Trademark Attorney

Job Title: Trademark Attorney
Location: New York City, NY

Job Overview:
A law firm in New York City is seeking a highly skilled Trademark Attorney with 5-8 years of experience in trademark law. The ideal candidate will be proficient in trademark prosecution, clearance, strategic counseling, and enforcement. This role requires a solid ability to provide legal advice on trademark-related matters, manage U.S. and foreign trademark portfolios, and handle disputes. The successful candidate will bring superior communication skills and a proven track record in handling complex legal issues within a law firm environment.

Key Responsibilities:

• Manage trademark prosecution, including preparation and filing of trademark applications.
• Conduct trademark clearance searches and analyze results to advise clients on registration prospects.
• Respond to office actions issued by the USPTO and foreign trademark offices.
• Oversee foreign filings, including coordination with foreign counsel.
• Handle U.S. and foreign trademark oppositions and cancellations.
• Provide strategic advice and counseling on brand protection and trademark enforcement strategies.
• Draft, negotiate, and review trademark licensing agreements and settlement agreements.
• Advise clients on global trademark portfolio management and strategy.
• Handle trademark enforcement actions, including cease-and-desist letters and infringement litigation support.
• Assist with intellectual property due diligence in mergers and acquisitions.

Requirements:

• 5-8 years of legal experience focused on trademark law.
• Proven experience in trademark prosecution, agreements, clearance, strategic advice, counseling, and enforcement.
• Experience responding to office actions and handling U.S. and foreign oppositions/cancellations.
• Proficiency in conducting clearance searches and analyzing results.
• Strong experience drafting license and settlement agreements.

Education & Certifications:

• Juris Doctor (JD) from an accredited law school.
• Active Bar membership in New York or eligibility for New York State Bar admission.

Skills & Qualifications:

• At least 4 years of experience working in a law firm, with demonstrated trademark expertise.
• Superior written and verbal communication skills.
• Strong research and analytical skills.
• Ability to work independently and manage multiple clients and deadlines.
• Excellent negotiation and drafting skills.
• High level of attention to detail and organizational skills.
• Strong academic credentials.

Preferred Experience:

• Experience managing global trademark portfolios.
• Knowledge of international trademark law and foreign filing procedures.

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.