Unclassified - San Francisco, CA

posted 4 months ago

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.
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