Trademark Attorney

Job Title: Trademark Attorney
Job Location: San Francisco, CA

Job Overview:
A law firm seeks an experienced Trademark Attorney to join their dynamic intellectual property team. The ideal candidate will possess 5-8 years of experience in trademark law, including handling prosecution, clearance, strategic advice, and enforcement matters. This role requires superior analytical, communication, and negotiation skills and a solid commitment to providing high-quality legal services to clients.

Duties and Responsibilities:

• Manage trademark prosecution matters, including preparing and responding to office actions.
• Conducted comprehensive trademark clearance searches and provided detailed risk analysis.
• Handle U.S. and foreign trademark oppositions, cancellations, and enforcement actions.
• Advise clients on selecting, registering, protecting, and enforcing trademarks.
• Draft, review, and negotiate trademark-related agreements, including licenses and settlement agreements.
• Provide strategic counseling and guidance to clients regarding trademark portfolios.
• Assist in managing global trademark portfolios and coordinating foreign filings.
• Represent clients in proceedings before the U.S. Patent and Trademark Office (USPTO).
• Collaborate with international law firms to handle trademark matters in foreign jurisdictions.
• Conduct due diligence and prepare legal opinions on intellectual property in business transactions.
• Stay updated on evolving trademark laws, regulations, and enforcement trends.

Qualifications and Requirements:

• Experience:

  • 5-8 years of legal experience in trademark law, including prosecution, clearance, and enforcement.
  • Minimum four years of experience working in a law firm environment.
  • Experience with U.S. and foreign filings, trademark oppositions/cancellations, and trademark enforcement.
  • Proficiency in handling office actions, conducting clearance searches, and providing strategic advice.

• Education:

  • Juris Doctor (J.D.) degree from an accredited law school.
  • Strong academic credentials required.

• Certifications:

  • Admission to the State Bar of California is required.
  • Admission to practice before the U.S. Patent and Trademark Office (USPTO) is preferred but not mandatory.

Skills and Abilities:

• Excellent written and verbal communication skills.
• Strong analytical and problem-solving abilities, particularly in legal contexts.
• Ability to work independently and manage multiple client matters simultaneously.
• Detail-oriented with the ability to conduct thorough legal research and analysis.
• Proficiency in negotiating and drafting complex agreements.
• Familiarity with IP management software and other legal technologies.
• Ability to collaborate effectively with clients, colleagues, and international partners.
• High level of professionalism and commitment to client service.

Additional Attributes:

• Strong organizational and time management skills.
• Ability to thrive in a fast-paced, deadline-driven environment.
• Demonstrated interest in trademark law and intellectual property protection.

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.