Patent Prosecution/Trademark Associate

About the Intellectual Property Patent and Trademark Prosecution Section

Our patent and trademark practice offers comprehensive strategic counseling in patent and trademark law and practice that enables our clients to clarify goals, find solutions, and achieve results throughout the innovation or business lifecycle. On the trademark side, our attorneys advise clients on clearing, prosecuting, and managing their trademark rights, policing and enforcing their brand rights, licensing and other business transactions related to their brand portfolios, and generally helping brands navigate the nuances of brand protection within their various industries.

Responsibilities

Our Client is seeking an associate with 2+ years of relevant experience to join our trademark team in San Francisco, San Diego or New York. Candidates should have substantial hands-on trademark prosecution experience, including conducting domestic and international trademark clearance searches, and actively performing trademark prosecution and enforcement tasks. Candidates should be organized, self-motivated, responsive, creative and have the ability to manage a busy prosecution and enforcement practice.

Conduct and evaluate preliminary and in-depth U.S. and global trademark clearance searches

Draft identification of goods/services, evaluate specimens and Statements of Use and draft substantive office action responses before the USPTO

Counsel on Madrid Protocol filings

Conduct enforcement investigations, draft cease and desist letters and takedown notices, and negotiate trademark settlement agreements and coexistence agreements

Draft trademark, copyright and NIL licenses and assignments

Copyright counseling and filing; domain name enforcement including drafting UDRP complaints

Clear content for use on social media and in digital marketing

Provide diligence and corporate transaction support on trademark, copyright and domain matters

Collaboration with team members is an important component of any role at the company. Therefore, the firm encourages working from the office approximately 60% of the time in accordance with the firms published guidelines.

Qualifications

Graduated with a JD or LLM from an ABA-accredited law school

Must be admitted or eligible for admission in California or New York

Direct trademark experience with a focus on clearance, prosecution and enforcement

Strong legal research, legal writing and analytical skills

Excellent written and oral communication skills

Professionalism in working and engaging with clients and colleagues

Ability to prioritize, meet deadlines and balance competing responsibilities

Ability to stay organized and exercise extreme attention to detail

Ability to collaborate and work effectively in team settings

Our Client is an Am Law 100 law firm with over 500 attorneys serving clients worldwide. Our attorneys combine legal, business and industry insight to help navigate shifting challenges. We advise business leaders, entrepreneurs and investors on pivotal deals, disputes and regulatory matters within our core practice areas. We are strategically located to meet the needs of our clients, with offices in Boston, Los Angeles, Miami, New York, San Diego, San Francisco, Toronto and Washington, DC.

The salary range for this position is $235,000 to $310,000. This position is bonus eligible. Company offers a comprehensive benefits package.