demands and possibilities of trademark careers for attorneys in law firms, corporations or government offices.