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, Sydney at 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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