Harbottle & Lewis
Trade Mark Attorney - 4-5 PQE
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The firm
We are a dynamic, multifaceted law firm that provides a wide range of legal services to a creative and entrepreneurial client base. We partner with the big and the small, from cutting edge startups to global corporations, early-stage entrepreneurs to established industry leaders, and household names to private individuals and their family offices. We are renowned for our sector specialisms which we combine with expertise across all the traditional practice areas to provide our clients with tailored solutions that truly add value.
We offer a collegiate, vibrant and supportive environment, a clear path for career progression and a strong platform from which to learn and grow. We look for high performing, committed and innovative people who aren’t afraid to push themselves to be the best they can be. We take an active role in helping our people be at the top of their game. We believe our people make us stand out and we empower them to meet their ambitions. We invest time in developing their skills and knowledge and run several development and training programmes throughout the year, as well as encouraging and supporting personal involvement in other areas of expertise.
The group
Our well-established and highly regarded IP group is looking for a junior Chartered Trade Mark Attorney to join our busy trade mark attorney team. Like all good firms, we are ranked in World Trade Mark Review, Legal 500, Chambers and IP Stars. However, what truly sets us apart is the diverse and exciting nature of our practice and our clientele. The successful candidate could end up working on everything from fashion to film, esports to e-tailing, and music to merchandise. The firm’s longstanding emphasis on the Technology, Media and Entertainment sectors has made it a leader in these fields and means that we often grapple with cutting edge trade mark issues, such as the protection of brands in the AI space, and innovative uses of non-traditional marks. We also work closely with startups in all industries.
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The role
The successful candidate will be advising a range of exciting clients, many of which are household names. They will work closely with our Chartered Trade Mark Attorneys, CITMA paralegals and wider IP team, and they will be expected to be able to work with a good degree of autonomy, correspond directly with clients, and take responsibility for their own matters. They will need to have experience handling opposition, and cancellation matters and providing strategic advice. Experience of managing international portfolios is also required.
The ideal candidate will have a commercial and committed approach, a proven track record, strong client care skills, excellent responsiveness, and be self-motivated. Experience of the WebTMS database will be helpful.
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Our trade mark portfolio management team advises clients on the full range of IP issues relating to trade mark clearance, prosecution and management of registered rights, as well as disputes before the IPO, across several industry sectors. We also handle designs and domain name portfolios. We work alongside the wider IP team, which includes IP litigators, paralegals, and trainees.
Responsibilities Will Include
- Conducting and co-ordinating trade mark clearance searches;
- Advising on registrability and cost-effective filing strategies;
- Filing and prosecuting trade mark and design applications around the world;
- Managing and reporting watch notices;
- Handling objections and oppositions;
- Preparing evidence and legal submissions to support registration, oppositions and cancellation actions, and other disputes;
- Preparing and negotiating co-existence and other agreements;
- Instructing, overseeing and co-ordinating the work of overseas attorneys;
- Handling assignment or recordal projects;
- Providing ad-hoc advice notes;
- Managing cost estimates effectively and billing monthly; and
- Helping to strengthen and develop relationships with clients.
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