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Trademark Counsel

3 months ago


Tampa, Florida, United States Baker McKenzie Tampa Center Full time

Position Overview:

The Staff Attorney will play a pivotal role in supporting the Firm's North American Brand Management practice. This position involves a substantial amount of trademark and project work in a fast-paced, deadline-oriented setting. It is an excellent opportunity for individuals with a strong passion for trademark law.

Main Responsibilities:

The primary duties of the Attorney include:

  • Delivering exceptional support on trademark issues, particularly in the areas of trademark clearance, prosecution, maintenance filings, and corporate due diligence for the Firm's clientele.
  • Assisting in the drafting of trademark applications and responses to Office Actions from trademark authorities globally.
  • Preparing client communication reports.
  • Managing docket and deadlines along with other trademark-related tasks as needed.
  • Supervising paralegals and support staff in relation to recordal projects and other trademark prosecution activities.

Qualifications:

  • A minimum of 3 years of experience in trademark law, with a focus on clearance, prosecution, maintenance filings, and corporate due diligence.
  • Strong academic credentials accompanied by excellent written and verbal communication abilities.
  • Preferred admission to the Florida bar, with good standing status.
  • Comprehensive knowledge of the TMEP and the rules and filing requirements for U.S. trademark matters, including familiarity with recent USPTO procedural changes.
  • Solid understanding of filing requirements in other significant jurisdictions.
  • Experience in reviewing trademark searches on platforms like Corsearch and Clarivate, as well as preparing trademark search reports.
  • Ability to evaluate the merits of routine enforcement actions related to U.S. disputes, including cease and desist letters and oppositions.
  • Knowledge of trademark assignment and change of name recordal projects, including the requirements for assignments in major jurisdictions.
  • Experience with due diligence projects and reporting is advantageous.

Skills and Attributes:

  • Meticulous attention to detail and strong organizational skills are essential due to the high volume of work that must be managed effectively.
  • A collaborative team player who actively contributes to team dynamics.
  • Exceptional organizational and problem-solving capabilities.
  • Confidence in liaising with individuals at all levels within the firm.
  • Ability to work under tight deadlines while managing a personal caseload.
  • Demonstrated strong client service skills.
  • High standards of work, including excellent attention to detail and prioritization abilities.
  • Flexible and efficient work practices, with the capacity to adapt style as necessary.
  • Occasional travel may be required.