Senior Intellectual Property Associate - Trademark

Fenwick & West

Mountain View (CA)

On-site

USD 390,000 - 435,000

Full time

9 days ago

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Benefits offered by this job

Healthcare
Life Insurance
Health Savings Accounts
Flexible Spending Accounts
Wellbeing

Job summary

Fenwick & West in Mountain View, CA is seeking an experienced trademark attorney to manage U.S. and international portfolios, oversee search and risk analysis, and lead a team of attorneys and paralegals.

You will leverage AI tools to enhance trademark services and advise clients on brand protection strategies. The role requires strong analytical ability, clear communication, and a track record of handling complex trademark matters; California bar membership is preferred.

Qualifications

  • Six or more years of trademark experience across clearance, prosecution, and enforcement.
  • Experience managing teams of attorneys and paralegals beyond mentoring.
  • Experience using AI and technology for trademark services with sound judgment.
  • Sound judgment on registrability and infringement questions.
  • Ability to explain complex legal issues clearly to diverse audiences.
  • Strong analytical skills and excellent oral, written, and interpersonal skills.
  • California bar membership preferred.
  • Plus: experience with online brand protection, domain disputes, tech/IP areas.

Responsibilities

  • Manage U.S. and international trademark portfolios including clearance, filing strategy, prosecution, disputes, oppositions, and cancellations.
  • Direct trademark searching and risk analysis using Saegis or comparable platforms.
  • Leverage AI and technology tools to deliver trademark services efficiently.
  • Develop practical brand protection strategies aligned with client goals and budgets.
  • Respond to USPTO actions and handle investigations and enforcement.
  • Draft and negotiate IP agreements (coexistence, licenses, assignments, settlements).
  • Coordinate with foreign counsel on global filings and disputes.
  • Build strong client relationships as a trusted adviser.
  • Lead teams of attorneys and paralegals, set priorities and budgets.

Skills

Trademark experience
Team management
AI in legal tech
Analytical skills
Client communication

Tools

Saegis

Job description

Responsibilities
  • Manage U.S. and international trademark portfolios, including clearance, filing strategy, prosecution, disputes, oppositions, and cancellations
  • Direct trademark searching and risk analysis using Saegis or comparable platforms
  • Use AI and other technology tools to deliver trademark services and analysis more efficiently and effectively, and help evaluate and adopt new tools for the practice
  • Develop practical brand protection and enforcement strategies that fit clients’ business goals, budgets, and risk tolerance
  • Respond to USPTO office actions and handle investigations and enforcement matters
  • Draft and negotiate coexistence, consent, license, assignment, and settlement agreements
  • Manage foreign counsel on global filings and disputes
  • Build and maintain client relationships as a trusted day-to-day adviser
  • Lead and manage teams of attorneys and paralegals, including staffing matters, setting priorities, overseeing quality and budgets, and developing talent
Qualifications
  • Six or more years of trademark experience, including clearance, prosecution, portfolio management, and enforcement
  • Demonstrated experience managing teams of attorneys and paralegals, beyond mentoring and training
  • Experience using AI and other technology tools to deliver trademark-related services and analysis, with sound judgment on their appropriate use, accuracy, and client confidentiality
  • Sound judgment on registrability and infringement questions
  • Ability to explain complex legal issues clearly to legal and nonlegal audiences
  • Exceptional analytical skills, strong academic credentials, and excellent oral, written, and interpersonal skills
  • California bar membership preferred
  • Plus: experience with online brand protection, domain name disputes, technology and Internet law, copyright, advertising, marketing, or privacy, and experience advising start-ups
Benefits And Compensation Details

At Fenwick, we believe that our partners and employees are our most important asset. Helping you and your families achieve and maintain good health - physical, emotional, and financial - is the reason we offer a comprehensive benefit program. We provide benefits to eligible employees under plans such as Healthcare, Life Insurance, Health Savings Accounts, Flexible Spending Accounts, and Wellbeing. Except as otherwise required by law, temporary employees are generally not entitled to these benefits.

The Anticipated Range For This Position Is

$390,000 - $435,000

Depending on the role, the actual base salary offered may depend upon a variety of factors, including without limitation, the qualifications of the individual applicant for the position, years of relevant experience, level of education attained, certifications or other professional licenses held, and if applicable, the location in which the applicant lives and/or from which they will be performing the job.

A discretionary bonus for eligible employees may also be available based on performance. Additional information about employee eligibility for benefits and discretionary bonus will be made available upon request.

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