IP Trademark Associate - West Coast Only
Job Locations:US-Any US Office | US-WA-Seattle | US-CA-Sacramento | US-CA-San Francisco | US-CA-Menlo Park | US-CA-Los Angeles | US-CA-Santa Monica | US-CA-Irvine | US-OR-Portland
ID: 2024-1482
Responsibilities
- Trademark Clearance and Prosecution:
- Conduct domestic and international trademark clearance searches.
- Handle trademark prosecution for domestic and international trademark portfolios.
- Draft and file office action responses before the USPTO.
- Draft descriptions of goods/services and oversee new US trademark filings, Statements of Use, renewals, and maintenance filings.
- Trademark Enforcement and Litigation:
- Conduct enforcement investigations and draft cease and desist letters.
- Negotiate trademark settlement agreements.
- Handle administrative proceedings before the TTAB.
- International Trademark Matters:
- Manage international trademark filing, prosecution, and enforcement.
- Handle Madrid Protocol filings and coordinate with foreign counsel.
- Additional IP Responsibilities:
- Conduct preliminary trademark searches on USPTO database/Saegis.
- Assess protectability under copyright law and file/register copyrights.
- Draft and negotiate trademark license agreements.
- Conduct trademark and IP due diligence requests.
- Draft and record trademark assignments.
Attributes
- Very detail-oriented.
- Ability to multi-task and keep track of many deadlines and moving pieces.
- Highly reliable, responsive, takes ownership over assignments/clients.
- Strong problem solving and project management skills.
- Strong legal analysis and writing skills.
- Self-starter; someone who takes initiative, is comfortable interfacing with clients directly, and can take lead on some clients.
- Team player.
Qualifications
- Required Experience:
- 3-4 years' experience handling domestic and international trademark clearance, prosecution, and enforcement.
- Significant experience conducting preliminary trademark searches on USPTO database/Saegis.
- Significant experience drafting and filing successful office action responses before the USPTO.
- Significant experience drafting descriptions of goods/services and overseeing trademark filings.
- Significant experience conducting enforcement investigations and negotiating trademark settlement agreements.
- Significant international trademark filing, prosecution, and enforcement experience; adept at handling Madrid Protocol filings.
- Nice to have Experience:
- Some experience handling administrative proceedings before the TTAB.
- Some knowledge and experience assessing protectability under copyright.
- Some experience drafting and negotiating trademark license agreements.
- Some experience conducting trademark and IP due diligence requests.
- Some experience with drafting and recording trademark assignments.
- Additional Requirements:
- Juris Doctor (JD) degree from an accredited law school.
- Admitted to practice in CA or WA.
- Minimum of 3 years of experience in trademark law.
- Strong research, analytical, and writing skills.
- Excellent communication and interpersonal skills.
- Ability to work independently and as part of a team.
- Detail-oriented with strong organizational skills.
Why Orrick: Orrick is a leading global law firm known for its commitment to innovation and excellence. We offer a collaborative and inclusive work environment, opportunities for professional growth, and a competitive compensation package.
Compensation and Benefits:The expected salary range for this position is between $260,000 and $310,000. Orrick is committed to providing a comprehensive, competitive, and thoughtful total compensation package to our attorneys and staff. This role is eligible for compensated time off through the Flexible Time Off program, generous parental leave benefits, and paid holidays.
We are an Equal Opportunity Employer.
#J-18808-Ljbffr