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Orrick Herrington & Suttcliffe

IP Trademark Associate - West Coast Only

Orrick Herrington & Suttcliffe, San Francisco, California, United States, 94199


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

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.

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 and is comfortable interfacing with clients directly.

Team player.

Qualifications

Required Experience:

3-4 years' experience handling domestic and international trademark clearance, prosecution and enforcement.

Significant experience conducting preliminary trademark searches on USPTO database/Saegis.

Significant experience drafting and filing successful office action responses before the USPTO.

Significant experience drafting descriptions of goods/services, overseeing new US trademark filings, and maintenance filings.

Significant experience conducting enforcement investigations and negotiating trademark settlement agreements.

Significant international trademark filing, prosecution and enforcement experience.

Nice to have Experience:

Some experience handling administrative proceedings before the TTAB.

Some knowledge and experience assessing protectability under copyright law.

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.

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.

Compensation and Benefits

The expected salary range for this position is between $260,000 and $310,000.

Orrick is committed to providing a comprehensive, competitive, and thoughtful total compensation package to our attorneys and staff. Other compensation may include an annual discretionary merit bonus.

We offer a full range of elective health benefits including medical, dental, vision, and life insurances; robust mental well-being benefits; and a 401K program. This role is eligible for compensated time off through our Flexible Time Off program.

Orrick accepts applications for this position on an ongoing basis, until filled.

We are an Equal Opportunity Employer.

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