Trademark Attorney

A law firm in San Diego, CA, is seeking a highly qualified Trademark Attorney with 5-8 years of experience in trademark law, including trademark prosecution, agreements, clearance, strategic advice, counseling, and enforcement. The ideal candidate will possess superior communication skills and have a proven track record of working in a law firm environment. The position offers a challenging and rewarding opportunity to work on complex trademark matters, including U.S. and international filings.Key Responsibilities:Manage all domestic and international trademark prosecution aspects, including filing, monitoring, and maintaining trademarks.Conduct thorough trademark clearance searches and provide detailed analysis and recommendations to clients.Respond to office actions and correspondence from the U.S. Patent and Trademark Office (USPTO) and international trademark offices.Handle U.S. and foreign oppositions, cancellations, and enforcement proceedings to protect clients’ trademark rights.Draft and negotiate trademark-related agreements, including license agreements, settlement agreements, and co-existence agreements.Provide strategic advice and counseling to clients on developing, protecting, and enforcing trademark portfolios.Collaborate with international trademark counsel and manage foreign filings and related legal actions.Work closely with clients to develop and implement comprehensive global trademark strategies.Monitor trademark portfolios to ensure timely renewals and ongoing protection.Support litigation teams when necessary in trademark disputes and enforcement actions.Requirements:Minimum of 5-8 years of trademark law experience, including prosecution, enforcement, clearance, and counseling.Experience with U.S. and foreign filings, oppositions, cancellations, and enforcement actions.Strong background in responding to USPTO office actions and managing the trademark prosecution process.Proven ability to conduct thorough trademark clearance searches and provide risk assessments to clients.Demonstrated experience drafting and negotiating trademark-related agreements.Strong academic credentials.A minimum of 4 years of experience working in a law firm environment.Superior written and verbal communication skills.Education:Juris Doctor (J.D.) degree from an accredited law school.Member in good standing of the California State Bar.Certifications:Admission to the California State Bar is required.Skills:Exceptional legal research, analytical, and problem-solving skills.Strong attention to detail and ability to manage multiple deadlines.Proficiency in trademark docketing systems and other legal software.Excellent interpersonal and client management skills.Ability to work both independently and collaboratively in a team environment.Strong negotiation and drafting skills.In-depth knowledge of U.S. trademark law, with an understanding of international trademark laws being highly advantageous.

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