Corporate Trademark Counsel Duties: Advise the company on all legal issues related to trademark, trade dress, design patent, copyright and domain name issues. Conduct research on trademark availability and render legal opinions to the business related to trademark use, adoption and registration tailored to the use of the marks in specific markets. Lead the company trademark portfolio: prepare and file U.S. applications, responses and related documents; oversee the prosecution docket and case files. Establish familiarity and expertise in the rules and requirements of state Departments of Real Estate with regard to business names, trademarks, and advertising. Draft, negotiate and handle trademark license and coexistence agreements, including coaching other attorneys, legal professionals and business teams. Review and respond to claims of trademark or copyright infringement by Side or its partner-agents. Review print and digital marketing, advertising, and other commercial materials from internal clients and external partners for compliance with brand guidelines and other legal requirements.
Qualifications: JD Degree from a premier, ABA accredited law school; licensed to practice and in good standing in one or more states. Detailed knowledge of U.S. trademark and copyright law. 5-7 years of experience with a law firm or corporate legal department (some corporate experience preferred). Experienced at U.S. trademark prosecution, trademark clearance and risk assessment, and proper use analysis. Experience with brand enforcement, including trademark litigation, TTAB proceedings, foreign opposition and cancellation proceedings, demand letters, and take-down processes. Experience with IP licensing, assignments and general commercial contracts. Experience in startup and/or real estate industry is a plus. An experienced corporate attorney with sound business and legal judgment. Willingness to be flexible and adaptive and demonstrate the ability to operate in a multifaceted environment. Maintain the highest standards of ethics and professional integrity. Ability to handle a large number and variety of projects. Outstanding interpersonal skills; interacting effectively with executives and all levels within the organization, and others involved in trademark matters. Exhibit initiative and assertiveness in acquiring information needed to proceed with projects with minimal direction. The ability to work independently, set priorities, meet deadlines, and resolve complex problems with a detailed understanding of business and legal environments. Well organized and detail oriented. Excellent business judgment and critical thinking abilities.
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