Senior Intellectual Property Associate - Trademark

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

Fenwick offers a comprehensive benefit program to eligible employees, including 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.

Pay

The anticipated base salary range for this position is $390,000 – $435,000. 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.