Trademark Prosecution Counsel

Whitecap Search; New York (NY); On-site; USD 180,000 - 240,000; Full time

Job summary

Whitecap Search seeks a highly skilled trademark attorney for a 6-9 month engagement within a prestigious law firm's prosecution group. The attorney must be admitted in their state of residence and be able to work remotely but ideally on-site in New York.

The role covers global trademark prosecution, brand clearance, registration, enforcement, and strategic portfolio management for major brands across diverse industries. Strong counseling on clearance and brand strategy is essential.

Qualifications

• Experience in trademark prosecution and portfolio management.
• Counsel on clearance, selection, and brand strategy.
• Ability to handle high volume clients and complex trademark issues.
• Experience with online brand protection and enforcement strategies.
• Knowledge of customs registration processes and enforcement.
• Experience negotiating IP terms in mergers and acquisitions.
• Advertising work experience including false advertising risk counseling.
• Familiarity with FTC and NAD frameworks for consumer brand guidance.

Responsibilities

• Support domestic and international trademark prosecution, brand clearance, registration, and enforcement.
• Counsel clients on trademark availability assessments and portfolio management.
• Clearance of marks globally and finding pathways to obtain registration.
• Provide strategic counsel on portfolio management.
• Support some large volume clients.
• Handle licensing, maintenance, and enforcement of trademarks and copyrights.
• Work with major consumer brands across various industries, advising on global portfolios.
• Counsel emerging companies on trademark clearance, selection, and brand strategy.
• Engage in online brand protection work including domain name dispute proceedings and responding to phishing attacks targeting clients' brands.
• Manage customs registrations and enforcement for global companies, coordinating across jurisdictions to intercept infringing goods.
• Safeguard the integrity of brands in the marketplace.
• Assist clients across various industries such as pharmaceutical, life sciences, animal health, tech, financial services, consumer products, and retail.
• Conduct intellectual property and technology due diligence evaluations.
• Negotiate key intellectual property terms and ancillary documents in fast-paced mergers, acquisitions, and financings.

Skills

Trademark Prosecution

Portfolio Management

Trademark Clearance

Brand Strategy

High-volume Clients

Brand Protection

Enforcement Strategies

Customs Registration

IP in M&A

Advertising Risk

FTC NAD

Job description

Whitecap Search is seeking a highly skilled trademark attorney for a temporary role within a prestigious law firm's trademark prosecution group. This engagement is expected to last approximately 6-9 months. The attorney must be admitted to the state they are working from, with the flexibility of not needing to reside in New Jersey, although it is considered a plus.

Responsibilities

• Support domestic and international trademark prosecution, brand clearance, registration, and enforcement.
• Counsel clients on trademark availability assessments and portfolio management.
• Clearance of marks globally and finding pathways to obtain registration.
• Provide strategic counsel on portfolio management.
• Support some large volume clients.
• Handle licensing, maintenance, and enforcement of trademarks and copyrights.
• Work with major consumer brands across various industries, advising on global portfolios.
• Counsel emerging companies on trademark clearance, selection, and brand strategy.
• Engage in online brand protection work including domain name dispute proceedings and responding to phishing attacks targeting clients' brands.
• Manage customs registrations and enforcement for global companies, coordinating across jurisdictions to intercept infringing goods.
• Safeguard the integrity of brands in the marketplace.
• Assist clients across various industries such as pharmaceutical, life sciences, animal health, tech, financial services, consumer products, and retail.
• Conduct intellectual property and technology due diligence evaluations.
• Negotiate key intellectual property terms and ancillary documents in fast-paced mergers, acquisitions, and financings.

Requirements

• Admitted to practice in the state of residence.
• Experience in trademark prosecution and portfolio management.
• Strong counseling skills on trademark clearance, selection, and brand strategy.
• Ability to handle high volume clients and complex trademark issues.
• Experience with online brand protection and enforcement strategies.Knowledge of customs registration processes and enforcement.
• Experience in negotiating intellectual property terms in mergers and acquisitions.
• Advertising work experience is a plus, including false advertising risk counseling and competitor challenge strategy.
• Familiarity with FTC and NAD frameworks for consumer brand guidance.