Trademark Staff Attorney

Job Overview

A law firm seeks a Trademark Staff Attorney in San Francisco. This role focuses on trademark prosecution, branding enforcement, licensing, and transactional IP matters. It offers an excellent opportunity for those with experience at the USPTO or a trademark boutique setting to join a thriving large firm practice.

Duties

• Advise clients on branding, trademark strategy, prosecution, and enforcement.
• Manage domestic and foreign trademark prosecution for multiple clients.
• Draft responses to USPTO office actions.
• Provide clearance analysis for new trademarks.
• Prepare draft cease and desist demands and follow-up actions.
• Prepare draft pleadings for opposition proceedings and appeals.
• Oversee paralegals in reviewing trademark watch notices and enforcement actions.
• Communicate with foreign trademark counsel regarding registration and enforcement.
• Supervise paralegals and docketing staff for timely USPTO filings.
• Conduct due diligence ownership searches for corporate transactions.
• Prepare draft UDRP complaints and assist with associated actions.
• Advise on copyright application strategy and prepare DMCA takedown requests.
• Mentor and train paralegals as needed.

Requirements

• Admitted to the California bar in good standing.
• Minimum 5 years of trademark work experience, including USPTO and TTAB procedures.
• Familiarity with international trademark filing procedures.
• Experience in managing worldwide trademark portfolios and enforcement actions.

Education

• Law degree (J.D. or equivalent).

Certifications

• California bar admission.

Skills

• Proficient in drafting correspondence and diligence memoranda.
• Strong management skills for overseeing trademark portfolios.

Benefits

• Comprehensive benefits program.
• Bonus eligibility.

Associates at this huge international firm are generally given immediate client contact and often run their own conference calls, but not without supervision. With a new merger bringing in lawyers firmwide, this firm should be well-positioned to keep associates at the top of the pay scale while attracting new work for their well regarded financial institutions and regulated industries practice areas. Pro bono work is encouraged and is credited as billable hours. The firm's culture is open and supportive, and attorneys are willing to assist each other. Billable hours requirements are reasonable, and attorneys are encouraged to achieve a balance between their work and personal lives.