Trademark attorney
Encyclopedia
A trademark 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. 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. and benefit from client/attorney privilege
. 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.
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).
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). 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.
In India a registred trademark agent or attorney can file and appear before the Trademark Examiner.
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
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. 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. and benefit from client/attorney privilege
Privilege
A privilege is a special entitlement to immunity granted by the state or another authority to a restricted group, either by birth or on a conditional basis. It can be revoked in certain circumstances. In modern democratic states, a privilege is conditional and granted only after birth...
. 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.
Trademark attorneys are often regulated as a profession
Profession
A profession is a vocation founded upon specialized educational training, the purpose of which is to supply disinterested counsel and service to others, for a direct and definite compensation, wholly apart from expectation of other business gain....
, 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
Copyright, Designs and Patents Act 1988
The Copyright, Designs and Patents Act 1988 , also known as the CDPA, is an Act of the Parliament of the United Kingdom which received Royal Assent on 15 November 1988. It reformulates almost completely the statutory basis of copyright law in the United Kingdom, which had, until then, been...
and Trade Marks Act 1994
Trade Marks Act 1994
The Trade Marks Act 1994 is the law governing trademarks within the United Kingdom and the Isle of Man. It implements EU Directive No. 89/104/EEC which forms the framework for the trade mark laws of all EU member states, and replaced an earlier law, the Trade Marks Act 1938...
in the UK for instance).
This is typically the position in Commonwealth
Commonwealth of Nations
The Commonwealth of Nations, normally referred to as the Commonwealth and formerly known as the British Commonwealth, is an intergovernmental organisation of fifty-four independent member states...
jurisdictions such as Australia
Australia
Australia , officially the Commonwealth of Australia, is a country in the Southern Hemisphere comprising the mainland of the Australian continent, the island of Tasmania, and numerous smaller islands in the Indian and Pacific Oceans. It is the world's sixth-largest country by total area...
, New Zealand
New Zealand
New Zealand is an island country in the south-western Pacific Ocean comprising two main landmasses and numerous smaller islands. The country is situated some east of Australia across the Tasman Sea, and roughly south of the Pacific island nations of New Caledonia, Fiji, and Tonga...
and the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
, 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
General Certificate of Education
The General Certificate of Education or GCE is an academic qualification that examination boards in the United Kingdom and a few of the Commonwealth countries, notably Sri Lanka, confer to students. The GCE traditionally comprised two levels: the Ordinary Level and the Advanced Level...
'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
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, 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
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO). 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.
In India a registred trademark agent or attorney can file and appear before the Trademark Examiner.
See also
- International Trademark AssociationInternational Trademark AssociationThe International Trademark Association is a worldwide not-for-profit association of member companies and firms that supports and advances trademarks and intellectual property as elements of fair and effective global commerce.- History :...
(INTA) - Patent attorneyPatent attorneyA patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition...
- Trademark examinerTrademark examinerA trademark examiner is an attorney employed by a government entity such as the United States Patent and Trademark Office to determine whether an applicant should be permitted to receive a trademark registration, thus affording legal protection to the applicant's trademark...
External links
- General trademark associations
- International — International Trademark Association (INTA) — An association for trademark owners, practitioners and other parties with an interest in trademarks
- Professional associations of trade mark practitioners
- AustraliaAustraliaAustralia , officially the Commonwealth of Australia, is a country in the Southern Hemisphere comprising the mainland of the Australian continent, the island of Tasmania, and numerous smaller islands in the Indian and Pacific Oceans. It is the world's sixth-largest country by total area...
— Institute of Patent and Trade Mark Attorneys of Australia (IPTA) - CanadaCanadaCanada is a North American country consisting of ten provinces and three territories. Located in the northern part of the continent, it extends from the Atlantic Ocean in the east to the Pacific Ocean in the west, and northward into the Arctic Ocean...
— Intellectual Property Institute of Canada - FranceFranceThe French Republic , The French Republic , The French Republic , (commonly known as France , is a unitary semi-presidential republic in Western Europe with several overseas territories and islands located on other continents and in the Indian, Pacific, and Atlantic oceans. Metropolitan France...
— NextMarq - Association of French Trademark Attorneys - Hong KongHong KongHong Kong is one of two Special Administrative Regions of the People's Republic of China , the other being Macau. A city-state situated on China's south coast and enclosed by the Pearl River Delta and South China Sea, it is renowned for its expansive skyline and deep natural harbour...
— Hong Kong Institute of Trade Mark Practitioners (HKITMP) - United KingdomUnited KingdomThe United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
— Institute of Trade Mark Attorneys (ITMA) - South AfricaSouth AfricaThe Republic of South Africa is a country in southern Africa. Located at the southern tip of Africa, it is divided into nine provinces, with of coastline on the Atlantic and Indian oceans...
— The South African Institute of Intellectual Property Law (SAIIPL)
- Australia
- Directories of trademark attorney firms