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