Attorney

Woods Oviatt Gilman LLP

$120K — $180K *
Legal & Accounting
5 - 7 years of experience
Job Overview by Ladders

Qualifications

  • JD from an accredited law school and admission to the New York State Bar.
  • 6 or more years of trademark and related intellectual property experience, including USPTO prosecution and matters before the TTAB.
  • Strong analytical skills and attention to detail.
  • Excellent communication and interpersonal skills, with a knack for building client relationships.
  • An entrepreneurial mindset, proactive in client development and brand protection.

Responsibilities

  • Counsel clients on trademark selection, clearance, and brand strategy.
  • Prepare and prosecute U.S. trademark applications before the USPTO, including office action responses.
  • Collaborate with foreign trademark agents on reciprocal trademark cases.
  • Monitor trademark activity and advise on enforcement strategies.
  • Draft and negotiate various trademark agreements.
  • Handle cease and desist demands and provide guidance on infringement matters.
  • Conduct trademark due diligence in mergers and acquisitions.

Benefits

  • Professional development opportunities through continuing legal education (CLE) and bar association involvement.
  • Potential for relocation assistance for qualified candidates.
  • Confidential handling of employee inquiries related to the role.
Full Job Description
Title:Trademark Attorney

Department: Intellectual Property

Location: Rochester

Classification: Exempt

Job Type: Full-time M-F, 8:00 AM-5:00 PM

Position Summary:

We are seeking an experienced Trademark Attorney to join our Intellectual Property practice group. The role spans brand counseling and enforcement, USPTO prosecution, and domestic and international portfolio management. The ideal candidate brings deep trademark experience, strong client communication skills, and the judgment to manage matters independently.

Key Responsibilities:
  • Counsel clients on trademark selection, clearance, and brand strategy, including searches and registrability opinions.
  • Prepare and prosecute U.S. trademark applications before the USPTO, including office action responses.
  • Work closely with foreign trademark agents to handle reciprocal trademark work.
  • Run trademark watch and monitoring programs and advise on enforcement.
  • Draft and negotiate licensing, coexistence, assignment, and consent agreements.
  • Handle cease and desist demands and counsel on infringement, dilution, and unfair competition, including UDRP domain disputes and online brand enforcement.
  • Conduct trademark due diligence in mergers, acquisitions, and financing transactions.
  • Build and maintain client relationships and support the firm's IP practice.
  • Stay current on trademark and IP law through CLE and bar involvement such as INTA.

Required Skills & Qualifications:
  • JD from an accredited law school and admission to the New York State Bar.
  • 6 or more years of trademark and related intellectual property experience, including USPTO prosecution and matters before the TTAB.
  • Strong analytical skills and attention to detail.
  • Excellent communication and interpersonal skills, with the ability to establish rapport with clients and colleagues.
  • An entrepreneurial mindset, with a proactive approach to client development and brand protection.

Physical Demands:

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodation may be made to enable individuals with disabilities to perform the essential functions.
  • Employee is regularly required to stand, walk, use hands/fingers to type, hold, handle, or feel; and reach with hands and arms.
  • Regularly required to talk or hear.
  • Prolonged periods of sitting at a desk and working on a computer.
  • The employee must occasionally lift and/or move up to 15 pounds.

Other Duties: Please note this job description is not designed to cover or contain a comprehensive listing of activities, duties, or responsibilities required of the employee for this role. It provides a snapshot of the core functions and responsibilities. All inquiries will be handled with the utmost confidentiality. The compensation range for this position is $120,000-$180,000 annually, plus bonus potential, representing our good faith and reasonable estimate of the potential compensation at the time of posting. Actual compensation will be determined based on various factors, including the candidate's qualifications, experience, skill set, and office location. Additionally, relocation assistance is available for qualified candidates.

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