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Trademark Counsel

Tempe, AZ
Full Time
06-10-2020
Exp.: 1 - 4 Years
Description:
We are looking for qualified trademark attorneys to join our team in our Tempe Arizona office. The applicant MUST have good experience in trademark law and a strong interest in growing a law practice focused on intellectual property law.

We prefer candidates who are self-starters with law firm experience, excellent client relationship skills, practical insight, and creativity. Excellent writing and oral advocacy skills are required, as well as strong academic credentials and references. An active member, in good standing, of any State Bar, is also required. The applicant must be able to work in a fast-paced, entrepreneurial law firm, and must understand, identify, and act to achieve client objectives and the Firm's Responsiveness Commitment.

This position will be heavy on trademark advice, clearance, prosecution, and maintenance; copyright advice, and related enforcement. The Attorney is required to provide high-quality service to internal clients on all assigned trademark, patent, copyright, and domain name matters; work closely with legal counsel in the enforcement of company intellectual property rights; coordinate with and providing support to internal/external counsel, team paralegals, and a wide range of internal company personnel. As a member of the corporate legal team, this attorney will be expected to work in a team-oriented, results-driven practice group that works collaboratively with its clients on complex legal matters.

We are looking for trademark attorney candidates with the following experience:
  • Managing trademark clearance, including direct supervision of paralegal staff reviewing and analyzing preliminary and full trademark search reports, and providing opinions, guidance, and advice to business teams regarding the availability of trademarks for use and/or registration.
  • Managing trademark prosecution and maintenance, working with paralegal staff to prepare and file with the US Patent and Trademark Office all necessary documents, including trademark applications, Office Action responses, Statements of Use and post-registration documents, and corresponding with foreign counsel with respect to the filing and prosecution of trademark applications and the maintenance of trademark registrations internationally.
  • Overseeing (1) the review of packaging, artwork, and other materials to ensure proper trademark use; (2) IP audits and due diligence projects; and (3) the preparation of IP schedules for licenses and other agreements.
  • Providing counseling and training to clients regarding various trademark, copyright, and other intellectual property matters.
  • Assisting with IP enforcement matters in the United States before the Trademark Trials and Appeals Board.

Specialized Knowledge/Skills
This individual will need to have excellent knowledge of trademark law, specifically with respect to the registration processes. In addition, this person should have excellent oral and written communication skills, analytical and decision-making skills, and be organized and detail-oriented.

Education and Experience
J.D. degree or equivalent from an ABA-accredited law school required. Admission to at least one state bar required. Knowledge of trademark and copyright law required. 1 to 4 years of experience in a law firm and/or in-house legal department a plus.

We seek candidates who:
  • Desire the experience that leads to a career in IP law. Demonstrate a genuine passion for the kind of work we do (trademarks) and the innovations we create through retail access to law and the web on a deeper level. We need people who want more than a job, but the experience to further their long-term career goals.
  • Proactive Self Starters, Passion for work we do, & Discipline. What we want are employees and attorneys who can create their own futures, particularly people who are proactive self-starters, self-motivated, solution-oriented, hardworking, and extremely organized. We need team members who have demonstrated maturity, discipline, and respect in the place they work and what it offers them.
  • Believe in our model. We need employees who care about changing the legal profession in a meaningful way in light of the economic models emerging because of non-law firm entities competing in the same space. Understand and embrace our retail model and our globalized support structure for ensuring maximum efficiency in legal practice to better be able to compete with non-law firm entities, while at the same time building a law firm of the future by changing the very nature of how legal services are delivered on the web, in-person through access to law centers, through client relations attorneys assigned to territories, and through globalized support.
  • Ability to handle stress and succeed in an intense training program.
  • You are encouraged to apply if you also have a law license in Canada, Mexico, United Kingdom, European Union, China, or India, and if you are authorized to work in the United States.

Minimum Requirements:
  • Law degree from an accredited law school
  • An active member of any State Bar in the United States required.
  • Exceptional writing and research skills
  • Effective communication and rapport building skills
  • Team player







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