Trade Mark Attorney


12 days ago


London & South East






12th Jun 2022


Lee & Thompson


Private practice

The Role:

We're looking for a skilled and enthusiastic trade mark attorney, with 1-3 years' post-qualification experience, to support our exciting and fast growing trade marks team.  We are responsible for the brands of many high profile clients in the media, entertainment and technology sectors. The person filling this role will form a crucial part of the brand protection team, and enable it to continue its growth.

 Key responsibilities will include:

  • Advising clients in relation to brand protection and filing strategies, preparing draft specifications and reviewing draft trade mark applications before filing.
  • Advising clients in relation to design and related soft IP protection and filing strategies, and enforcement.
  • Conducting availability and clearance searches (including registered and unregistered searches, and title searches) and providing advice to clients, including risk mitigation strategies.
  • Prosecuting trade mark applications in the UK, EU and globally, including preparing observations and evidence in response to absolute grounds objections.
  • Managing and monitoring watching services, and providing appropriate advice in relation to potential disputes.
  • Advising and acting for clients in relation to brand disputes, including oppositions, invalidities and revocations.
  • Negotiating and concluding settlements, and drafting settlement and coexistence agreements.
  • Enforcing our clients' trade mark, design and related soft IP rights, including preparing pre-action correspondence and third party platform take down requests.
  • Preparing and drafting agreements including assignments and licences.
  • Acting in relation to domain disputes, and the procurement of domains for clients.
  • Conducting legal research.
  • Monitoring deadlines and ensuring that they are met in good time.
  • Supervision of more junior team members including in relation to the preparation of trade mark applications, renewals, trade mark prosecution, search reports and Registry forms.
  • Developing strong relationships with other members of the department and more widely within the firm.
  • Working and liaising directly with clients.
  • Participating in department business development and learning and development activities.

About you

You will be organised, proactive, have strong attention to detail, and be able to work efficiently and independently.   You will also be a good communicator.  You will be a team player, and enjoy working with others.  You will have a real interest and enthusiasm for our firm's core sectors.

You will also have:

  • 1-3 years' experience as a qualified UK Trade Mark Attorney.
  • Strong academic/educational background to at least undergraduate degree level.
  • Strong knowledge, understanding and working experience of UK and EU trade mark, design and related soft IP law.
  • Good working knowledge of UKIPO, EUIPO and WIPO trade mark and design procedure.
  • Familiarity with online trade mark databases/portals.
  • Experience with legal resources including searching and research providers (including Corsearch) and online legal resources including Westlaw, Practical Law and Darts IP, or similar.
  • A positive attitude and methodical work process.
  • A desire to learn, develop and take on feedback.

We are committed to increasing the diversity of our teams and we welcome and encourage applications from groups currently underrepresented in our workforce and across the legal profession.

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