Job Responsibilities
Counseling clients on the selection, protection, registration,
enforcement, usage, maintenance and disposition of trademarks and
service marks with occasional counseling on copyrights and other
non-technical intellectual property rights. This includes
searching the availability, registrability and enforceability of
proposed new marks, marks sought for acquisition by a company and
marks that are the subject of a dispute as well as any necessary
legal research to retrieve the appropriate answers. I also
attempt to resolve trademark/copyright disputes by communicating
on the client's behalf with potential, alleged infringers or
infringement accusers seeking a middle ground for purposes of
reaching settlement or evaluating the merits of an infringement
lawsuit and/or cancellation/opposition proceedings against an
application(s)/registration(s) at the U.S. Patent and Trademark
Office before the Trademark Trial and Appeal Board. I work with
local or foreign counsel to handle the same types of cases in
individual states within the U.S. or in foreign countries.
Transactional work includes the negotation, drafting and
execution of settlement or coexistence agreements resolving the
aforementioned disputes; trademark licenses due to various
underlying business transactions such as cobranding arrangements,
business facilities transfers or rentals, tax planning, etc. as
well as purchases, sales or other outright assignments of marks
from one business to another. Generally, since trademarks or
services marks are relatively small legal matters, the work
entails dealing with a large volume of trademark matters either
for a single business or many different businesses and clients
with each matter occupying an hour or less. As with all legal
work, the type of work is generally legal and factual research,
analysis, writing, negotiating and counseling with research
occupying probably about 40-50% of the time and writing another
30%; the remaining time spent counseling, negotiating or
strategizing with other attorneys. This breakdown varies by level
of experience and rank with more research and writing at lower
levels and more negotiating and counseling being performed by
senior attorneys, partners or executives.
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Job Requirements
For a trademark attorney position, as with any attorney position,
the basic requirement is admission and completion of law school
and admission to at least one state bar. What is accomplished
before law school is essentially irrelevant although a business
background, especially marketing, helps. Also, as with any
attorney position since the legal field tends to be
intellectually arrogant, the better the reputation of the
undergraduate and law school institutions as well as the better
the academic achievements at those institutions, the easier will
be the hiring and placement process for the candidate. Many
trademark attorneys, as with many attorneys in general, may have
been paralegals prior to or during law school which also helps
establish a trademark attorney career, particularly that person
works in the trademark field at that time. The academic nature
of the program is typically not distinguishable from any other
academic law program but the workload of a trademark attorney can
be much more manageable and predictable than many other legal
fields especially if handling mainly trademark transactional work
or "prosecution" (registration practice before the U.S. Patent
and Trademark Office).
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Uppers
One great upper is that the field is interesting. It is basically the law
applied to advertising, marketing and shopping. It can be fascinating learning
about new products and ventures that business are creating and having an inside
track with high level executives on how to market those products or services.
Also, if working in a law firm, the exposure to so many different types of
businesses and types of professions is exciting and rewarding. It is also
rewarding and fulfilling to see how one has helped a client achieve a particular
goal or resolve a difficult situation. There is real opportunity to achieve a
lasting legacy in the field if, for example, the trademark attorney has
successfully paved the way for a client's mark to enter the market despite actual
obstacles to that market entry.
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Downers
One of the worst or most difficult parts of the trademark
attorney position is the frequent deadlines one must adhere to
which is why many trademark attorneys are known to live their
life "by the docket." Also, the field can be somewhat small,
limited and unprofitable unless one can truly engage in the
more "bread and butter" legal skills of a lawyer such as
litigation or transactional work or other more general or related
legal areas such as general corporate work. It is important not
to let one's trademark practice become too focused or specialized
on the trademark prosecution aspect of it.
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Lifestyle
Trademark law is often called the "dermatology practice" of the legal field.
This is because it is often glamorous working with high-level marketing
executives of leading multi-national corporations, especially consumer goods
manufacturers, on tasks that are generally more creative, not the usual dry,
draconian legal rules, and on matters which usually are not as consequential as
say a major multi-billion dollar deal, a criminal trial or a civil or family
court trial. Also, the work can be somewhat predictable and/or accomplished in
smaller time frames so the hours are much more normal. Often, trademark law is
practiced via telephone, fax and e-mail since face to face consultation is not so
critical so travel is minimal but this may not be the case with heavy litigation
or deal-making practices. The company culture, social life, dress code and other
lifestyle features are generally the same as with any other area of law, although
since trademarks tend to involve more creativity and language skills, people in
the trademark field are often more social and really like to party. For example,
there is a significant annual trademark event known primarily for its
professional networking focus, which is attended by roughly 6,000 trademark
professionals from around the world, known as the Annual Meeting of the
International Trademark Association (INTA). Also, trademark law tends to be very
international in scope since companies usually will have trademark issues arise
wherever they do business.
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Compensation
The salary follows that of the typical attorney which varies by
location of practice, size of the firm or company within which
the attorney practices and, if within a company, compensation
habits of the particular industry. For example a typical first-
year associate, just graduated from law school and working in a
large firm in a large city would make approximately $125,000 but
salaries for a rookie attorney can be as low as $40,000-$50,000
in smaller firms in smaller cities. The salaries may often
include bonuses for quality of performance or quantity of
billable hours, depending upon whether working for a law firm or
the in-house legal department of a company but stock options only
really are available for in-house attorneys. I believe salaries
for more experienced trademark attorneys are generally in the six
figures but barely in six figures for smaller firms and close to
$200,000 - $300,000 for a larger firm. In-house salaries I think
may level-off in the mid 100,000's but would also include stock
options or other benefits.
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Advice to Jobseekers
My advice is to study hard and ensure that you graduate from a
top law school with the best grades possible or at least graduate
from any law school with the best grades possible. Also, getting
experience at the U.S. Patent and Trademark Office for a while,
either as an examining attorney or as an intern would be
excellent for getting noticed in the field and could further
advance one's career. Many interns go on to become examining
attorneys at the U.S. Patent and Trademark Office. Also, make
sure to develop experience and skills in other legal areas in
addition to trademarks. This is because trademark filing volume
and business in general in the field typically parrots the
economy and will therefore decrease in harder economic times. As
such, the occupation has been rather depressed and overly
competitive for the last few years but was booming in the "dot-
com" era. However, there should always be a need for trademark
attorneys and many attorneys in the field now are much older and
could be retiring and some reports have our economy improving.
The only caveat to this is if more clients are willing to hire
paralegals to handle much of the work which is something I read
could be occurring.
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