Trademark Attorney

Posted 23 February by Caselton Clark Easy Apply

Role: Trademark Attorney
Company: Freeths
PQE: 3 years +
Location: Birmingham or Manchester (ideally). Would also consider Leeds, Sheffield or London.

Salary: £55k - £75k
Term: Permanent
Working hours: Full-time
Department: Intellectual Property & IT

Caselton Clark are delighted to be working exclusively with Freeths Solicitors, one of the UK's leading regional law practices. As such, all direct or third party applications will be forwarded to Caselton Clark.

The firm:

We offer services to both the commercial and private client across the entire legal spectrum.

We operate from offices in Birmingham, Derby, Leicester, Leeds, London, Manchester, Milton Keynes, Nottingham, Oxford, Sheffield and Stoke. The firm has a wide range of clients throughout the UK with many clients having strong international connections.

We have 130 partners and over 600 members of staff in total. our annual revenues reached over £50 million for the financial year ending 31st March 2014.

Our client base reflects our nationwide strength and our nationwide service delivery.

We are committed to continuous improvement and our increasing success as a business is built on achieving success for our clients. We work in close partnership with clients, providing positive, practical solutions and clear, comprehensive advice.

Our aim is to attract and retain the most talented people, and part of this is providing a great place to work. So, to support fairness and equality and to encourage a healthy work-life balance, we continually monitor and improve our benefits. We are proud that what we have achieved has been recognised over the past few years: Achieving Best Companies Status and featured in the Sunday Times 100 Best Companies to work for 2008, 2009, 2010 and Best Companies for 2013.

The department:

Our busy and highly rated IP Team are looking to recruit a qualified Trademark Attorney (or Solicitor) into the Birmingham or Manchester, Leeds, Sheffield offices. The successful candidate will be between 3 - 5yrs PQE and have worked in a well-established Firm dealing with a range of responsibilities.

Responsibilities include:

- Researching new trademarks
- Carrying our national and international trade mark searches
- Advising on trade mark availability for use or registration
- Advising on desist and copyright issues;
- Overseeing all procedural details of trade mark registration
- Managing, protecting and enforcing intellectual property rights, include trademarks, patents, copyrights, designs and the "get up" of a product (look or image)
- Negotiating in trade mark design, and domain name disputes;
- Taking action on trade mark infringement and passing off;
- Drawing up appropriate contractual papers, settlement agreements, co-existence agreements, assignments, licences, etc
- Providing back-up to the solicitors and barristers conducting a case if it comes to litigation
- Advising clients on the use and protection of trademarks and the classes of goods or services they need to cover with their registration;
- Assisting clients with identifying the nature of their intellectual property;
- Advising on the legal aspects of marketing new goods or services and their introduction into the market place as well as developing brand enlargement;
- Composing complex letters to client, the Trade Mark Registry, the OHIM and other parties;
monitoring existing and proposed trademarks;
- Attending meetings and undertaking conference calls with clients and other contacts in the UK and overseas;
- Dealing with general enquiries on trade mark protection;
- Managing a portfolio of brands in the UK and overseas;
- Advising clients about countries in which to seek registration and the most cost-effective way of achieving this;
- Filing applications on an international basis as well UK and Community Trade Marks;
developing working relationships with clients, relevant brand managers and other contacts in the UK and overseas;
- Handling trade mark, design and patent renewals

Please enquire for further details.

Required skills

  • Intellectual Property
  • IP
  • commercial
  • legal
  • solicitor
  • lawyer
  • law
  • court
  • copyright
  • litigation
  • attorney
  • patent
  • trademark
  • barrister
  • designs
  • trade mark
  • ITMA

Reference: 34545255

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