IP Trademark Associate - West Coast Only

$260,000 - $310,000/Yr

Unclassified - San Francisco, CA

Full-time - Mid Level

San Francisco, CA

About the position

The IP Trademark Associate position at Orrick involves managing domestic and international trademark portfolios, including clearance, prosecution, and enforcement. The role requires a detail-oriented individual who can handle multiple deadlines and client interactions effectively. The associate will be responsible for drafting and filing various trademark-related documents, conducting enforcement investigations, and managing international trademark matters, including Madrid Protocol filings.

Responsibilities

• 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.
• Conduct enforcement investigations and draft cease and desist letters.
• Negotiate trademark settlement agreements.
• Handle administrative proceedings before the TTAB.
• Manage international trademark filing, prosecution, and enforcement.
• Handle Madrid Protocol filings and coordinate with foreign counsel.
• 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.

Requirements

• 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.
• Juris Doctor (JD) degree from an accredited law school.
• Admitted to practice in CA or WA.

Nice-to-haves

• 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.

Benefits

• Competitive salary range between $260,000 and $310,000.
• Annual discretionary merit bonus based on performance.
• 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.
• Health savings account (with applicable medical plan).
• Flexible spending accounts.
• Long-term care insurance.
• 401K program.
• Flexible Time Off program for compensated time off.
• Generous parental leave benefits.
• Paid holidays.