Description:

Summary:
The Trademark Staff Attorney supports the Firm's Technology and Life Sciences group with a primary focus on trademark clearance and prosecution, branding initiatives, enforcement and licensing, UDRP and copyright registration.

Duties and Responsibilities:

Advise clients about branding, trademark strategy, prosecution, enforcement, licensing and other related matters.
Manage domestic and foreign prosecution for multiple clients, including drafting trademark/service mark applications, affidavits of use, maintenance and renewal documentation and correspondence to clients.
Draft responses to office actions issued by the USPTO.
Provide clearance analysis for new trademarks.
Prepare draft cease and desist demands and required follow-up.
Prepare draft pleadings and other filings for opposition proceedings and appeals.
Oversee and supervise paralegals who review trademark watch notices, conduct initial investigation of potentially problematic references, and assist with resulting enforcement actions.
Manage foreign trademark counsel and agents regarding registration, maintenance and enforcement matters.
Oversee paralegals and docketing staff to ensure timely and accurate filings at the USPTO, Trademark Trial and Appeal Board, and foreign IP offices.
Oversee paralegals who order and analyze search reports and provide cost estimates for trademark clearances, prosecution, recordation of assignments, security interest and title documents with the USPTO, Copyright Office and foreign IP offices, and maintenance.
Supervise paralegals who conduct due diligence ownership searches on trademarks, copyrights, and domain names in connection with corporate and finance transactions, including analyzing chain of title information, preparation of appropriate assignments, IP security agreements, and releases and ensuring IP assignments are properly executed, notarized and recorded.
Prepare draft of UDRP complaints and assists with filling and associated actions.
Advise on copyright application strategy; supports preparation and review of filings. Prepare draft DMCA take down requests.
Supervise, mentor and train paralegals as appropriate.
Perform other work related duties as assigned or as judgment or necessity dictates.

Salaries vary by location and are based on numerous factors, including, but not limited to, the relevant market, skills, experience, and education of the selected candidate. The target salary range for this role is below. Our compensation package also includes bonus eligibility and a comprehensive benefits program. Benefits information can be found here.

Target Salary Range
$191,900 - $237,100

Qualification Requirements: To perform this job successfully, an individual must be able to perform the Duties and Responsibilities (Duties) above satisfactorily and meet the requirements below. The requirements listed below are representative of the minimum knowledge, skill, and/or ability required. Reasonable accommodations will be made to enable individuals with disabilities to perform the essential functions of the job. If you need such an accommodation, please email staffrecruiting@sidley.com (current employees should contact Human Resources).

Education and/or Experience:
Required:

Law degree (J.D. or equivalent)
Admitted in good standing to the California bar, or eligible to seek prompt admission
Minimum 5 years of focus on Trademark work, including knowledge of USPTO and TTAB rules and procedure.
Familiarity with international trademark filing procedures and conducting due diligence reviews of Intellectual Property.
Adept in drafting correspondence and diligence memoranda, and managing worldwide trademark portfolios and enforcement actions.

Sidley Austin LLP is an Equal Opportunity Employer.