Trademark Attorney

A law firm in Irvine, CA, is seeking an experienced Trademark Attorney with 5-8 years of legal experience in trademark law. The ideal candidate should have a strong background in trademark prosecution, clearance, strategic advice, counseling, and enforcement, including experience in responding to office actions, conducting clearance searches and analysis, handling foreign filings, and managing oppositions/cancellations. This role requires superior written and verbal communication skills and strong academic credentials.

Duties:

• Respond to office actions from the U.S. Patent and Trademark Office (USPTO) and foreign trademark offices.
• Conduct trademark clearance searches and provide analysis to assess potential conflicts.
• Manage foreign filings and coordinate with international associates for trademark protection.
• Handle U.S. and foreign oppositions and cancellations, including preparation of necessary documents and representation.
• Oversee trademark enforcement actions, including cease and desist letters and litigation support.
• Draft and negotiate trademark license agreements, settlement agreements, and other related documents.
• Provide strategic trademark advice and counseling to clients on trademark portfolio management and protection strategies.
• Collaborate with clients and internal teams to address and resolve trademark-related issues.

Requirements:

• Juris Doctor (J.D.) degree from an ABA-approved law school.
• Admission to practice law in California.
• 5-8 years of legal experience in trademark law, including trademark prosecution, clearance, strategic advice, counseling, and enforcement.
• At least 4 years of experience working at a law firm specializing in trademark law.
• Demonstrated experience in responding to office actions, conducting clearance searches, managing foreign filings, handling oppositions/cancellations, and drafting license and settlement agreements.
• Strong academic credentials.
• Superior written and verbal communication skills.
• Ability to manage multiple cases and deadlines efficiently.
• Proven ability to provide high-quality legal advice and representation.

Education:

• Juris Doctor (J.D.) degree from an ABA-approved law school.

Certifications:

• Admission to practice law in California.

Skills:

• Extensive experience in trademark prosecution, clearance, and enforcement.
• Strong analytical and problem-solving skills.
• Excellent written and verbal communication skills.
• Proficiency in drafting and negotiating trademark-related agreements.
• Ability to manage and prioritize a high-volume caseload.
• Strong attention to detail and organizational skills.
• Ability to work collaboratively with clients and team members.

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.