Trademark Attorney

Job Overview:

A law firm in San Diego, CA, is seeking a highly qualified Trademark Attorney with 5-8 years of experience in trademark law, including trademark prosecution, agreements, clearance, strategic advice, counseling, and enforcement. The ideal candidate will possess superior communication skills and have a proven track record of working in a law firm environment. The position offers a challenging and rewarding opportunity to work on complex trademark matters, including U.S. and international filings.

Key Responsibilities:

• Manage all domestic and international trademark prosecution aspects, including filing, monitoring, and maintaining trademarks.
• Conduct thorough trademark clearance searches and provide detailed analysis and recommendations to clients.
• Respond to office actions and correspondence from the U.S. Patent and Trademark Office (USPTO) and international trademark offices.
• Handle U.S. and foreign oppositions, cancellations, and enforcement proceedings to protect clients’ trademark rights.
• Draft and negotiate trademark-related agreements, including license agreements, settlement agreements, and co-existence agreements.
• Provide strategic advice and counseling to clients on developing, protecting, and enforcing trademark portfolios.
• Collaborate with international trademark counsel and manage foreign filings and related legal actions.
• Work closely with clients to develop and implement comprehensive global trademark strategies.
• Monitor trademark portfolios to ensure timely renewals and ongoing protection.
• Support litigation teams when necessary in trademark disputes and enforcement actions.

Requirements:

• Minimum of 5-8 years of trademark law experience, including prosecution, enforcement, clearance, and counseling.
• Experience with U.S. and foreign filings, oppositions, cancellations, and enforcement actions.
• Strong background in responding to USPTO office actions and managing the trademark prosecution process.
• Proven ability to conduct thorough trademark clearance searches and provide risk assessments to clients.
• Demonstrated experience drafting and negotiating trademark-related agreements.
• Strong academic credentials.
• A minimum of 4 years of experience working in a law firm environment.
• Superior written and verbal communication skills.

Education:

• Juris Doctor (J.D.) degree from an accredited law school.
• Member in good standing of the California State Bar.

Certifications:

• Admission to the California State Bar is required.

Skills:

• Exceptional legal research, analytical, and problem-solving skills.
• Strong attention to detail and ability to manage multiple deadlines.
• Proficiency in trademark docketing systems and other legal software.
• Excellent interpersonal and client management skills.
• Ability to work both independently and collaboratively in a team environment.
• Strong negotiation and drafting skills.
• In-depth knowledge of U.S. trademark law, with an understanding of international trademark laws being highly advantageous.

Job Location:

• San Diego, CA

A boutique law firm known as a leader in intellectual property law, this firm values a work/life balance and offers market pay. Any attorneys interested in patent prosecution should thrive here and, prospects for exit opportunities in the field are excellent.