Trademark Attorney

Job Overview

A law firm is seeking a Trademark Attorney to join its dynamic team in Chicago, IL. The successful candidate will have the opportunity to contribute to a practice that represents clients in trademark matters and disputes on a regional, national, and international basis. This position is ideal for an attorney who has experience in trademark clearance, filing strategies, and prosecution, as well as enforcement and dispute resolution. The ideal candidate will also have a solid understanding of related fields such as advertising law, intellectual property licensing, and social media issues.

Key Duties & Responsibilities

• Handle all aspects of trademark clearance, including conducting searches and advising on trademark availability.
• Develop and implement trademark filing strategies for clients on a regional, national, and international level.
• Manage trademark prosecution, including preparing, filing, and responding to office actions.
• Conduct enforcement investigations and issue cease and desist letters regarding trademark infringement.
• Negotiate co-existence and settlement agreements related to trademark matters.
• Advise clients on transactional matters, including advertising law, intellectual property and technology licensing, copyright, and social media.
• Collaborate with the litigation team on trademark disputes and enforcement actions.
• Provide strategic counsel to clients on brand protection and intellectual property portfolio management.
• Stay updated on trademark law developments and trends to ensure clients are informed of relevant legal changes.

Requirements

• A minimum of 5 years of experience in trademark law.
• 3-5 years of specific experience related to trademark clearance, prosecution, enforcement, and dispute resolution.
• Strong experience with cease and desist letters, enforcement investigations, and negotiated co-existence agreements.
• Transactional experience related to advertising law, intellectual property licensing, or copyright is a plus.
• Ability to manage multiple projects and deadlines in a fast-paced environment.
• Exceptional attention to detail and strong problem-solving skills.

Education & Certifications

• Juris Doctor (JD) degree from an accredited law school.
• Active law license in good standing.
• Strong academic credentials with a focus on intellectual property law preferred.

Skills

• Excellent research and writing abilities.
• Critical thinking and analytical skills.
• Strong communication and negotiation skills.
• Ability to work independently and collaboratively within a team environment.
• Proficiency in managing trademark portfolios and databases.
• Familiarity with IP management software is a plus.

Job Location

• Chicago, IL

This Chicago, Illinois law firm delivers advice that drives progress. Super Lawyers has recognized over 50 of their attorneys. Their focus resides in biotechnology & life sciences, cybersecurity & data privacy, education, financial institutions, healthcare, hospitality & entertainment, and technology. In service for over 85 years, they've handled legal services that affect the very infrastructure of a city.