Intellectual Property Senior Associate - Trademark

Overview

Orrick is seeking a senior associate with 6 to 9 years of experience to help lead our global trademark and brand protection practice. Our clients range from venture-backed startups to Fortune 100 companies in technology, consumer, and life sciences. We handle every stage of a brand’s life: clearance and global filing strategy, prosecution and portfolio management, launches and rebrands, acquisitions of marks and domain names, and disputes from the first demand letter through TTAB trial. We work closely with Orrick’s Technology Companies Group and our corporate and IP litigation teams.

We pair experienced trademark judgment with Orrick’s technology platform to deliver work faster and more efficiently. We’d love to find someone who’s excited to help shape how a modern trademark practice works, and to grow with us as we build it.

Responsibilities

What you’ll do
• Run U.S. and international portfolios day to day, including clearance, filing strategy, prosecution, maintenance, and renewals
• Lead clearance: scope the searches, review the results, and give clients a practical read on risk
• Set office action strategy and prepare responses before the USPTO
• Oversee Madrid Protocol and national filings, and coordinate local counsel on foreign prosecution and disputes
• Handle enforcement from start to finish: investigations, demand letters, negotiations, and TTAB oppositions and cancellations
• Negotiate coexistence and consent agreements, licenses, and settlements
• Support product launches, financings, and M&A with trademark clearance and IP diligence
• Supervise junior attorneys and professional staff, and help develop the team
• Work with our technology tools every day and help evaluate new ones

Qualifications

• 6 to 9 years of experience handling trademark clearance, prosecution, and enforcement for domestic and international portfolios
• Significant experience directing clearance searches and advising on registrability and likelihood of confusion
• Significant experience developing and drafting USPTO office action responses
• Significant experience with enforcement investigations, cease-and-desist letters, and negotiated settlements
• Significant experience with international filing and prosecution, including Madrid Protocol filings and working with foreign counsel
• Experience with TTAB oppositions and cancellations
• Experience drafting and negotiating trademark licenses
• Experience with trademark and IP due diligence
• Experience assigning, reviewing, and supervising the work of junior attorneys and staff
• Fluency with modern search, docketing, and tech-assisted drafting tools

Additional requirements
• A JD from an accredited law school
• Membership in the State Bar of the office where you wish to be based (or the ability to be admitted promptly)
• Strong research, analytical, writing, and communication skills, including the ability to explain legal risk in plain business terms
• Ability to work independently and as part of a team, with close attention to detail and strong organizational skills

How to Apply:

Please apply online at https://www.orrick.com/Careers and include a resume, J.D. transcript, and cover letter.

Search firm recruiters must submit using our Search Firm Portal. Please contact [email protected] for agreements and login credentials. 

If you have any questions, please reach out to Mariella Medina, Recruiting Manager, at [email protected].

Why Orrick:

At our core, we value collegiality among our lawyers and strive to make our practices both professionally and personally rewarding. We'll help you to connect with peers and mentors to ensure you are integrated into our client teams. Our top-notch training and mentoring programs, retreats and academies, and shadowing opportunities are what set us apart. If you are passionate about innovative work in a dynamic environment, you're just who we've been looking for.

Compensation and Benefits

The expected salary range for this position is between $390,000 and $435,000. 

Orrick is committed to providing a comprehensive, competitive, and thoughtful total compensation package to our attorneys and staff, wherever they work. This compensation and benefits information is based on the Orrick’s estimate as of the date of publication and may be modified in the future. The level of pay within the range will depend on a variety of job-related factors that may include, but not limited to, qualifications, relevant experience or education, particular skills or expertise, geography.   Other compensation may include an annual discretionary merit bonus, which would be determined by Firm and individual performance. 

We offer a full range of elective health benefits including medical, dental, vision and life; robust mental well-being programs; child, family, elder, and pet care benefits; short- and long-term disability and industry leading parental leave benefits; health savings account contributions (w/applicable medical plan), flexible spending accounts, and a 401K program. This role will receive compensated time off through our Flexible Time Off program and paid holidays.  

Orrick accepts applications for this position on an ongoing basis, until filled.

We are an Equal Opportunity Employer.

Consistent with the SF Fair Chance Ordinance, an arrest and conviction record will not automatically disqualify a qualified applicant from consideration for employment. For attorney positions, a 'qualified applicant' is an individual who is a member of the State Bar of California, admitted in good standing, and is eligible to practice; or whose admission to the State Bar of California and eligibility to practice remains subject only to successful completion of the California Bar Examination.

Qualified applicants with criminal histories will be considered for the position in a manner consistent with the requirements of the Los Angeles Fair Chance Initiative for Hiring.

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