A trademark registration attorney advises clients on the intellectual property concerns of adopting text, logos, or symbols to uniquely identify products used in commerce. He also files and defends the registration of proprietary marks in front of a national government agency with the authority to acknowledge exclusive rights in the marks. Even though the development and protection of trademark rights depends on a thorough understanding of international treaties on intellectual property rights and the laws of many different countries, there is no internationally recognized procedure to become a trademark registration attorney. Each country has its own process, though most of them feature a combination of content-specific education, internship-type experience and standardized testing, and can be generally outlined through a comparison of the systems in the United States and in the United Kingdom.
There are two types of systems in place to become a trademark registration attorney: general legal education that is used in jurisdictions such as the U.S., and regulated general qualification through testing that is used in commonwealth jurisdictions such as the U.K., Australia, New Zealand and Canada. The most basic distinction in the two systems that underlie how to become a trademark registration attorney is the different definitions of the word “attorney.” Historically, an attorney was simply a representative or agent of another person and did not have to be a member of the legal profession. In the U.S., the word “attorney” has morphed to mean a person authorized to the general practice of law; an attorney in the U.K. can, but does not have to be, a member of the legal profession.
In the U.S., a person who wishes to become a trademark registration attorney must be a lawyer authorized to the general practice of law in at least one state. To become a lawyer, the person must attain an undergraduate degree in any major, take the Law School Admission Test and gain admission to an accredited law school. The person must then graduate from law school, pass the bar exam in at least one state and be sworn in as a member of the bar of that state. Admission to the bar of any state enables the lawyer to call himself a trademark registration attorney and represent clients in state and federal courts and in front of the U.S. Patent and Trademark Office (USPTO).
The U.S. operates under a system of general legal education. It assumes a person who has spent three years in law school and has passed the bar exam is qualified to practice law in any area, subject to the person’s development of a specialization. Although a lawyer can represent himself as a practitioner of any area of the law, in reality, a lawyer in the U.S. must develop the specialized knowledge and tools needed to avoid malpractice before holding himself out as a qualified legal representative. A person wanting to become a trademark registration attorney in the U.S. would be wise to take the law school classes that explain intellectual property law, to pursue summer internships at law firms and government agencies that practice trademark law, and to seek a job after law school either with a firm that specializes in trademarks or with the USPTO. Further, the U.S. lawyer should be active in his bar association’s trademark practice group and pursue continuing education credits in that area.
In the U.K., conversely, a trademark registration attorney does not have to have a law degree or be authorized to practice law generally. To become a trademark registration attorney in the U.K., a person must apply for qualification with the Institute of Trade Mark Attorneys (ITMA) by having a general certificate of secondary education (GCSE) in five subjects and a general certificate of education (GCE) at an A-level in two subjects, engaging in two years of relevant work experience, and getting passing scores on five foundation papers and three advanced papers on trademark topics. If the person has a law degree, then he is exempt from some of the foundation papers; if he has an advanced intellectual property law degree, he would be exempt from most of the exams. Only those people who have been qualified by the ITMA and listed on the Register of Trade Mark Agents can use the title “trademark attorney.” Other commonwealth jurisdictions have a similar regulatory qualification process to become a trademark registration attorney that is handled primarily by content-specific testing coupled with experience, and not necessarily through the attainment of a law degree.