ORRICK HERRINGTON &
IP Trademark Associate - West Coast Only
ORRICK HERRINGTON &, Seattle, Washington, us, 98127
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 (e.g. screen for prior law review editing experience) 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/poised 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 for domestic and international trademark portfolios Significant experience conducting preliminary trademark searches on USPTO database/Saegis and reviewing and advising on comprehensive searches Significant experience drafting and filing successful office action responses before the USPTO Significant experience drafting descriptions of goods/services, overseeing new US trademark filings, overseeing Statement of Use, renewal and maintenance filings, etc. Significant experience conducting enforcement investigations, drafting cease and desist letters, 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 and filing/registering copyrights 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, including clearance, prosecution, and enforcement. 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. Join our team an