Sidley
Overview
Sidley Austin LLP is seeking an experienced Trademark lawyer to join the firm as a staff attorney with a primary focus on trademark prosecution, branding enforcement, licensing, and transactional IP matters. This position offers an excellent opportunity for a lawyer with experience at the USPTO or a trademark boutique setting to join a thriving large firm practice. Responsibilities
Advises clients about branding, trademark strategy, prosecution, enforcement, licensing and other related matters. Manage domestic and foreign prosecution for multiple clients, including drafting trademark / service mark applications, affidavits of use, maintenance and renewal documentation and correspondence to clients. Drafts responses to office actions issued by the USPTO. Provide clearance analysis for new trademarks. Prepares draft cease and desist demands and required follow-up. Prepares draft pleadings and other filings for opposition proceedings and appeals. Oversee and supervise paralegals who review trademark watch notices, conduct initial investigation of potentially problematic references, and assists with resulting enforcement actions. Communicates with and manages foreign trademark counsel and agents regarding registration, maintenance and enforcement matters. Oversees paralegals and docketing staff to ensure timely and accurate filings at the USPTO, Trademark Trial and Appeal Board, and foreign IP offices. Oversees paralegals who order and analyze search reports and provide cost estimates for trademark clearances, prosecution, recordation of assignments, security interest and title documents with the USPTO, Copyright Office and foreign IP offices, and maintenance. Supervises paralegals who conduct due diligence ownership searches on trademarks, copyrights, and domain names in connection with corporate and finance transactions, including analyzing chain of title information, preparation of appropriate assignments, IP security agreements, and releases and ensuring IP assignments are properly executed, notarized and recorded. Prepares draft of UDRP complaints and assists with filling and associated actions. Advises on copyright application strategy; supports preparation and review of filings. Prepares draft DMCA take down requests. Supervises, mentors and trains paralegals as appropriate. Performs other work related duties as assigned or as judgment or necessity dictates. Qualifications
Law degree (J.D. or equivalent). Admitted to the Texas bar in good standing. Minimum 5 years of focus on Trademark work, including knowledge of USPTO and TTAB rules and procedure. Familiarity with international trademark filing procedures and conducting due diligence reviews of Intellectual Property. Adept in drafting correspondence and diligence memoranda, and managing worldwide trademark portfolios and enforcement actions. Sidley Austin LLP is an Equal Opportunity Employer.
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Sidley Austin LLP is seeking an experienced Trademark lawyer to join the firm as a staff attorney with a primary focus on trademark prosecution, branding enforcement, licensing, and transactional IP matters. This position offers an excellent opportunity for a lawyer with experience at the USPTO or a trademark boutique setting to join a thriving large firm practice. Responsibilities
Advises clients about branding, trademark strategy, prosecution, enforcement, licensing and other related matters. Manage domestic and foreign prosecution for multiple clients, including drafting trademark / service mark applications, affidavits of use, maintenance and renewal documentation and correspondence to clients. Drafts responses to office actions issued by the USPTO. Provide clearance analysis for new trademarks. Prepares draft cease and desist demands and required follow-up. Prepares draft pleadings and other filings for opposition proceedings and appeals. Oversee and supervise paralegals who review trademark watch notices, conduct initial investigation of potentially problematic references, and assists with resulting enforcement actions. Communicates with and manages foreign trademark counsel and agents regarding registration, maintenance and enforcement matters. Oversees paralegals and docketing staff to ensure timely and accurate filings at the USPTO, Trademark Trial and Appeal Board, and foreign IP offices. Oversees paralegals who order and analyze search reports and provide cost estimates for trademark clearances, prosecution, recordation of assignments, security interest and title documents with the USPTO, Copyright Office and foreign IP offices, and maintenance. Supervises paralegals who conduct due diligence ownership searches on trademarks, copyrights, and domain names in connection with corporate and finance transactions, including analyzing chain of title information, preparation of appropriate assignments, IP security agreements, and releases and ensuring IP assignments are properly executed, notarized and recorded. Prepares draft of UDRP complaints and assists with filling and associated actions. Advises on copyright application strategy; supports preparation and review of filings. Prepares draft DMCA take down requests. Supervises, mentors and trains paralegals as appropriate. Performs other work related duties as assigned or as judgment or necessity dictates. Qualifications
Law degree (J.D. or equivalent). Admitted to the Texas bar in good standing. Minimum 5 years of focus on Trademark work, including knowledge of USPTO and TTAB rules and procedure. Familiarity with international trademark filing procedures and conducting due diligence reviews of Intellectual Property. Adept in drafting correspondence and diligence memoranda, and managing worldwide trademark portfolios and enforcement actions. Sidley Austin LLP is an Equal Opportunity Employer.
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