Attorney

Title:Trademark Attorney

Department: Intellectual Property

Location: Rochester

Classification: Exempt

Job Type: Full-time M-F 8:00 AM-5:00 PM

Company Overview:

Woods Oviatt Gilman LLP is a leading and reputable full-service law firm dedicated to providing exceptional legal services to our clients. With a team of highly skilled and experienced attorneys we strive to deliver comprehensive and effective solutions to meet the diverse needs of our clients. Our headquarters is in Rochester NY with additional offices in Albany and Buffalo NY.

We foster a collaborative and inclusive work environment where every team member is valued and respected. We encourage open communication teamwork and professional growth. Our firm promotes a healthy work-life balance and supports the well-being of our employees.

Position Summary:

We are seeking an experienced Trademark Attorney to join our Intellectual Property practice group. The role spans brand counseling and enforcement USPTO prosecution and domestic and international portfolio management. The ideal candidate brings deep trademark experience strong client communication skills and the judgment to manage matters independently.

Key Responsibilities:

• Counsel clients on trademark selection clearance and brand strategy including searches and registrability opinions.
• Prepare and prosecute U.S. trademark applications before the USPTO including office action responses.
• Work closely with foreign trademark agents to handle reciprocal trademark work.
• Run trademark watch and monitoring programs and advise on enforcement.
• Draft and negotiate licensing coexistence assignment and consent agreements.
• Handle cease and desist demands and counsel on infringement dilution and unfair competition including UDRP domain disputes and online brand enforcement.
• Conduct trademark due diligence in mergers acquisitions and financing transactions.
• Build and maintain client relationships and support the firms IP practice.
• Stay current on trademark and IP law through CLE and bar involvement such as INTA.

Required Skills & Qualifications:

• JD from an accredited law school and admission to the New York State Bar.
• 6 or more years of trademark and related intellectual property experience including USPTO prosecution and matters before the TTAB.
• Strong analytical skills and attention to detail.
• Excellent communication and interpersonal skills with the ability to establish rapport with clients and colleagues.
• An entrepreneurial mindset with a proactive approach to client development and brand protection.

Physical Demands:

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodation may be made to enable individuals with disabilities to perform the essential functions.

• Employee is regularly required to stand walk use hands/fingers to type hold handle or feel; and reach with hands and arms.
• Regularly required to talk or hear.
• Prolonged periods of sitting at a desk and working on a computer.
• The employee must occasionally lift and/or move up to 15 pounds.

Other Duties:Please note this job description is not designed to cover or contain a comprehensive listing of activities duties or responsibilities required of the employee for this role. It provides a snapshot of the core functions and responsibilities. All inquiries will be handled with the utmost confidentiality. The compensation range for this position is $120000$180000 annually plus bonus potential representing our good faith and reasonable estimate of the potential compensation at the time of posting. Actual compensation will be determined based on various factors including the candidates qualifications experience skill set and office location. Additionally relocation assistance is available for qualified candidates.

Woods Oviatt Gilman LLP is an Equal Opportunity Employer. We value an open mind dedication to work and a collaborative spirit. We hire based on these qualities a jobs requirements our business needs and an applicants qualifications. We do not tolerate discrimination or harassment of any kindin the hiring process or in the workplace. We comply with the ADA and consider reasonable accommodation measures that may be necessary for eligible applicants/employees to perform essential functions. We participate in E-Verify. We will provide the federal government with employees Form I-9 information to confirm authorization to work in the U.S. We will only use E-Verify once an employee has accepted a job offer and completed Form I-9.