Trademark Attorney

Job Title: Trademark Attorney
Location: Washington, DC

Job Overview:
A law firm seeks a highly skilled Trademark Attorney to join its dynamic legal team. The ideal candidate will have extensive experience in trademark prosecution, agreements, clearance, strategic advice, counseling, and enforcement. This attorney will be responsible for managing a wide range of domestic and international trademark-related matters. The candidate must be capable of handling complex trademark issues, providing strategic advice to clients, and navigating the intricacies of U.S. and foreign trademark laws.

Key Responsibilities:

• Manage trademark prosecution matters, including preparation and filing of trademark applications.
• Respond to office actions from the United States Patent and Trademark Office (USPTO) and foreign trademark offices.
• Conducted clearance searches and provided analysis to clients on trademark availability and risks.
• Oversee foreign filings, oppositions, and cancellations in various jurisdictions.
• Advise clients on trademark enforcement strategies, including cease-and-desist letters and legal actions.
• Draft, negotiate, and review trademark-related agreements, such as licensing and settlement agreements.
• Provide strategic trademark counseling to clients on brand protection and development.
• Handle U.S. and foreign trademark opposition and cancellation proceedings.
• Assist in managing trademark portfolios and brand strategies for clients.
• Monitor and manage global trademark portfolios and advise on potential infringements.
• Collaborate with clients and internal teams to provide comprehensive legal solutions.

Requirements:

• 5-8 years of legal experience in trademark law, with a strong focus on prosecution, agreements, clearance, and enforcement.
• At least 4 years of experience handling trademark-related matters at a law firm.
• Demonstrated experience responding to office actions, conducting clearance searches, managing foreign filings, and overseeing U.S. and foreign oppositions/cancellations.
• Strong understanding of U.S. and foreign trademark laws and procedures.
• Experience drafting, negotiating, and reviewing licensing and settlement agreements.
• Proven ability to provide strategic legal advice on trademark enforcement and brand protection.

Education & Certifications:

• Juris Doctor (JD) from an accredited law school.
• Active membership in good standing with the Washington, DC Bar (or ability to waive in).

Skills & Competencies:

• Superior written and verbal communication skills, with the ability to explain complex legal matters clearly and concisely.
• Strong research, analytical, and problem-solving skills.
• Excellent attention to detail and organizational abilities.
• Ability to manage multiple clients and matters simultaneously in a fast-paced environment.
• Proficient in managing trademark portfolios and navigating international trademark laws.
• Strong client-facing skills and a proactive approach to providing legal advice and solutions.

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.