Description:
Intellectual Property & Transactional Law Firm, a growing mid-sized law firm located in New York City, Tampa and with a national presence, provides sophisticated counsel and representation to a wide range of clients in multiple practice areas. We are seeking an experienced trademark attorney for our growing practice group. The ideal candidate 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.Purpose:
The Trademark Attorney will be responsible for working on trademark prosecution, including domestic and international trademark clearance searches. Actively perform trademark and prosecution and enforcement tasks. This role should have the ability to manage a busy prosecution and enforcement practice.
Essential Functions:
- Execute domestic and international trademark prosecution, including clearance searches, prosecution, defense and enforcement required.
- Draft and file office action responses before the USPTO.
- Counsel on Madrid Protocol filings.
- Conduct trademark clearance searches and evaluations across the U.S. and globally.
- Handle enforcement investigations, draft cease and desist letters, takedown notices, and trademark settlement agreements.
- Manage licensing for trademarks, copyrights, and NIL and conduct domain enforcement.
- Provide transaction support for trademark and copyright matters.
- Handle administrative proceedings before the TTAB.
- Prepare and enter the billing time for clients and prepare the time keeping utilizing a billing system.
- Perform all other tasks and duties as assigned.
Qualifications:
- Must possess a JD or LLM from an ABA-accredited law school required.
- State bar admission in jurisdiction of practice required.
- Minimum 3 years of direct experience in trademark prosecution and enforcement required.
- 3-5 years' experience of domestic and international trademark prosecution, including clearance searches, prosecution, defense and enforcement required.
- Experience with trademark and copyright counseling required.
- Experience with IP licensing and IP due diligence required.
- Must have strong communication, research, and analytical abilities required.
- Must have strong working knowledge of Microsoft Office Suite, including MS Word, Outlook, Excel, PowerPoint and Adobe Pro required; knowledge of Salesforce is preferred.
- Ability to read and write English fluently required.
- Excellent knowledge of grammar, spelling and punctuation required.
Behavioral Competencies:
- Ability to write and demonstrate exceptional communication skills required.
- Ability to communicate professionally and adapt interpersonal skills to a variety of audiences required.
- Ability to demonstrate excellent multi-tasking and time-management skills required.
- Ability to shift priorities quickly without compromising deadlines or quality required.
- Ability to proactively identify and address problems quickly required.
- Ability to demonstrate attention to detail required.
- Ability to work independently and in a team by assisting co-workers when required.
- Ability to thrive in high pressure environments required.
- Ability to communicate effectively with people and present a positive, professional image required.
- Ability to demonstrate behavior on a consistent basis that supports company values.
- Ability to work remote from a US residential address, if not working in a designated company office.
- Expected to be available and communicative during normal business work hours with flexibility to include evenings and weekends.
- Must have a professional and distraction-free workspace that is free from safety hazards.