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Intellectual Property Counsel The candidate will manage large global trademark portfolios for multiple companies and brands, including determining and implementing use and registration strategies, filing and prosecuting new applications, maintaining existing registrations, effectuating changes in ownership and other updates, etc. Will file trademark prosecution documents with the USPTO and work directly with foreign counsel to file and prosecute trademark applications abroad. Docket, oversee, and ensure timely compliance with all prosecution deadlines. Conduct clearance searches for the proposed use and registration of trademarks and names. File and manage worldwide trademark opposition and cancellation proceedings. Monitor international watch notices and determine strategies for enforcement. Gather evidence for intellectual property litigation and enforcement actions, including trademark opposition and cancellation proceedings. Train law enforcement and investigators in detection of counterfeit goods. Day to day responsibility for firm’s anti-counterfeiting initiatives. Identify potential cases, manage litigation docket and assist in the enforcement of intellectual property rights and prosecution of civil anti-counterfeiting lawsuits. Provide testimony on behalf of the Company in intellectual property and anti-counterfeiting litigation. Perform legal research on various issues of U.S. and International trademark and copyright law. Should have a JD degree, with 3-5 years of experience in intellectual property. New York Bar admission required. USPTO and TTAB experience of 2+ years is essential. Must have familiarity with domain name management and take-downs, including UDRP and ACPA proceedings.
Requisition Number: 10911
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