A Qualified Trade Mark Attorney

Kerry Moroney

I have a degree in Politics from Durham but also studied at a university in Rome. As part of my degree, I read Italian, German and French. I joined Mewburn Ellis LLP in April 2003 and qualified in April 2006.

As part of my training, I worked in our offices in Manchester, Bristol and London for three partners in total. Moving around the offices and changing principal has strong advantages; it helps to experience a wide variety of work and working styles. For example, some of the partners do a great deal of opposition work whilst others review lots of trade mark searches. For the first two years or so, every piece of work I did was supervised by the partner in charge. Once you can demonstrate that you are capable and have some exam passes under your belt, the level of supervision decreases.  The year after I had qualified, I did an internship for 10 weeks at one of the world’s leading trade mark firms in New York which was great experience.

The majority of my working day is spent talking or writing to clients in order to resolve their trade mark issues. This can involve writing to the UK Intellectual Property Office (IPO) and to the Community Trade Mark office (OHIM), based in Alicante, Spain.  I also spend a lot of time communicating with foreign attorneys.  We deal with foreign attorneys all over the world on a day-to-day basis.

Typically, I start work at ten and finish around six thirty. Each day is different and often does not turn out at all as expected. I always check my emails as soon as I arrive. An increasing amount of correspondence that we send and receive is via email. There are often quite a few emails as US attorneys are working during our night. We also get lots of correspondence, especially official letters from the UK IPO and OHIM, by fax and post. I check this throughout the day and decide which letters need acting on immediately and which can wait until the next day.

An average day might include:

• Filing a new trade mark application either in the UK or at OHIM, or instructing a foreign attorney to file an application in their country. As UK practitioners, we can act before the UK IPO and OHIM, but not before the national Intellectual Property Offices of other countries.  I also file numerous Madrid Protocol applications (an international system) which are channelled through the World Intellectual Property Office in Geneva.

• Reviewing an objection that we have received to a client’s application from the UK IPO, OHIM or WIPO and reporting this to client. Ideally, I will report this the day I receive the objection or the next day. The objection might be because the offices do not think that the mark applied for can function as a trade mark. I will advise the client as to how serious the objection is, how we can overcome it and when we need to respond by.  Often this will include drafting detailed arguments which rely heavily on the most recent case law.

• Reviewing a trade mark search to establish whether a client’s proposed mark is available for use in the UK and whether any trade mark application for the mark might run into difficulties.

• Filing an objection (called an opposition) on behalf of a client to a third party’s trade mark either in the UK or at OHIM or instructing a foreign attorney to file an opposition in their country.

• Reporting to the client that one of their UK, Community Trade Mark, Madrid Protocol marks or foreign applications has been opposed. 

• Drafting a co-existence agreement to enable my client to reach an amicable settlement of a dispute with a third party.

• Much of my time is spent dealing with CTM oppositions and managing the global trade mark portfolios of UK based clients.

A Trainee Trademark Attorney

Matt Legg

Although I had seriously considered studying law, I ended up obtaining a BA and an MPhil. in languages from Cambridge University. My degrees were mainly in French and Spanish, although I also studied some German. I had a year abroad in France during my BA, during which I studied at Montpellier (III) University. I joined Mewburn Ellis LLP in October 2007.

Trade mark work is intricate, varied and often unpredictable. It demands a lot of concentration and learning when you start out. The fact that you are learning on the job and under supervision means that you are gradually exposed to the full range of activities of a trade mark attorney. Having my work reviewed after I have finished it means that help and guidance are always at hand.

I enjoy the study element of being a trainee, particularly coming from a non-law background. I am nonetheless glad that I get to use my language skills so regularly (particularly Spanish) in a challenging context – from noting the information contained in correspondence from OHIM (the EU trade mark office, based in Alicante), to preparing a lengthy submission for opposition proceedings.

The work varies from day to day, often in a surprising manner. Remaining flexible and time-managing effectively are important: sometimes matters arise which cause everything else to grind to a halt. Sometimes you will mainly work on one case all week, sometimes you will work on 10+ cases in one day. Most days seem to be a happy medium, but a willingness to adapt to circumstance is vital.

Clear and persuasive communication skills are essential: being inarticulate or inaccurate would be detrimental to your work, and could even lead to negligence.

I get into work between 09:30 and 10:00, check my emails, my principal’s emails and the calendar (essentially a work schedule), and do anything that needs doing urgently. I then usually take a file from my pile of non-urgent work, although cases with more imminent deadlines may come in which take priority. I check my email throughout the day, keep an eye on the post, and act accordingly

I keep an eye on the clock when I work, as clients are charged according to time worked.

If there is anything I need help or guidance with, I ask my principal, or someone else in the firm with the relevant knowledge.

As I am still learning, I tend to dictate work which I can easily handle, whereas I will type work I am liable to rehash. I initially thought I would sound like a madman talking to myself, but it is in fact a very quick way of getting a lot done.

I usually leave the office a little after six.

In order to qualify, there are eight exams to sit – five foundation papers and three advanced papers. The foundation papers in particular require a great deal of book work and rote learning of the law. (For those with a law degree, there are exemptions to some of the foundation papers.)  The advanced papers are much more practical and are designed to test whether in practice you can do the job. Exams are every November with results coming out the following April.

I will sit five foundation exams this November, and if I pass them all first time around I will take my three advanced papers the following November. In theory, I could go from joining to qualified in 30 months… if I manage to avoid re-sits! Re-taking an exam is quite commonplace, and the firm certainly doesn’t make it a ‘make or break’ matter.