Trademark attorney

A trademark attorney (U.S. spelling) or trade mark attorney (UK spelling) 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 intellectual property courts, and benefit from attorney–client privilege. Unless they are also members of the general legal profession, as they are in the United States, their right to appear in Court is usually limited to trademark matters.

A trademark attorney frequently begins his or her career by joining a firm of trademark attorneys, or a firm of patent attorneys with a department specializing in trademark work. Increasingly however, large multi-discipline law firms are establishing trademark practices. Trademark attorneys are also employed by large companies which have enough trademark 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 (under the Copyright, Designs and Patents Act 1988 and Trade Marks Act 1994 in the UK, for instance).

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