Trainee Trade Mark Attorney

Job Description

We have an exciting new opportunity with our client - one of the UKs leading law firms for the media, technology and creative industries.Theyre looking for a skilled and enthusiastic aspiring trade mark attorney, preferably with 1-3 years trade mark prosecution focussed paralegal experience, to support their exciting and fast growing trade marks team. They are responsible for the brandsof many high profile clients in the media, entertainment and technology sectors. This is a really exciting role, and the person filling this role will form a crucial part of the brand protection team, and enable it to continue its growth.Key tasks will include:

• Advising clients in relation to brand protection and filing strategies and preparing draft specifications.
• 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, preparing regular watching reports, and providing appropriate advice in relation to potential disputes.
• Advising clients in relation to design and related soft IP protection and filing strategies, and enforcement.
• 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.
• Preparing pre-action correspondence and third party platform take down requests to enforce our clients trade mark, design and related soft IP rights.
• Preparing and drafting agreements including assignments and licences.
• Managing and preparing recordals with relevant registries and local counsel.
• Acting in relation to domain disputes, and the procurement of domains for clients.
• Conducting legal research.
• Monitoring deadlines, updating and maintaining trade mark portfolio databases, and ensuring that they are met in good time.
• Checking and processing incoming correspondence, including relevant deadlines and actions.
• Preparing forms for submission with various registries.
• Supporting the brand protection team with the monthly billing process.
• Assisting with the transfer of trade mark portfolios into our practice.
• 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 youYou 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 enthusiasmfor our firms core sectors.You will also have:

• 1-3 years experience as a paralegal in a trade marks practice.
• A passion for trade marks and soft IP.
• Strong academic/educational background to at least undergraduate degree level.
• Some understanding and working experience of UK and EU trade mark, design and related soft IP law.
• Some 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 and strong ability to learn, develop and take on feedback.

This role is to start ASAP and is a full-time permanent position. This role would be remote up to 2 days and in the London office for 3 days a week.The salary for this role is competitive.

Keyskills :
Intellectual PropertyTrademarks