Trademark Attorney

Job Description

Job Description

Trademark Attorney

LOCATION : Washington, D.C., or Michigan (Ann Arbor, Detroit, or Troy)

GENERAL PURPOSE : We are hiring an experienced attorney to join our intellectual property team in either Washington, D.C. or one of our Metro Detroit offices to help us handle our diverse, dynamic, and growing book of business. Attorneys may also assist our other practice groups as needed. Our clients include Fortune 500 companies as well as startups.

We continue to grow our client base and to be at the forefront of some of the biggest cases and most important issues in our industry. We are seeking a standout candidate to join our growing team.

MAJOR RESPONSIBILITIES :

• Demonstrate an ability to cultivate and generate new client relationships.
• Manage new and existing client relationships.
• Conduct preliminary (SAEGIS) and comprehensive trademark availability searches utilizing U.S. and international databases and third-party vendors.
• Preparation and prosecution of U.S. trademark applications, statements of use, notices of allowance, renewals, descriptions of goods and services, specimens, transfers and assignments, and responses to office actions.
• Prosecution of international trademarks via the Madrid Protocol, Paris Convention, and correspondence with foreign associates and national and international trademark offices including WIPO.
• Manage brand policing efforts, including review of trademark watch notices and the USPTO Official Gazette, research potential infringers; draft and send protest letters and monitor for follow-up and closure.
• Handling TTAB actions, including requests for extension of time to oppose, notices of opposition, and petitions for cancellation; correspond with foreign associates regarding similar actions overseas.
• Assist with trademark-related litigation in state and federal courts; correspond with foreign associates regarding similar actions overseas.
• Prepare required Post-Registration Maintenance including Section 8 and 15 Declarations of Use and Incontestability; prepare and file Section 9 Renewal and Section 8 Declaration, including preparation and review of specimens.
• Design, recommend, and implement processes and procedures to enhance group efficiency and effectiveness.
• Complete domain name registrations and transfers and conduct UDRP actions.
• Responsible for docket system, working with Anaqua and a docket clerk for trademark-related matters.

SKILLS AND ABILITIES :

EDUCATION, EXPERIENCE AND / OR TRAINING :

Requirements

EDUCATION, EXPERIENCE AND / OR TRAINING :