Description

The Staff Attorney (Trademarks) will be responsible for providing support to the Firm's North American Brand Management practice. We have a high volume of trademark and project work in a deadline-driven environment. This is a great opportunity for someone with a genuine interest in trademark law.
 
 
Responsibilities:
  • Providing high quality support on trademark matters with a particular focus on assisting with trademark clearance, prosecution, trademark maintenance filings and corporate due diligence and related projects on behalf of the Firm's clients
  • Assisting with preparation of trademark applications and responses to Office Actions from trademark offices around the world
  • Assisting with preparation of client reporting emails
  • Assisting with docket and deadline management and other trademark-related tasks as required from time to time
  • To oversee paralegals and other support staff in connection with the recordal projects and other trademark prosecution tasks
 
Skills and Experience:
 Essential Criteria
  • Strong academic background with excellent written and oral communication skills
Technical and personal skills
  • Attention to detail and a high level of organizational skills are a must as we have a high volume of work that needs to be efficiently and capably managed
  • Strong academic background
  • Excellent written and oral communication skills
  • A positive team member and active contributor in a team environment
  • Excellent organizational and problem solving skills
  • Confidence to liaise with people at all levels of the firm
  • Ability to work to tight deadlines and manage own caseload
  • Ability to demonstrate strong client service skills
  • Excellent communication skills
  • High work standards, including excellent attention to detail and strong prioritisation skills
  • Flexible and efficient work practices with the ability to adapt style as required
  • In-depth experience and knowledge of the TMEP and all rules and filing requirements for U.S. trademark matters including an understanding of recent changes in USPTO procedures
  • A high level understanding of filing requirements in other major jurisdictions
  • Experience reviewing trademark searches on major platforms such as Corsearch and CompuMark as well as preparing trademark search reports
  • Experience in assessing the merits of and routine enforcement actions on U.S. dispute matters, such as cease and desist letters, oppositions and the like
  • Experience with and an understanding of trademark assignment/ change of name recordal projects, including knowledge of the requirements for trademark assignments in major jurisdictions
  • Experience with due diligence projects and reports is a plus