IP Trademark Associate - West Coast Only

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IP Trademark Associate - West Coast Only

Job Locations :

US-Any US Office US-WA-Seattle US-CA-Sacramento US-CA-San Francisco US-CA-Menlo Park US-CA-Los Angeles US-CA-Santa Monica US-CA-Irvine US-OR-Portland

ID : 2024-1482

Responsibilities

• Trademark Clearance and Prosecution :
• Conduct domestic and international trademark clearance searches.
• Handle trademark prosecution for domestic and international trademark portfolios.
• Draft and file office action responses before the USPTO.
• Draft descriptions of goods / services and oversee new US trademark filings, Statements of Use, renewals, and maintenance filings.
• Trademark Enforcement and Litigation :
• Conduct enforcement investigations and draft cease and desist letters.
• Negotiate trademark settlement agreements.
• Handle administrative proceedings before the TTAB.
• International Trademark Matters :
• Manage international trademark filing, prosecution, and enforcement.
• Handle Madrid Protocol filings and coordinate with foreign counsel.
• Additional IP Responsibilities :
• Conduct preliminary trademark searches on USPTO database / Saegis.
• Assess protectability under copyright law and file / register copyrights.
• Draft and negotiate trademark license agreements.
• Conduct trademark and IP due diligence requests.
• Draft and record trademark assignments.

Attributes

• Very detail-oriented.
• Ability to multi-task and keep track of many deadlines and moving pieces.
• Highly reliable, responsive, takes ownership over assignments / clients.
• Strong problem solving and project management skills.
• Strong legal analysis and writing skills.
• Self-starter; someone who takes initiative, is comfortable / poised interfacing with clients directly, and can take lead on some clients.
• Team player.

Qualifications

• Required Experience :
• 3-4 years' experience handling domestic and international trademark clearance, prosecution and enforcement for domestic and international trademark portfolios.
• Significant experience conducting preliminary trademark searches on USPTO database / Saegis and reviewing and advising on comprehensive searches.
• Significant experience drafting and filing successful office action responses before the USPTO.
• Significant experience drafting descriptions of goods / services, overseeing new US trademark filings, overseeing Statement of Use, renewal and maintenance filings, etc.
• Significant experience conducting enforcement investigations, drafting cease and desist letters, and negotiating trademark settlement agreements.
• Significant international trademark filing, prosecution and enforcement experience; adept at handling Madrid Protocol filings.

Nice to have" Experience :

• Some experience handling administrative proceedings before the TTAB.
• Some knowledge and experience assessing protectability under copyright and filing / registering copyrights.
• Some experience drafting and negotiating trademark license agreements.
• Some experience conducting trademark and IP due diligence requests.
• Some experience with drafting and recording trademark assignments.
• Additional Requirements :
• Juris Doctor (JD) degree from an accredited law school.
• Admitted to practice in CA or WA.
• Minimum of 3 years of experience in trademark law, including clearance, prosecution, and enforcement.
• Strong research, analytical, and writing skills.
• Excellent communication and interpersonal skills.
• Ability to work independently and as part of a team.
• Detail-oriented with strong organizational skills.

Why Orrick : Orrick is a leading global law firm known for its commitment to innovation and excellence. We offer a collaborative and inclusive work environment, opportunities for professional growth, and a competitive compensation package.

Join our team and be part of a firm that values your contributions and supports your career development.

Compensation and Benefits

The expected salary range for this position is between $260,000 and $310,000.

Orrick is committed to providing a comprehensive, competitive, and thoughtful total compensation package to our attorneys and staff, wherever they work.

This compensation and benefits information is based on the Orrick's estimate as of the date of publication and may be modified in the future.

The level of pay within the range will depend on a variety of job-related factors that may include, but not limited to, qualifications, relevant experience or education, particular skills or expertise, geography.

Other compensation may include an annual discretionary merit bonus, which would be determined by Firm and individual performance.

We offer a full range of elective health benefits including medical, dental, vision and life insurances; robust mental well-being benefits;

child, family, elder, and pet care benefits; short- and long-term disability benefits; a health savings account (w / applicable medical plan), flexible spending accounts, long-term care insurance, and a 401K program.

This role is eligible to employees will receive compensated time off through Flexible Time Off program, generous Parental leave benefits, and paid holidays.

Orrick accepts applications for this position on an ongoing basis, until filled.

We are an Equal Opportunity Employer.

Consistent with the SF Fair Chance Ordinance, an arrest and conviction record will not automatically disqualify a qualified applicant from consideration for employment.

For attorney positions, a 'qualified applicant' is an individual who is a member of the State Bar of California, admitted in good standing, and is eligible to practice;

or whose admission to the State Bar of California and eligibility to practice remains subject only to successful completion of the California Bar Examination.

Qualified applicants with criminal histories will be considered for the position in a manner consistent with the requirements of the Los Angeles Fair Chance Initiative for Hiring.

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