Joe is a member of the firm’s trade mark and design practice groups. His work focuses on both contentious and non-contentious trade mark and design matters, assisting with all aspects of trade mark and design law, as well as matters involving copyright. He joined S&P in February 2022 after graduating from Durham University with a master’s degree in marine geophysics.
The life of a trade mark attorney is varied, with no two days being the same. Working at a medium-sized IP law firm, I am exposed to a wide range of cases in multiple commercial fields, working for a variety of different clients from preeminent multi-national companies to individuals and SMEs.
Below, I’ve tried to give an impression of some of the things that I can end up doing on any given day in the office as well as my thoughts as a part-qualified trade mark and design attorney at S&P:
I normally arrive at the office around this time, allowing me to get settled before the day begins. I moved to Derby after previously living in Birmingham, which means it is only a 10-minute commute to our head office. I fill up my water bottle, catch up with the secretaries about their weekend plans, before checking my inbox to make sure no urgent emails have come in overnight.
I personally like to get a couple of my administrative jobs done first thing in the morning to get me in the correct headspace before tackling my bigger tasks. One of the main differences between the daily routine of a trade mark attorney, and that of a patent attorney, is the type of workload. I often juggle multiple cases in a day, and therefore keeping organised and staying on top of deadlines is key.
Today, I have a number of tasks I want to achieve. Firstly, a growing client of mine has indicated they wish to file in the US to extend protection of their business and brand. I therefore need to prepare potential details for the client to review and approve.
From the moment you start at S&P, you are given the responsibility to manage your own cases and interact with clients. As you become more qualified, your responsibilities grow and you build your own client-attorney relationships. While daunting at first, I believe this is one of the most rewarding parts of the job.
My next task is to prepare a draft settlement agreement to present to the client in connection with an opposition I am handling. As a trade mark attorney, you get involved in drafting various contracts and agreements on a regular basis, which adds an exciting element to the job.
In this case, the settlement the client wants to reach is quite complex so I expect that this will take me most of the morning.
I get a call from reception saying an individual who owns a local café has called and wants to ask about obtaining trade mark protection. The business owner talks me through her goals and we discuss the basics of trade mark protection and the process of applying for a trade mark in the UK. She also mentions that she has recently designed and created a uniquely decorated coffee mug that she hopes to soon sell, and was wondering whether we can protect her design in any way. I therefore also discuss design and copyright protection. After the call, I send her an email with some more detailed information on a couple of areas we spoke about as well as costs and ways to move forward.
Interacting with potential or existing clients adds another dimension to the work, and is a great way for trainees to develop and hone their legal and interpersonal skills.
I finish drafting both the settlement agreement and a covering email to the client, and then start on my final substantive task of the morning. I have received an examination report from the UK Intellectual Property Office, issued on a UK designation of an international trade mark application recently filed by one of our foreign associates.
As I did not originally file this application, my first job is to familiarise myself with the trade mark, the goods covered, and the key commercial interests of the client. Next, I read through the examination report and consider the objections that have been made. The examiner has argued that the trade mark is devoid of distinctive character and is descriptive for the goods covered, citing ‘evidence’ from an internet search of the trade mark in support. I read through these documents and conduct some of my own background research into the relevant market sector to try and understand the examiner’s point of view. These kind of objections are often hard to overcome, so I decide to ring the examiner to get a better feel on what their position is on the matter. After the call, I have a better understanding of the examiner’s objection and how best we might overcome this. I’ll discuss my proposed arguments with my supervisor in my meeting later this afternoon.
I have a meeting with my supervisor after lunch to discuss a number of cases that I have been dealing with lately, including the examination report I analysed earlier today, and an opposition I drafted yesterday that is due tomorrow.
I first give a summary of all the cases I am currently dealing with, providing a brief overview of where I am at on each matter. Being able to summarise and concisely explain the details of each case is a good test of my understanding and is an essential skill to have.
My supervisor made a couple of minor tweaks to the statement of case in the opposition, but was overall very happy with my draft. He has given the go ahead for this to be amended and sent, and so I will liaise with my secretary to have this filed before the end of the day.
We then discuss the examination report I have just analysed and I present my proposal for responding to the examiner’s objections. My supervisor has some comments and suggests a couple of things to think about.
I take these comments into consideration and, when I get back to my desk, prepare a report to the client, outlining the objections and explaining our potential options for overcoming these. I hope to finish the draft this afternoon, so that I can go over this with my supervisor tomorrow.
Today I have one of the weekly firm seminars, lead by a senior director. This week’s session is on recent updates on UK design case law. These seminars are a great opportunity to chat to other directors and teams in the firm, and is a way that S&P helps its attorneys keep on top of the latest changes in the Law.
I’ve got to be out of the office quickly today as we have one of our company social gatherings after work. Today we are off to the local pub to have a drink and some food. This is great chance to catch-up with attorneys in other teams, in particular allowing the patent and trade mark sides of the business to regularly interact and socialise, which I think is different to a lot of law firms out there.
The journey of a trainee trade mark attorney at Swindell & Pearson
At S&P trainees are assigned a supervisor, who will be one of the firm’s senior and most experienced attorneys, that oversees their development. The first few weeks as a trainee involve a number of sessions that are designed to give you an introduction into trade marks and how the firm works in general.
From then on, the majority of the training comprises working on real cases while receiving near daily one-to-one training with their supervisor. This is supplemented by weekly and monthly seminars and training sessions led by various experienced members of the firm.
S&P trade mark trainees attend the trade mark law and practice postgraduate course at Queen Mary University of London. This is a 9 month course, and one of the mandatory qualifications needed in order to become a fully qualified trade mark attorney. The course supplements your training at S&P and makes sure you know the relevant law and statute inside out.
Once you have successfully completed the Queen Mary course, you will then need to complete the professional certificate in trade mark practice at Nottingham Law School. This course is designed to build on your knowledge base that you have acquired while working in private practice, and develops the professional skills needed to become a fully qualified trade mark attorney. During these university courses, S&P provide a multitude of in-house resources and training to support you through this process.
All of the S&P trainees work in our head office in Derby and the working hours are typically 9 to 5 although this can vary depending on approaching deadlines and during periods of study for examinations. Unlike many other legal fields, IP law is well known for its achievable work-life balance, which is definitely reflected at S&P.