A Law Student’s Guide to Becoming a Trademark Lawyer
Alt Legal Team | April 24, 2023
Choosing an area of law to focus on can be daunting, whether you’re a law student, recently graduated from law school, or about to begin your law school education. It often depends on what courses you managed to take (and do well in) during law school, what job experience you got during clerkships, and sometimes, what your undergraduate area of study was. But, choosing to specialize in trademarks is a great choice for several reasons:
- Trademark law is based on Federal laws. No matter what state you practice in, the laws are the same and you can represent clients based anywhere.
- Trademark law is exciting because you are often working with businesses, either new or established, embarking on new business ventures.
- While you may specialize in trademarks, you will also have the opportunity to work on other related IP matters including copyright, domains, licenses, contracts, etc. You may even support IP litigation.
- Because their skillset is so nuanced and advanced, IP lawyers are among the highest paid lawyers.
- Trademark law often attracts people who are interested in arts, entertainment, media, and pop culture as trademarks have a great impact on these arenas. This gives you an opportunity to work with like-minded people as well as clients who work in these fields, including artists, designers, musicians, etc.
Many lawyers have found trademark law to be a rewarding career. If you’re convinced that trademark law is the right area for you, it’s a good idea to begin mapping out your path before you even apply to law school. This article outlines how you can tailor your law school experience towards a successful career in trademark law.
Intellectual Property Courses
If your goal is to become a trademark lawyer, be sure to check out the course offerings available at law schools before you even apply. Some schools have much more robust offerings for intellectual property and trademark law than others. You’ll want to ensure that the schools that you are considering offer these courses consistently so that you’ll have opportunities to take them. Sometimes, courses are offered on a rotating basis and may not be available when you want to take them, typically in your second and third years after you’ve completed your first-year core requirements. Look for courses on topics including:
- Intellectual Property
- Trademarks and Unfair Competition
- Copyright Law
- Patent Law
- Trade Secrets
- Art Law and Cultural Heritage
- Entertainment/Media Law
- Fashion Law
- Technology Law
- Internet Law
- Privacy Law/Information Privacy Law
- IP Licensing and Drafting
- Copyright and Trademark Litigation
- Sports Law
- International IP
- Advertising Law
- Social Media Law
- Music Law
- NFTs and Blockchain Governance
Other important areas of study for trademark lawyers include:
- Federal court litigation
- Legal writing
- Contract drafting
- Business law and commercial transactions
- Entrepreneurial and small business law
- Corporate law
Once you are an admitted student and are considering your course schedule, some schools allow you to pursue a concentration in intellectual property law by taking particular courses. This is akin to selecting a major in college. A concentration in intellectual property is not a requirement to practice IP law, nor is it a job prerequisite, however it can help to demonstrate your interest in IP and set you apart from other job candidates.
It’s important to develop relationships with your professors as well. Ask questions in and after class, visit during office hours, or send emails with your thoughts. If you feel like you’ve developed a nice rapport, you may ask your professor for an informational session about pursuing a career in intellectual property and trademark law. A professor can serve as a mentor and provide you with references when applying for clerkships. They may even be able to refer you to particular law firms, judges, or other practitioners who are hiring law students as clerks.
LLM in Intellectual Property
An LLM is a Masters of Law degree, a program of study that JDs may pursue in order to gain specialized expertise in a particular area of law. In the United States, there are many LLM programs that offer a specialization in intellectual property.
For students who graduate from US-based law schools, it is not necessary to get an LLM to practice intellectual property law in the United States. However, you may choose to obtain an LLM in IP if:
- You attended a foreign law school and intend on practicing in the United States – some states require an LLM.
- Your law school didn’t offer enough opportunities to learn about intellectual property law.
- You decided late in your law school career that intellectual property is the right field for you and you now want to take courses on IP or specialized areas within IP.
- You attended a lower-ranked law school and would like to study for an LLM at a more prestigious school to build your resume.
Internships, Externships, Clerkships, and Jobs in Intellectual Property
While it’s important to select relevant courses to build your foundational understanding of intellectual property law, equally important is to develop practical skills. Selecting the right work experience is imperative because it will prepare you for your first job out of law school. Remember that law school is unlike medical school. Practical training is not part of the curriculum nor is it a requirement to practice law. As a law student, it’s your responsibility to gain as much knowledge and experience as you can before you begin working as an admitted attorney.
When it comes to building this practical foundation of skills in trademarks, law students should look for work opportunities that enable them to:
- Understand the trademark prosecution process – US and international
- Learn trademark docketing procedures (including how to use trademark docketing software)
- Conduct trademark searches using the USPTO search system, Internet sources, and more
- Review trademark search and clearance reports and report to clients
- Write cease and desist letters and other enforcement proceedings
- Draft office action responses and research case law to support arguments
- Draft contacts, licenses, and other agreements pertaining to trademarks
- Support all aspects of trademark litigation
The best environment to learn these types of skills is typically a law firm that is a large firm with an intellectual property department and a dedicated trademark prosecution group, or a boutique IP law firm with trademark prosecution specialists. Law students can also benefit from in-house job placements at companies where there are significant intellectual property and trademark issues and large IP portfolios handled in-house. Some companies use outside counsel to handle their trademark work, docket management, or enforcement proceedings, so you will not have the opportunity to work on these types of skills if you take an in-house position. When interviewing for an in-house position, be sure to ask what type of work is handled in-house and what type of work is sent to outside counsel.
Trademark Law Clinics
Some law schools offer clinics as a means of earning credit towards your degree. Clinics are an excellent way to gain practical experience under the helpful guidance of a professor or other clinic director who is a practicing attorney. By participating in a clinic, you will have the opportunity to learn more about what goes into a lawyer’s day-to-day work and to practice your client relations skills. If your law school offers a clinic relating to intellectual property or trademarks, consider this an incredibly fortunate opportunity and be sure to take advantage of it. Some law schools may offer clinics for entrepreneurs and small businesses, some of which may have trademark and intellectual property needs as well. These types of clinics can also be great opportunities for law students who are interested in pursuing trademark and intellectual property law. You can see a list of patent/trademark law school clinics that are part of the USPTO Law School Certification Program here (expand the tab “Get help from a law school clinic.”)
Many clinics utilize trademark docketing software to manage clinic clients’ trademarks. Alt Legal provides its software free of charge to law school clinics to help law students learn how to use docketing software, understand the trademark prosecution process, and be better prepared for their clerkships and first jobs out of law school. Getting hands-on experience with docketing software in a clinic can help build your resume and make you stand out from other job candidates, as you will require less training.
Intellectual Property Law Journals and Writing Competitions
Trademark lawyers are primarily transactional lawyers and therefore, writing skills are very important. When prosecuting a trademark before the USPTO, most of your communication with trademark examiners is done in writing. Your ability to effectively communicate in writing can make the difference between getting your clients’ marks registered or not.
You can hone your writing skills by taking legal writing courses, but also by participating in your law school’s law review or other journals. If your law school offers a journal specifically related to intellectual property law, you should try to get involved as a writer, editor, or research assistant.
Additionally, there are many writing competitions available to law students who are interested in writing and researching intellectual property topics. These competitions are offered through law schools and bar associations and provide students the opportunity to write on an intellectual property-related topic of interest. Winners may receive a cash prize and enjoy having their article published in a school or bar association publication. Winning a writing competition is an excellent resume booster – not only did you succeed in winning a writing competition, but you’ve demonstrated interest in a particular area of law, and you’ve become a published author.
Trademark Paralegal Studies
The very best trademark lawyers are well-rounded and not only have an in-depth understanding of intellectual property law, but also know USPTO procedures inside out. Typically, a trademark paralegal will handle administrative aspects of USPTO filings, but a trademark lawyer should learn all of the nuances involved in USPTO practice and procedures.
While you are in law school, you may seek out additional coursework, webinars, or reading pertaining to trademark paralegals. Alt Legal offers a free Trademark Paralegal Course which law students may take advantage of as well. This online course is divided into eight sections and is taught by expert trademark paralegals and lawyers. You can take the course at your own pace and take quizzes throughout to test your knowledge.
Become Proficient in Legal Technology
Intellectual Property involves the protection of ideas and innovation. Your clients are going to be creative and business-minded, and often very forward-thinking and tech savvy. It follows that you’ll need to stay on the cutting edge of technology to serve your clients and accomplish their legal goals.
Not only is it important that you keep up with technology to improve your client relations, but you are also ethically bound to do so. 40 states have adopted ethical rules requiring lawyers to stay abreast of both the nuances of their practice area as well as some broader aspects of the legal practice, such as the development of new technology. Trademark lawyers must pay close attention to this requirement because they use IP docketing software to manage their trademark portfolios and keep track of deadlines. Adding an extra layer of complexity, trademark attorneys practicing before the USPTO are subject to their state bar’s ethical rules as well as the USPTO’s Rules of Professional Conduct. There have been several instances before the USPTO Office of Enrollment and Discipline where practitioners were sanctioned for failure to use technology to keep track of important USPTO deadlines. Read more about the importance of staying up-to-date with technology so that you can meet your ethical obligations.
Trademark lawyers must adopt sound technology to keep track of their dockets and should choose the most advanced technology available to best meet their clients’ needs and their ethical obligations. The most technologically advanced IP docketing software, like Alt Legal IP docketing software, includes innovative features that allow you to better serve your clients including:
- Fully automated docketing software that pulls information and updates from IP offices and automatically updates your docket, allowing you to spend more time on important client matters as opposed to docket administration.
- One-click reporting, making it easy for you to generate reports for clients.
- Unlimited read-only client access to their docket, allowing clients to access their dockets 24/7.
- Integrated USPTO trademark application forms, allowing clients to easily provide information to you for filing with the USPTO.
Join Trademark Communities
A key way to succeed as a trademark lawyer is to build your network. Trademark law is a relatively small and nuanced area of law and trademark lawyers enjoy getting to know each other through bar associations, INTA, listserves, the Alt Legal Community, and more. Networking is important when it comes to searching for jobs, but also for sharing knowledge and resources so that you can become a better practitioner.
As a law student, you can join many bar associations as a student member for a low fee or no fee. Find local bar associations with IP or trademark divisions so that you can meet local practitioners. These attorneys will be important contacts for when you are job searching or looking for mentorship.
Another way to meet other trademark lawyers is to get involved with larger trademark communities like INTA (International Trademark Association). INTA is a global trademark community with over 35,000 members. INTA holds an annual meeting which is a very important opportunity for trademark lawyers to learn about important law and policy updates, discuss trademark practice, meet global partners, and of course, to network. INTA offers reduced student and recent graduate membership rates.
Law students are also welcome to join the Alt Legal Community which is free to all members. The Alt Legal Community is made up of trademark professionals who enjoy sharing knowledge and connecting about trademark law. Alt Legal Community members connect at our webinars and events and enjoy partaking in our many resource offerings:
- Alt Legal Webinars. We offer free CLE webinars where industry leaders discuss important trademark and IP law topics, practice tips, and more.
- Alt Legal Resource Library. The Alt Legal Resource Library features our collection of resources covering trademark and IP law, law practice management, and IP news and current events.
- I ❤️ Trademarks Newsletter. Our weekly email newsletter contains concise and often lighthearted recaps of legal updates, job postings, and as many puns as we can cram in!
- Alt Legal Blog. Our blog is a go-to resource for all things trademark and IP featuring articles authored by Alt Legal’s team and industry experts.
Another great way to get involved with other trademark practitioners is to start following them on social networks. Many trademark practitioners have active social media presences on LinkedIn, Facebook, Twitter, Instagram, YouTube, and TikTok. You can search for lawyers using hashtags such as #trademarks, #branding, #trademarklawyer, #iplaw, #brandprotection. By following trademark practitioners on social media, you’ll not only learn about important issues affecting trademark clients, but you’ll get a crash course in legal marketing. Most of these social media accounts are geared towards clients and developing new business. You can see from these accounts what type of content is engaging and how you can establish yourself as an expert in trademark law by posting the right type of content. Additionally, if you find trademark practitioners with a social media presence who live in your area, by all means reach out! See if you can set up a call or a meeting to learn more about their practice. You might even inquire about employment or internship opportunities. You’ll be pleasantly surprised to see how warm and welcoming the trademark community is!
Trademark law is an exciting and rewarding field and the Alt Legal team is happy to help guide your way. We’re known as the “I ❤️ Trademarks” company for a reason, so feel free to reach out anytime with questions! Our friendly and knowledgeable team would be happy to chat and help make introductions.