What you’ll be doing…
In this position, the attorney will be working independently with a wide range of internal clients regarding availability and protection of trademarks, while working in a team environment with other trademark professionals. Responsibilities will include, but not be limited to:
- Reviewing and analyzing preliminary and full trademark clearance searches in the US and throughout the world and rendering availability opinions.
- Preparing and filing trademark applications, prosecuting trademark applications and portfolio management.
- Draft Office Action responses for US trademark filings and manage outside counsel on the preparation of responses throughout the world.
- Evaluating and filing and prosecuting trademark oppositions, cancellations and other similar proceedings.
- Drafting and negotiating coexistence agreements, consent agreements, settlement agreements and trademark and other IP license agreements.
- Managing budgets for trademark clearance and protection work, including developing initiatives for the reduction, control and budgeting of outside counsel costs.
- Creating and maintaining templates and processes that are effective and efficient.
- Providing metrics to management.
- Assisting to develop educational and compliance training programs regarding trademarks.
- Analyzing potential infringement situations and assisting in assertion of rights.
- Counseling on all aspects of trademark law.
- Other duties as assigned by head of department.
What we’re looking for…
You’ll need to have:
- JD degree and six or more years of relevant work experience.
- Bar membership and needed licenses.
- At least 5 years of substantive trademark clearance, prosecution and maintenance experience in-house and/or law firm.
- Willingness to travel on a limited basis for conferences and/or trainings.
Even better if you have:
- Ability to handle multiple projects simultaneously and respond to time-sensitive requests with quality work product in a fast-paced, often unpredictable environment, with a large number of clearance searches, at all times in a cost-effective manner.
- USPTO examining attorney experience.
- Ability to work closely and collaboratively with a team as well as independently.
- Ability to exercise sound commercial as well as legal judgment.
- Ability to provide clear and concise written and oral advice.
- Strong and committed work ethic.