Hello Mrs. Rotundo. Please tell us with whom do we have the pleasure?

My name is Carmela Rotundo and I have been a trademark and design attorney since 2000. I gained experience in the IP field working in different countries including the United States, France, Switzerland, and Italy. In my daily activity, I mainly deal with trademarks, filing and prosecuting them before the Italian and European Union Trademark Offices. I also deal with mediation and re-assignment proceedings of domain names.

Why do you like working as a trademark attorney?

I like advising clients on the best way to protect their IP rights, for example whether it is advisable, to file a trademark, a design or both.

Metroconsult is an IP boutique and our goal is to provide clients with tailored services. The advice I give is therefore always tailored on the specific needs of each single client and I think this is a big advantage that differentiates Metroconsult from its competitors. IP consulting is not only filing trademarks and designs, but it is listening carefully to clients to find the best solution to their needs. This is very appreciated by clients and ends in creating a long-term relationship based on trust and confidence.

What are some of the most common mistakes when it comes to trademarks?

I think that the most common mistake of a small, medium-sized enterprise is using a trademark without conducting any availability search. This could lead to receiving warning letters or more serious legal actions from owners of earlier IP rights. Therefore, I always recommend conducting trademark searches and file and use the mark only if it is available.

Another common mistake is when big businesses do not allocate enough resources in protecting their IP rights. I believe that, through a correct strategy, we can help them, advising for example, on what to file, and against whom they should act so that their resources are correctly allocated.

How do you work with clients to develop and protect their trademark portfolios?

I work with both big companies and small/medium-sized enterprises. SMEs need a lot of support. They need first to understand the importance of protecting IP rights and after we can start working on filing trademarks and designs. For big companies, instead, I work at a more strategical level in order to build and manage a strong IP Portfolio.

How do you stay up to date with changes in trademark and design laws?

I mainly read scientific reviews like the INTA Bulletin which is the review of the International Trademark Association, that provides useful updates and insights on trademark matters all over the world. I am currently part of the INTA Bulletin Committee and I regularly write articles for it. I’m also involved in the review published by the Italian Patent and Trademark Attorneys’s Institute. In addition, I’m a member of LES (Licensing Executive Society) and AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle) and, as an additional source of education, I attend their seminars. Sometimes I am called as a speaker to seminars and webinars organized by different institutions.


Thank you very much for your time today and all the valuable insights into the job of a Trademark and Design Attorney.



This interview is done by Emil Abseher, Helena Ehrlich, Lise Emanuelle Geahchan, Elsa Laziamond, and Jakob Roeckl  – Bachelor students at the ESCP Business School – as part of their Collective Project.