Trademark Law Board Certification in North Carolina

Under 27 NCAC 01D Section .3102, the specialty of "trademark law" is defined as the "practice of law devoted to commercial symbols" which typically involves:

• advising clients regarding creating and selecting trademarks;
• conducting and/or analyzing trademark searches;
• prosecuting trademark applications;
• enforcing and protecting trademark rights; and
• counseling clients on matters involving trademarks.

Attorneys in North Carolina who specialize in trademark law practice before the following agencies:

• the United States Patent and Trademark Office (USPTO);
• the Trademark Trial and Appeal Board (TTAB);
• the Trademark Division of the NC Secretary of State's Office; and
• the North Carolina state or federal courts.

Any attorney in North Carolina who applies for board certification as a specialist in Trademark Law must meet certain standards, including showing substantial involvement through spending a certain amount of time performing substantive legal work in trademark law matters.

In some cases the attorney must make a showing of substantial involvement by showing the performance of certain tasks such as:

• portfolio management;
• prosecution of trademark applications;
• search and clearance of trademarks;
• licensing;
• due diligence;
• domain name selection and dispute resolution;
• TTAB litigation;
• state court trademark litigation;
• federal court trademark litigation;
• trademark dispute resolution; and
• international trademark law.

A portion of that time needed to show substantial involvement can be met through a showing of a practice equivalent such as:

• service as a law professor concentrating in the teaching of trademark law:
• service as a trademark examiner at the
• the United States Patent and Trademark Office (USPTO);
• or a functionally equivalent trademark office for any state or foreign government;
• service as an administrative law judge for the Trademark Trial and Appeal Board (TTAB).

The attorney in North Carolina who applies for specialty certification in North Carolina must complete a certain number and type of continuing legal education (CLE) credits related to trademark law or related courses such as copyright, business transactions, sports and entertainment law, internet law, franchise law, trade secrets, and unfair competition.

The attorney must submit to peer review by certain lawyers and judges who are familiar with the attorney's practice and focus on trademark law. Additionally, the attorney must pass a written examination to show his or her skills and knowledge in trademark law on topics that might include:

• North Carolina Trademark Act (N.C. Gen. Stat. Chap. 80);
• The Trademark Counterfeiting Act of 1984 (18 USC §2320 et seq.);
• Trademark Manual of Examining Procedure (TMEP);
• Trademark Trial and Appeal Board Manual of Procedure (TBMP);
• The Lanham Act (15 USC §1501 et seq.); and
• Trademark Regulations (37 CFR Part 2).

The original period of certification in Trademark law will last for five years. During that time the attorney must apply for continued certification within certain time limits. Although no written examination is required for continued certification, the attorney must meet requirements for completion of certain continuing legal education (CLE) credits, a showing of substantial involvement and peer review.

At Lawyer Legion, we understand the important role of specialty certification programs in helping the public find a qualified attorney in specialty areas of the law such as trademark law.

Finding the most qualified attorneys is difficult. Specialty certification programs make that job easier by helping you identify attorneys who have undergone an evaluation process to have their knowledge and experience independently evaluated.

We created our attorney directory to help you as you begin your search for the best attorney for your particular case. Read more about trademark law and tips on finding the top attorneys throughout North Carolina including Charlotte, Raleigh, Greensboro, Winston-Salem, Durham, Fayetteville, Cary, Wilmington, and High Point.