Temporary Contract Trademark Counsel

The Applicant must be a trademark practitioner with a proven history of domestic trademark protection and enforcement (international experience also preferred). The Applicant must have experience with (a) analysis of priority and rights; (b) global trademark prosecution, opposition and cancellation proceedings; (c) trademark clearance searching, analyzing and reporting; (d) evaluating infringement cases in the pre-litigation stage; and (e) demonstrating solid legal and risk-benefit analyses with the ability to make tough judgement-call decisions in a clear and concise manner.

Along with special projects (such as due diligence in an M&A context), the Applicant will be asked to complete tasks such as:

• Performing and evaluating clearance searches on new trademarks, analyzing the results, and providing risk assessments
• Advising on and, at times, drafting substantive responses to USPTO Office Actions (Trademark Paralegal handles day-to-day prosecution)
• Independently handling day-to-day enforcement activities (priority investigations, cease and desist letters, negotiating with opposing counsel, drafting settlement agreements) for the USA and overseeing foreign counsel on the same
• Being responsible for meeting opposition and other deadlines, including responding to Associate General Counsel, IP and foreign counsel
• Drafting initiating TTAB documents and overseeing foreign counsel's equivalent documents while maintaining a consistent portrayal of the companies and brands
• Supporting in-house and foreign litigation counsel throughout the pendency of oppositions, cancellations, civil lawsuits or other proceedings
• Drafting, negotiating and advising on trademark, copyright and right of publicity related issues and agreements including third-party licenses, intra-company licenses, consents, assignments, settlement agreements, co-branding, and others

• Minimum of 4-7 years of solid experience with domestic trademark prosecution and enforcement; experience with copyright, patent and/or trade secret law a plus
• JD from an accredited law school
• Active member in good standing with their state bar association
• Proven experience in risk assessments for the use, and enforcement of, trademarks in a variety of media and industries
• Experience drafting trademark agreements such as assignments and licenses
• Ability to work with paralegals to manage high volume of trademark deadlines
• Excellent analytical and creative problem-solving skills
• Exceptional written and verbal communication skills including the ability to communicate with business stakeholders in a business-friendly manner
• Excellent organizational skills and strong attention to detail with follow-up skills
• Excellent interpersonal skills even while under deadline pressure
• Ability to work and think with independence and be fully responsible for producing consistently complete and accurate work
• Proficient in USPTO and/or Saegis trademark searching and able to quickly learn and utilize other computer applications
• Hard working and detail-oriented, commitment to professionalism, with flexibility and willingness to work on a broad variety of matters
• In-house trademark experience is strongly preferred
• International trademark experience is a plus, but not a requirement
• Experience with trademark issues for major consumer products is a plus

Pay Range: $100.00 - $125.00 per hour. Final compensation will be dependent upon skills & experience.

Roll Law Group is proud to be an Equal Opportunity employer. We do not discriminate based upon race, religion, color, national origin, sex, sexual orientation, gender, gender identity, gender expression, transgender status, sexual stereotypes, age, status as a protected veteran, status as an individual with a disability, or other applicable legally protected characteristics.

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