Overview

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:

  • JDdegree.
  • 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.

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