Staff Attorney – Intellectual Property (Trademark) – Any US Office

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Staff Attorney - Intellectual Property (Trademark) - Any US Office

McDermott Will & Emery LLP has been recognized as the Top Firm to Work For in both The American Lawyer and Vault 2022 rankings. Thats because we put your career on the fast track from day one, helping you hone your legal skills through meaningful work and powerful mentorship. As part of our ongoing commitment to be #AlwaysBetter for our people, clients and communities, we have created a culture of belonging that champions your individuality and authenticity as both a person and a lawyerFrom our top-rated summer program to our award-winning professional development offerings and industry-leading wellness initiatives, we support you through every stage of your life and careerso you can live a life you love both in and outside of the office.

As an Intellectual Property Trademark Staff Attorney, you will:

  • Prepare new trademark, domain and copyright applications and other trademark prosecution documents for filing at appropriate trademark offices, including gathering all necessary information from clients regarding same; monitoring and maintaining applications through issuance 
  • Prepare substantive arguments in response to official correspondence from the U.S. Patent and Trademark Office and foreign trademark offices for trademark applications. 
  • Provide substantive assistance in litigation and enforcement matters, both in the U.S. and in foreign jurisdictions, including preparing complaints, notice of opposition, petitions to cancel, drafting and responding to discovery, researching and drafting dispositive motions for both Trademark Trial and Appeal Board proceedings, as well as state and federal court litigation. 
  • Prepare and file UDRPs as well as other documents relating to social media infringements and enforcement.
  • Draft license agreements, assignments, and other trademark-related transactional documents.  Provide substantive assistance with regard to transactions involving the licensing, acquisition and disposition of intellectual property assets, including conducting due diligence and preparing transaction-related documents and revisions thereto.
  • Review and revise intellectual property provisions in agreements (including, for example, purchase agreements and service agreements). 
  • Communicate with attorneys, as well as clients, and foreign agents regarding preparing and processing all paperwork necessary during pendency of trademark applications, including formalizing original documents 
  • Communicate with foreign associates on initial filing requests and other correspondence during the prosecution of foreign applications 
  • Prepare reports for clients regarding pending trademark applications and registered trademarks; oversee accuracy and necessary follow-up on daily docket entries; maintain portfolios with supervising attorneys 
  • Review electronic docket daily 
  • Assist with trademark searches, including initial screening searches, both in the U.S. and in foreign jurisdictions.

Were open to candidates in any of our US offices.

  • At least 10 years of trademark-specific work experience
  • Candidates will need to be barred, and in good standing in the state in which they practice
  • Knowledge of Microsoft Office Suite (Excel, Outlook, PowerPoint, and Word)
  • Knowledge of trademark search software
  • Knowledge of international IP legal databases
  • Knowledge of docketing software
  • Strong written and verbal communication skills
  • Strong organizational skills
  • Strong client service skills
  • Ability to work under tight deadlines and prioritize responsibilities
  • Ability to prioritize as well as accurately capture billable time

We continue to prioritize the health and safety of our McDermott workforce. Consistent with that commitment, in light of the substantial and growing body of evidence that vaccinations remain the most effective protection against the spread of COVID-19, we require that members of our McDermott workforce be fully vaccinated.

At this time we are not asking you to provide any information about your current vaccination status, whether you would seek a medical or religious accommodation to the policy, or for any other medical information.  We are only notifying you of the policy if you are interested in moving forward with the application process.

*Policy applies to locations where local ordinances do not prevent COVID-19 vaccination mandates.

McDermott Will & Emery LLP is an Equal Opportunity Employer and an Affirmative Action Employer (Minority/Female/Disabled/Veteran).

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