Trademark Prosecution Attorney / New York

A highly ranked law firm is seeking a part-time attorney who has been practicing for at least 3 years. This attorney will either primarily or exclusively handle trademark prosecution matters. Requirements:

  • Ability to manage all aspects of U.S. trademark prosecution, including (a) conducting internal trademark searches; (b) reviewing outside trademark search reports; (c) preparing and filing trademark applications, office action responses, statements of use, section 8 & 15 declarations, and other U.S. trademark filings; and (d) counseling and corresponding with clients regarding all of these issues.
  • Strong pre-existing knowledge of U.S. trademark prosecution procedural rules, and trademark clearance and searching experience. Knowledge of international trademark prosecution procedural rules would
    be helpful. U.S./International percentage will most likely be 50/50 split.
  • TTAB experience is required. The candidate will need to be able to assist on oppositions and cancellation proceedings.
  • Conduct due diligence on trademark issues within corporate transactions. In addition, experience having drafted trademark and other IP content agreements, including licenses, assignments, and publicity releases is ideal.
  • Experience with domain name issues and use of marks in social media.
  • Some copyright counseling experience would be helpful.
  • Ideally the candidate is familiar with the Corsearch online trademark platform but it is not a requirement.

If you or someone you know is interested in additional information, please reach out to Rick at rick@hwrlegal.com, Sydney at ssmith@hwrlegal.com or contact us with your resume to get started. No documents or information are shared without approval and all submissions are held in confidence.

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