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Trademark Counsel
3 months ago
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.