Patent Prosecution - Trademark Associate

About the Intellectual Property ? Patent and Trademark Prosecution Section

Our patent and trademark practice offers comprehensive strategic counseling in patent and trademark law and practice that enables our clients to clarify goals, find solutions, and achieve results throughout the innovation or business lifecycle. On the trademark side, our attorneys advise clients on clearing, prosecuting, and managing their trademark rights, policing and enforcing their brand rights, licensing and other business transactions related to their brand portfolios, and generally helping brands navigate the nuances of brand protection within their various industries.

Mintz is seeking an associate with 2+ years of relevant experience to join our trademark team in San Francisco, San Diego or New York. Candidates should have substantial hands-on trademark prosecution experience, including conducting domestic and international trademark clearance searches, and actively performing trademark prosecution and enforcement tasks. Candidates should be organized, self-motivated, responsive, creative and have the ability to manage a busy prosecution and enforcement practice.

• Conduct and evaluate preliminary and in-depth U.S. and global trademark clearance searches
• Draft identification of goods/services, evaluate specimens and Statements of Use and draft substantive office action responses before the USPTO
• Counsel on Madrid Protocol filings
• Conduct enforcement investigations, draft cease and desist letters and takedown notices, and negotiate trademark settlement agreements and coexistence agreements
• Draft trademark, copyright and NIL licenses and assignments
• Copyright counseling and filing; domain name enforcement including drafting UDRP complaints
• Clear content for use on social media and in digital marketing
• Provide diligence and corporate transaction support on trademark, copyright and domain matters

Collaboration with team members is an important component of any role at Mintz. Therefore, the firm requires working from the office approximately 60% of the time in accordance with the firm?s published guidelines.

Qualifications

• Graduated with a JD or LLM from an ABA-accredited law school
• Must be admitted or eligible for admission in California or New York
• Direct trademark experience with a focus on clearance, prosecution and enforcement
• Law firm experience required
• Strong legal research, legal writing and analytical skills
• Excellent written and oral communication skills
• Professionalism in working and engaging with clients and colleagues
• Ability to prioritize, meet deadlines and balance competing responsibilities
• Ability to stay organized and exercise extreme attention to detail
• Ability to collaborate and work effectively in team settings

About Mintz

Mintz is an Am Law 100 law firm with over 500 attorneys serving clients worldwide. Our attorneys combine legal, business and industry insight to help navigate shifting challenges. We advise business leaders, entrepreneurs and investors on pivotal deals, disputes and regulatory matters within our core practice areas. We are strategically located to meet the needs of our clients, with offices in Boston, Los Angeles, Miami, New York, San Diego, San Francisco, Toronto and Washington, DC.

The salary range for this position is $235,000 to $310,000. This position is bonus eligible.
Mintz offers a comprehensive benefits package.

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Qualification

Juris Doctor (JD) / Master of Laws (LL.M.)

Practice Areas & Specialty

Intellectual Property, Trademark