Career paths: The route from formalities to Chartered Trade Mark Attorney

13th Feb 2024

“A new Trade Mark Attorney joined the team and asked me one day why I had never considered qualifying as an attorney myself - and I found that I didn’t have a very good answer."

With less traditional paths to qualification growing in popularity, one member sets out the route she took to make the leap from formalities to being a Chartered Trade Mark Attorney.

It was offered to me almost as a data entry job.

The law firm I’d taken a temporary PA role at was starting its own trade mark practice and needed someone to, essentially, take data from a spreadsheet and plug it into our new IP management platform account.

I was due to move away from the area in about a year’s time, but have always been easily seduced by spreadsheets, and so I got stuck in as a “Trade Mark Assistant”.

Once the initial onboarding admin was done, I settled in to support the little team – one Senior Associate, and one Trade Mark Attorney, standing sternly at their desks with a print out of their deadline diaries.

I updated the fresh new records as directed, manned the incoming communications, and prepped the applications.

At the first opportunity I enrolled on the CITMA (or ITMA, as was!) Paralegal course and – despite fracturing my wrist on the tube on the way to the exam – passed with flying colours.

Around the time of my one-year anniversary in the role my email signature was duly updated to ITMA Trade Mark Paralegal.

Growing more comfortable all the time, I started to offer assistance with responding to the Office Actions I was docketing and forwarding on to the attorney.

We were still that same small team, and onboarding new clients all the time, so there was plenty of opportunity for me to get stuck in.

Before long I was responsible for the initial triage of all the watch notices, which segued neatly into starting to assist with the searching and clearance side of things.

The route to qualification

About three years in, there was a ‘Big Bang’ moment for the practice, where we merged with another and suddenly grew five-fold in numbers.

A new Trade Mark Attorney joined the team and asked me one day why I had never considered qualifying as an attorney myself - and I found that I didn’t have a very good answer.

As much as I loved spreadsheets, I enjoyed the “fee earning” work that I did more, and I wanted the chance to do more of it.

I was roughly aware of the route to qualification – one of my colleagues had just started on it – but unlike him I didn’t have a law degree, nor did I live in London in easy reach of the courses at Queen Mary or Brunel.

And if those things didn’t count me out, at that time I had a one-year-old baby to factor in. 

Of course, with a supportive employer, none of these things counted me out.

Come Autumn 2019, my email signature changed again, this time to Trainee Trade Mark Attorney, and off I went to Queen Mary.

Although not having a law degree was no bar to enrolment, it did mean I had to kick off with a two-week intensive course on the fundamentals of English law.

After the initial induction weeks, Queen Mary was taught on alternate weekends, on Friday and Saturdays.

I’d get the train up to London after putting my toddler to bed on a Thursday night, stay in a hotel for two nights, and rush home on the Saturday evening.

By this point, I had been working in trade mark support for five years and I was one of only a handful of paralegals on the course.

The “why” behind the “what”

While at times I seemed to have had much more practical exposure to things than some of my fellow students, I realised quickly that I really did have my cart before the horse on a lot of things, and had to unwind practices I knew by rote and learn the ‘why’ behind the ‘what’.

I remember particularly clearly the lecture we had on Sabel, and aural, visual and conceptual similarities, and how I sat there thinking: oh, that’s how you articulate what I’ve been doing for three years!

When describing the qualification journey to friends, I often use the metaphor of your driving test.

First you do the theory, and then the practical. Year One is just that, it’s theory.

It’s a lot of reading, absorbing, note-taking.

Work got busier and busier, I became more client-facing around this time, and sometimes it was a bit of a feat to do a full working day and then to immediately pick up some case law to read after my son went to bed.

But each and every week I felt incrementally better at my job. We had the first exam in January, and I remember standing on the street afterwards thinking: that was actually fine. Bring on the next two exams in the spring!

In March 2020, we of course went into lockdown. My son’s nursery closed and I found myself juggling childcare, work and study.

The last two exams were adapted into “take at home” and everything became a bit of a blur; but, before I knew it, I had confirmation that I’d achieved a Distinction and my signature block changed yet again, this time to Part-Qualified Trade Mark Attorney.

Year Two

I then had a year off study, consolidating my knowledge ahead of starting Year Two, “the practical”, at Nottingham Law School in 2021.

This year came with its own challenges – I found out I was pregnant with my second son the night before the first day of teaching, and spent much of module one feeling sleepy and queasy and avoiding drinks receptions.

Luckily, this part of the course is much more energising, teaching the practical skills of the trade mark attorney.

You get to get stuck into mock hearings, mediations, trials and client interviews, and you are ultimately assessed based on three exams and three practical exercises.

When you’re on your feet roleplaying as the enraged CEO of a charity at a pretend CMC, there’s less opportunity for morning-sickness to take you down.

I made it through two exams and two practicals before I was too pregnant to travel and took a break for maternity leave, joining the 2022 cohort for module 3 and the final assessments last summer, the then one-year-old baby up in Nottingham with me, along for the ride.

My second Distinction and ultimate qualification was confirmed just ahead of my nine-year anniversary in trade marks. Another signature change: Associate (Trade Mark Attorney).

Although nine years feels like a lifetime (and certainly the process of laying it all out like this quite nicely underlines that!), I am so grateful that I’ve come up from roles in Formalities and paralegal support.

Formalities are the legs that every trade mark practice stands on, and I understand it from the toes up, can muck in with any form, any report, and understand what I need from our paralegals (and what they need from me!) and how best to articulate it.

I do wish I had advocated for myself and started off on the journey to qualification a little earlier, however I didn’t really grasp that this was something truly open to me, or something that I – with no law background – could ever excel at.

I understand that it’s much more common nowadays for Formalities staff to qualify, which can only be a boon to the profession.

But if reading this has put a little fire in one more paralegal’s belly, then I take that as a win.

Any paralegals who would like a sounding-board, or to ask any questions about how to get on the path to qualification, please do feel free to message me on LinkedIn.

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