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Trademark Counsel or Trademark Attorney

What does a Trade Mark Attorney do?

A trademark counsel or trademark attorney helps to ensure that an application for a trademark or brand is properly registered with the applicable national or international trademark office(s). During this process, the counsel generally advises his or her client (in the case of an in-house trademark professional he or she works for) on the probability of the application becoming a registered trademark.  Additionally, the counsel usually evaluates whether any legal risks are involved with adopting a certain slogan, word, or logo (as to infringement of third party older rights). The counsel can also help the client determine whether the potential mark may violate the rights of another person or entity. If the client decides to move forward with pursuing the mark, the counsel files the application and communicates with the trademark office as needed. Many trademark counsels participate in marketing department meetings or are engaged in product development to ensure a smooth product market introduction.

What skills are required?

A trademark attorney should have:

  • A thorough grounding in national and international trademark law.
  • A working knowledge of related areas such as copyright law, patent and competition law.
  • The ability to communicate effectively, both on paper and in person.
  • Good analytical skills.
  • Good negotiating skills in dealing with third parties.
  • Excellent attention to detail and accuracy.
 

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