Senior Intellectual Property Counsel Trademarks

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Senior Intellectual Property Counsel, Trademarks
The candidate will be performing and evaluating clearance searches on new trademarks, analyzing the results, and providing risk assessments. Filing and prosecuting trademark applications, including drafting substantive responses to Office Actions. Drafting, negotiating, and advising on trademark related agreements including third-party licenses, intra-company licenses, consents, assignments, settlement agreements, co-branding, and copyrights. Independently handling day-to-day enforcement activities (priority investigations, cease and desist letters, negotiating with opposing counsel, drafting settlement agreements) for the USA and overseeing foreign counsel on the same. Managing trademark paralegal staff in an efficient and effective manner. Being responsible for meeting opposition and other deadlines, including responding to business stakeholders and foreign counsel. Directing and supervising foreign counsel’s activities, budget and billing. Drafting initiating TTAB documents and overseeing foreign counsel’s equivalent documents while maintaining brands. Supporting in-house and foreign litigation counsel throughout the pendency of oppositions, cancellations, or other proceedings. Reviewing advertising and marketing pieces for trademark and copyright issues. Reviewing trademark watch service reports on core trademarks and recommending a course of action. Managing global trademark portfolio, and responding to business inquiries in an efficient manner. Law Degree and current bar membership in good standing. Should have 5-10 years of legal experience with 5 years of trademark prosecution experience. Ability to “translate” trademark concepts into language easily understood by non-attorney clients. Very detail-oriented. Ability to work with paralegals to manage high volume of trademark deadlines. Excellent writing skills.

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