Mid-Level Trademark Associate

Venable LLP; Washington (District of Columbia); On-site; USD 180,000 - 240,000; Full time

Job summary

Venable LLP in Washington, DC seeks a highly experienced trademark attorney to lead prosecution, clearance, and enforcement for a sophisticated client base.

You will manage large global portfolios, draft and respond to Office Actions, Madrid Protocol filings, TTAB proceedings, and advise on strategy while maintaining tight deadlines and budgeting.

Qualifications

• Extensive hands-on experience with U.S. trademark prosecution.
• Experience conducting clearance searches using Corsearch, Saegis and USPTO.
• Counsel clients on registrability, use, enforcement and portfolio management.
• Manage large global portfolios for sophisticated clients with deadlines.
• Draft and respond to cease-and-desist letters and TTAB proceedings.
• Familiarity with Madrid Protocol filings and related procedures.

Responsibilities

• Prepare and file trademark applications and post-registration maintenance filings.
• Respond to Office Actions and develop risk-based search opinions.
• Counsel clients on trademark selection, use, and portfolio strategy.
• Manage large global portfolios with tight deadlines and budgeting.
• Draft and respond to cease-and-desist letters and TTAB proceedings.
• Advise on enforcement strategies and negotiate licenses or coexistence.

Skills

Trademark prosecution

Office Action handling

Client counseling

Portfolio management

Deadlines management

High-volume environment

Education

Bar admission in at least one US state

Tools

Corsearch

Saegis

USPTO search system

Madrid Protocol filings

Job description

Overview

• The role requires significant hands-on experience with U.S. trademark prosecution, including preparing and filing applications, responding to Office Actions, Statements of Use, extensions of time, and post-registration maintenance filings.
• Essential experience includes conducting and analyzing trademark clearance searches using platforms such as Corsearch, Saegis, and the USPTO search system, preparing practical, risk-based search opinions, and counseling clients on trademark selection, registrability, use, enforcement, and portfolio management.
• Experience managing large global trademark portfolios for sophisticated clients is essential, along with drafting and responding to cease-and-desist letters, advising on trademark enforcement strategies, and handling TTAB proceedings, including drafting and filing oppositions, cancellations, and extensions of time.
• The practice places a premium on strong client service skills and responsiveness in a high-volume environment, the ability to manage numerous deadlines and matters simultaneously, and the capacity to work efficiently within budgets, with a desired track record of working directly with clients and managing matters with oversight.
• Experience with Madrid Protocol filings, litigating contested TTAB proceedings from discovery through final disposition, and negotiating coexistence, consent, settlement, and license agreements is a plus; familiarity with domain name disputes (UDRP), social media takedowns, online brand enforcement, anti-counterfeiting programs, customs recordation, and AI-assisted legal research and trademark search tools is also valued.
• Candidates must be admitted to at least one U.S. state bar with the ability to waive into the D.C. bar.