Trade Mark Attorney

G2 Legal
Competitive + Benefits
12 Feb 2019
12 Mar 2019
Rachel Darlington
Sector/Practice Area
Intellectual Property, Patents, Trademarks
Vacancy Type
Lawyers, Private Practice
Trade Mark Attorney.

Our client is renowned as a leading law firm in the field of trade mark and design law working across all business sectors with a wide variety of household name clients, winning awards in this field.
An opportunity now exists for a Trade Mark Attorney to join the new Liverpool office in the heart of the city. You will work as part of the wider trade mark team, managing international trade mark portfolios with a good degree of autonomy, whilst working with leading partners and supervising junior members of the team including a paralegal in Liverpool.
  • Filing and prosecuting trade marks on a worldwide basis, including the UK, EU and Madrid system
  • Gathering and presenting witness statement evidence 
  • Drafting legal submissions for UKIPO or EUIPO proceedings and handling UKIPO hearings (whether doing advocacy themselves or through counsel)
  • Advising on assignment or recordal projects and implementing them to run within budget, on time, and with efficient reporting
  • Conducting and advising on trade mark availability searches, using appropriate online tools and through search agents
  • Advising clients on the registrability of trademarks and recommending cost-effective registration strategies
  • Instructing and managing work of foreign attorneys, including critically reviewing their invoices before approval
  • Reviewing trade mark and EUIPO watch notices to consider possible oppositions
  • Reviewing and advising on impact of in-use reports and liaising with investigators
  • Handling negotiation of co-existence and assignment agreements with third parties
  • Assisting with management of portfolio disbursements, matter billing and client payment for their matters in a timely and efficient manner to help improve matter profitability 
As a Trade Mark Attorney, you will also work closely with partners in relation to know how and business development, including cost estimates for filing, recordal, clearance and other projects, ideas to improve business practices, contributing to internal know-how and training, and pro-active contribution to business development.
You will have gained a significant level of experience in trade mark work, working directly with clients in the management of portfolios across a wide industry sector. You will have gained experience in handling cases at the UKIPO and EUIPO and be preferably ITMA qualified.
This Trade Mark Attorney role offers you the opportunity to expand upon your specialist experience with a leading trade mark law firm, both domestically and internationally. Based in the new Liverpool office, this is a unique role in the North West legal market.
Excellent salary and benefits package on offer.