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Years of Experience
Date Last Verified
ProfileTrademark Attorney The candidate will be responsible for the management of all aspects of a global trademark portfolio including clearance, filing, maintenance and enforcement. Will: Review and analysis of preliminary and full trademark searches in the US and throughout the world. Draft Office Action responses for US trademark filings and manage outside counsel on the preparation of responses outside of the US. Evaluate and manage the filing and prosecution of trademark oppositions, cancellations and other similar proceedings. Evaluate, handle in-house and manage outside vendors in brand protection and trademark enforcement activities including cease and desist letters, e-commerce and social media platform take-down requests, URDPs and other URL proceedings, counterfeit actions, and litigation. Counsel businesses on trade dress issues including clearance and enforcement. Draft and negotiate coexistence agreements, consent agreements, settlement agreements and trademark and other IP license agreements. Advise business on all manner of copyright and trademark issues. Conduct/prepare trademark diligence for acquisitions and divestitures and advise on purchase agreements. Manage paralegal team. Manage budget for outside spend for trademarks including protection and enforcement.
Qualification and Experience
Qualifications: JD Degree, with 5-10 years of trademark experience (preferably some of that experience with an in-house trademark department). Should be able to work autonomously and should have a demonstrated track record in managing global trademark portfolios. Excellent oral and written communication skills. Detail-oriented with the ability to manage multiple priorities. Establish and maintain good working relationships with business clients and colleagues.
Reference Code: 1703696