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Orrick Herrington & Suttcliffe

IP Trademark Associate - West Coast Only

Orrick Herrington & Suttcliffe, Santa Monica, California, United States, 90403


IP Trademark Associate - West Coast OnlyJob 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-PortlandResponsibilities: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, 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.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 and overseeing new US trademark filings.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.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, wherever they work.Orrick accepts applications for this position on an ongoing basis until filled.We are an Equal Opportunity Employer.

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